XEROX CORPORATION Vs. P. K. KHANSAHEB

JUDGEMENT

(1.) The present suit has been filed by the Plaintiff seeking permanent injunction restraining infringement of trademark, passing off, dilution, tarnishment, damages etc. The Plaintiff claims ownership in the trademark XEROX which was coined by Haloid Company, the predecessor of the Plaintiff-company, in the year 1948. As per the Plaintiff, the said mark has been used extensively across the globe including in India. The word mark XEROX is an invented mark which has been coined by the Plaintiff by combining the Greek words for "dry" and "writing". Plaintiff No. 1, i.e., Xerox Corporation, conducts its operations in India through Xerox India Limited, i.e., Plaintiff No. 2, which was incorporated in 1983. The trademark XEROX is registered in respect of goods in various classes in India, including Classes 1, 7 and 9, with the earliest trademark dating back to 1952. Details of the above-mentioned registrations are provided below:

(2.) The Plaintiff claims that the mark XEROX has become a well-known trademark and remains a coveted property of the Plaintiff. The grievance of the Plaintiff is that Defendant No. 2, Parle Products Private Limited, a company which manufactures biscuits and confectionery, launched an advertisement in 2006 for its mango candy "Kachha Mango Bite". In the said advertisement, Defendant No. 2 used the tag line "KACHE AAM KA ZEROX". According to the Plaintiff, the use of the word ZEROX is violative of the Plaintiff's trademark rights in the mark XEROX. Accordingly, the Plaintiff issued a legal notice dated 10th January, 2006, calling upon the Defendants to withdraw the said advertisement. The Defendants thereafter modified their advertisements by doing a voice over on the word ZEROX in the script by using the word "PHOTOCOPY". However, the by-line continued to read as "KACHE AAM KA ZEROX". In 2007, the Defendants modified their advertisement again by using the phrase "Kache Aam Ka Copy" in the voice-over as well as the by-line.

(3.) After a span of 6 to 7 years, in December, 2013, the Defendants re-launched the television commercial for their product "Kachha Mango Bite" by again using the word ZEROX in the by-line and voice-over. At this stage, the Plaintiff sent a legal notice dated 21st January, 2014 to the Defendants. Reply was received on 30th January, 2014 by which the Defendants sought additional time to file a reply. Finally, on 25th April, 2014, the Defendants replied by refusing to acknowledge the Plaintiff's proprietary rights in the word XEROX. The Defendants also threatened the Plaintiff with legal proceedings. This led to the filing of the present suit. The reliefs prayed for in this suit are as under: