NEEDLE INDUSTRIES INDIA LIMITED Vs. VIRUMAL PARVEEN KUMAR

JUDGEMENT

(1.) Plaintiff No. 2, a company under the existing laws of Germany, claims to have established international business in the field of manufacturing and marketing snap fasteners, needless of all kinds, hooks and eyelets. Plaintiff No. 1 is stated to be a subsidiary of plaintiff No. 2 and claims to be manufacturers-of high quality hand sewing needles, knitting pins, snap fasteners and allied products. Between 1963 to 1981, it is alleged, there existed a licence agreement between the plaintiffs inter se which authorised plaintiff No.1 to manufacture press studs in accordance with the specifications and standards of quality laid down by plaintiff No. 2. Plaintiff No. 1 was also authorised to use plaintiff No.2's allegedly workl-wide famous mark "555" registered in India for press studs and snap fasteners, etc. in class 26. The trade marks are stated to bestill valid and subsisting on the register of trade marks. During the subsistence of the aforesaid licensed use by plaintiff No.1, the product, with the trade mark "555", was allegedly regularly advertised in the Indian newspapers and magazines. The sale of the plaintiffs products was allegedly further supported by promotional material and a considerable amount is stated to have been spent by the plaintiffs in promoting the sale of their product. The product of the plaintiff had allegedly become a household name in India and the trade marks "555" was identified exclusively with the product and business of the plaintiffs alone. Though the licence agreement between the plaintiffs inter se came to an end in 1981, the trade mark "555" continued to be retained on the trade mark register and allegedly continues to retain goodwill and reputation in the Indian market.

(2.) Besides the use of the trade mark "555", the plaintiffs had allegedly also sold their products under a distinctive trade mark consisting of the word "PONY" and the device of a pony represented against a distinctive colour scheme of silver grey and orange. The aforesaid "PONY" card is registered as an artistic work under the Copyright Act in the name of plaintiff No. 2. The artistic work was published in 1988 and has since been used as a trade mark on an extensive scale in India and abroad. "PONY" (label), "PONY" (device), and "PONY" (word and device) have been registered as trade marks in class 26 for knitting pins, snap fasteners, safety pins, etc. The products under these trade marks are being sold on an extensive scale in India and abroad and the plaintiffs have allegedly spent a considerable amount on the sales promotion of these products under the tirade mark "PONY". It is alleged that as the products bearing the "PONY" card, conform to the proven international standards of quality, the same enjoy substantial reputation and goodwill in the marketplace.

(3.) Defendant is also a manufacturer of snap fasteners. The plaintiffs filed this suit for an injunction and rendition of accounts on the allegations that the defendant had been marketing snap fasteners by way of cards bearing the trade mark "555" and an orange-grey combination, identical to the colour scheme of the "PONY" card. It is alleged that the defendant had surrepticiously adopted the registered trade mark "555" of plaintiff No. 2 and the registered trade mark of the "PONY" card of plaintiff No. 1 thereby achieving maximum proximity with the business of the plaintiffs. It is alleged that snap fasteners of the plaintiffs contain similar features as that the "PONY" card of plaintiff No. 1. The size and dimension of the defendant's card is alleged to be identical to that of the "PONY" card; the silver grey and orange colour combination/scheme of the defendant's card is identical to the colour combination/scheme.of the "PONY" card of plaintiff No. 1; printed matter on the defendant's card is identical in placement and content to the corresponding features of the "PONY" card and the trade mark "555" appears at the upper right hand corner of the defendant's card, copied from the trade mark of plaintiff No. 2. With these allegations, the plaintiffs claiming themselves to be the registered owners of the trade mark as well as the copyright, seek an order of restraint against the defendant from marketing, manufacturing or selling snap fasteners either with a colour scheme of silver grey and orange, lay out and get up which is identical or deceptively similar to the registered copyright of "PONY" card or with the trade mark "555". Certain other reliefs were also claimed in the suit.