– Report by Parvati Arun
It was held by the High Court of Delhi in the case of CAMPUS ACTIVEWEAR LIMITED versus RAM SHANKAR GARG & ORS. that the plaintiff has failed to prove the criteria for reaching the status of passing off products. The case presented here was the plaintiff’s claim of violation of deceptive business practices through violation of intellectual property rights.
➢ The plaintiff, Campus Active Limited, practices the business of manufacturing footwear of a wide range and has registered proprietorship over the title of “CAMPUS” in various formats ( also referred to as “ registered marks”, which are later made to sell with the same marks.
➢ The issue here arises due to the use of formative marks by the defendant “impugned marks” ) Ram Krishna Garg’s establishment, M/s Baba Footwear, which is similar to that of the marks used by the plaintiff which are also used for manufacture and sale of footwear.
➢ The plaintiff’s predecessor-in-title adopted the establishment in 1990 and chose to add several variations of a cursive logo( red and grey tones) as a registered mark for Campus Activewear Limited in 1997. The rights over these marks have been allotted to the plaintiff in question and some formalities were launched to change the name in the records of the Trademark Registry. The plaintiff was also said to own a proprietorship over registered logos of blue and greyish tones.
➢ The proprietor, Ram Chandra Garg who has been treated as Defendant no 1 in this matter owns and has sole proprietorship over M/s Baba Footwear, his establishment which has been treated as Defendant no 2, and also has ownership over the logo “CAMPS” which has a cursive design above the letters which is used on footwear manufactured and produced by the establishment.
➢ This design was adopted in 1980 and further, in 1996, they modified the logo in a stylized manner which was formed using the first name of the proprietor in Devnagri script “र” by placing it above the word “CAMPS”.
➢ Defendant no 3 has been prosecuted as a dealer of the impugned goods.
➢ The Senior Counsel for Plaintiff, Ms. Kirti Uppal claimed that the registered marks of the plaintiff have been in use since 1984 which has also led to the establishment acquiring substantial goodwill. Moreover, the plan also has obtained protection in foreign countries which lead to the recognition of their registered mark as a well-known trademark.
➢ The Plaintiff obtained their registration for the trademark “CAMPS” on 12th November 1990 while defendant no 1 and 2 got their registration for the impugned mark only in 2001 thus leading to a huge time difference between both the establishments adopting the registered mark and the impugned mark. The plaintiff also leveled claims stating that their unique logo was imitated by the defendant leading to business losses.
➢ There is also the issue of similarity in terms of pronunciation of “CAMPUS” and “CAMPS” adopted by the plaintiff and defendant respectively with an inverted red double tick on top of the letter ‘M’ hurting the prospects of the plaintiff in conducting business as well as the chances of riding on their previous goodwill as well.
➢ The actions of the plaintiff have led to loss for the plaintiff. The plaintiff’s side presented evidence from the defendants’ website through screenshots showing that they have imitated the registered trademark as well as engaging in the selling of counterfeit goods.
➢ Defendants no 1 and 2, were represented by Mr. Avneesh Garg who contended that the defendants were using the trademark “CAMPUS” since 01st October 1980 despite being registered on 22nd October 2001. He also further claimed that the plaintiff started using their mark “ CAMPUS” recently and it was only after the registration of their particular mark was done by the defendant.
➢ To counter the claims of similarities between the two marks, the defendants’ side argued that their mark had superior rights because of prior use.
➢ The allegation of infringement which was raised by the plaintiff would be countered by Section 34 of the Trademarks Act, 1999 which states about protection granted due to prior use of a mark, therefore, making the plaintiff’s market share irrelevant. The defendant’s side also presented proof regarding the plaintiff using the mark on a proposed to-be-used basis and also that of a similarly termed mark “ CAMPS” as well further substantiating their arguments of the plaintiff riding on the defendants’ goodwill.
The Court has established that the plaintiff has not suffered any damage leading to irreparable harm/injury, therefore, displaying the lack of a prima facie case thus proving that the adoption of the impugned mark was done in good faith and failure on the part of the plaintiff to prove the test of passing off.
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