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  • Writer's pictureChetan Chadha

Vigilance Saves the Day For Peter England

The Delhi High Court decision in the case of Aditya Birla Nuvo v M/s RS Sales Corporation & Anr (CS(COMM) 644/2016) discussed the infringement of the mark “PETER ENGLAND”. The plaintiffs, Aditya Birla, claimed to be the proprietors of the mark “PETER ENGLAND”, and had secured an ex parte ad interim injunction in 2013 restraining the defendants RS Sales Corporation from selling or marketing their products under the mark “PETER ENGLAND”.

The plaintiffs had secured registration in class 25 for ‘clothing, footwear, and headgear’, having used the mark since 1997. The defendant no 1 was manufacturing shoes under the mark “PETER ENGLAND VIP SHOES”, and the defendant no 2 was a stockist for them. The plaintiff had applied for the mark “PETER ENGLAND” for several other classes, and was also the proprietor of several other marks, which incorporate “PETER ENGLAND”.

The plaintiffs had filed two applications in 2001 for marks “ELEMENTS PETER ENGLAND” (label) and “PETER ENGLAND” (label) under class 25, which were opposed by the defendant no 1 on the ground that it was the proprietor of the mark “PETER ENGLAND”.

Defendant no 1 set up the defence of prior use, contending that it had been using the mark “PETER ENGLAND” in respect of shoes since 1998. Further, the defendant inter alia contended that the artistic design of the logo used by the plaintiff was different from the logo used by the defendant no 1, and therefore, no case of infringement was made out under Ss. 28 and 29 of the Trade Marks Act, 1999. Further, the plaintiff was engaged in the manufacture and sale of clothing and admittedly not engaged in the manufacture of shoes, and therefore, the trade mark registration granted in favour of the plaintiff was liable to be cancelled under S. 47 of the Act. The defendant also had a registration for the label “PETER ENGLAND VIP SHOES”.

Per contra, the plaintiff contended that the mark “PETER ENGLAND” had been applied for in 1995, which was subsequently registered in favour of the predecessor of the plaintiff. Further, the mark “PETER ENGLAND VIP SHOES” had not been registered as of then, as it had been opposed by the plaintiff. The plaintiff also relied on M/s. Gujarat Bottling Company Limited & Ors V. Coca Cola Company & Ors to support its contention that the proprietor of a registered trade mark can also sue for infringement of the trade mark in respect of the goods covering the mark regardless of whether the mark was used or not.

The court held that on a plain view, the mark of the defendant and the mark of the plaintiff were similar; there “can hardly be any doubt” that the defendants had infringed the plaintiff’s trade mark. Prima facie, the defendant’s use of the mark was dishonest, and the three basic ingredients (strong prima facie case, balance of convenience, and irreparable loss) for grant of interim injunction were established. Therefore, injunction was granted.

This judgment holds some valuable lessons for trade mark proprietors. They must apply to register their mark as soon as is possible: though India follows the “first to use” rule and not the “first to file” rule, it is still advisable to file as soon after finalisation of the mark as possible, in order to establish bona fides, as well as evidence prior claim. Further, it is important to be vigilant regarding potentially infringing marks, as the plaintiffs were in this case. The opposition by the plaintiff to the registration of the defendant’s mark was a major factor in the court’s decision to award the injunction. Finally, the court clarified that the proprietor of a trade mark can sue for infringement of the trade mark, for goods covered under the mark, regardless of whether the said mark was used or not. However, proprietors will do well to remember that idle marks invite infringement and adoption; therefore, proprietors must ensure that they apply only for marks that they have either already used or seriously intend on using, or in the alternative, remain constantly vigilant in their trade mark defence, expending the necessary resources to do so.

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