STEELBIRD HI-TECH INDIA LTD Vs. TAZEEN FAROOQUI

JUDGEMENT

(1.) Plaintiff has filed the present suit against the defendant Nos. 1 to 3 seeking permanent injunction restraining the defendants, their agents, representatives, etc. from selling, offering for sale, advertising, directly or indirectly dealing in any kind of products including helmets under the trademark, trade name SEABIRD which is identically/ deceptively similar to the plaintiff's trademark STEELBIRD amounting to infringement of the plaintiff's registered trademark as also passing off the defendant's goods as that of the plaintiff's thereby tarnishing the reputation of the plaintiffs.

(2.) Claim of the plaintiff in the suit is that the plaintiff is the oldest manufacturers of the helmets, pannier boxes and auto accessories in India since the year 1964 and has technical collaboration with Composites Bieffe accessor (previously known as Finim S.P.A.) Italy, in 1995. Plaintiff is proprietor of the trademark STEELBIRD having adopted the same in the year 1964 and having a valid and subsisting registration therein. The trademark STEELBIRD was coined by the plaintiff from the two words "steel" and "bird" respectively and is thus a fanciful and arbitrary mark in relation to helmets and auto-accessories, hence, inherently distinctive and exclusively associated with the plaintiff. Coupled with the long and continuous use of the trademark STEELBIRD, the plaintiff is entitled to the highest degree of trademark protection and exclusive rights therein. Plaintiff in the suit has given its sales figure as also money spent on advertisement and promotions both in the print and electronic media since its inception. The plaintiff also claims common law rights for being prior adopter of the distinctive trademark STEELBIRD coupled with the long, extensive and continuous use.

(3.) Plaintiff claims that in the end of April, 2019 it discovered that the defendants were manufacturing and selling helmets bearing the mark SEABIRD which is deceptively and confusingly similar to the plaintiff's registered trademark STEELBIRD. On a search carried out by the plaintiff's attorney it was revealed that the defendant's mark SEABIRD was registered under Class 9 vide application No. 3140427 in the year 2015 for which the plaintiff has reserved its right to take appropriate action. However, despite the mark SEABIRD being registered in favour of the defendants, plaintiff is the prior registered user of the trademark STEELBIRD, its earliest registration being in the year 1972 which is much prior to the defendant's registration. Plaintiff thus claims injunction against the defendants from using the trademark SEABIRD as the same amounts to infringement of its registered trademark STEELBIRD beside passing off the defendant's goods as that of the plaintiff's and causing dilution of the mark of the plaintiff. Reliance is placed on the decision of the Supreme Court reported as (2004) 6 SCC 145 Satyam Infoway Ltd. Vs. Sifynet Solutions Pvt. Ltd. Vs. Sifynet Solutions Pvt. Ltd. and of this Court reported as 2014 (60) PTC 51(Del) Raj Kumar Prasad Vs. Abbott Healthcare Pvt. Ltd and 200 (2013) DLT 481 The Timken Company Vs. Timken Services Private Ltd.