YONEX KABUSHIKI KAISHA Vs. PHILLIPS INTERNATIONAL

JUDGEMENT

(1.) BY means of this application filed under Order 39 Rules 1 and 2 of the Civil Procedure Code. The plaintiff is seeking ad-interim injunction whereby the plaintiff intends to restrain the defendant from manufacturing, marketing, advertising and in any manner dealing in goods or services using the mark/name YONEKA or any other mark/name which is allegedly identical or deceptively similar to the plaintiff's trademark YONEX. The plaintiff, M/s. YONEX Kabushiki Kaisha, is a company incorporated under the laws of Japan and claims that it is world leader in the field of manufacturing and marketing of sports equipment primarily Badminton, Tennis and Golf. Yoneyama Company, the plaintiff's predecessors in business, evolved into the manufacturing of badminton racquets in 1957 and attained huge success. In 1969, it diversified into the tennis racquet. In 1973, the plaintiff changed their company and brand name to YONEX and also adopted a unique and distinctive appearance for the goods of their manufacture in order to distinguish their world class products from those of the others, by introducing the new "YY " logo along with blue and green colour striped background to their products. It is the case of the plaintiff that the label mark consisting of YY YONEX with blue and green striped background instantly became a familiar sight on badminton and tennis courts around the globe. The plaintiff today is the leading worldwide manufacturer and distributor of sports goods equipments and other apparels of their manufacture namely racquets, shuttlecocks, strings, sportswear, apparels including dresses, skirts, blouses, shirts, shorts, jackets, sweaters, pullovers, cardigans, pants, training suits, warm-up suits, sports underwear, head wears, sweatbands, sports shoes, socks for wear and hats, gymnastic and other sporting articles, as also bags, umbrellas and parasols, all under the famous, reputed and well-known trademark YONEX.

(2.) THE plaintiff also boasts of its best distribution network in the sports equipment market across the globe. M/s. Sunrise and Co. (Pte.) Ltd., located at No. 9, Kaki Bukit Crescent, Kaki Bukit Tech Park-I, Singapore " 416 240, Singapore, is the plaintiff's sole distributors for all YONEX products in various Asian countries including India. According to the plaintiff, it has created niche for itself in the sporting world and has been sponsors of major tournaments including Olympics, wherein the plaintiff has been the games official Badminton Equipment supplier, since introduction of Badminton in 1992, and the All England Badminton Championship, where the plaintiff is the exclusive sponsor of the game since 1984. It is number one brand in Badminton with 80% of the competitive players using the YONEX equipments. Name of various top ranking professionals who have endorsed the plaintiff's product in the game of the badminton are given. These include Indian players like Prakash Padukone and P. Gopichand, winners of All England Badminton Championships and also National Champions who have endorsed YONEX products. For this reason, states the plaintiff, YONEX has become a household name in India. The YONEX products, particularly badminton products, are sold in India through 350 dealers and wholesalers.

(3.) THESE shuttlecocks are marketed and sold in a unique and distinctive style and packaging in order to distinguish its merchandise from those of others i.e. YY YONEX with blue and green striped background. It is stated that the plaintiff is the owner of the copyright in the artistic work comprised in the get up, lay out, arrangement and colour scheme of the packaging and also in the logo. The get up, arrangement and colour scheme, logo of the packaging used as trademarks or appearance of the packaging constitute work of artistic craftsmanship and are subject matter of copyright protection. The label used in the packaging is an original artistic work within the meaning of section 2(c) of the Copyright Act and therefore is subject matter of copyright protection under Section 13 of the Copyright Act. The label has been created for the plaintiff by its employees, in the course of their employment with the plaintiff and both India and Japan being signatories to the Berne Convention as well as the Universal Copyright Convention, the plaintiff's works are protected in India by virtue of Section 40 of the Copyright Act 1957, read in conjunction with the International Copyright Order 1999.