Aastha Thakur
Published on: 12 November 2022 at 21:57 IST
The Bombay High Court recently in a trademark infringement case, declined to reverse the ad-interim relief granted to the plaintiff.
Justice Manish Pitale stressed that the mark of plaintiff is registered one and the defendant mark is deceptively similar to it.
The Court noted that, “It must be remembered that the plaintiff has placed on record documentary material to show that its word mark and also the label consisting of the device of the red apple, are registered in favour of the plaintiff and a bare look at the mark being used by the defendants shows that the same is prima facie identical and deceptively similar to the registered marks of the plaintiff,”
The plaintiff came into knowledge regarding defendant juice shop mark ‘Haji Ali Fresh Juice Centre’ deceptively similar to plaintiff’s registered mark ‘Haji Ali Juice Centre’. Thereafter, the plaintiff filed the case in High Court in June 2021. It was alleged by the plaintiff that the defendant also used logo with an apple similar to them.
The Court examined that it is true the impugned mark of defendant is likely to create confusion in the minds of consumers. Hence, it was agreed by the Court, plaintiff rightly deserves the grant of interim relief.
Later, two pleas were submitted before the Justice Pitale. One was related to the plaintiff seeking continuation of the injunction, and other was moved by defendant asking to set aside the order granting the reliefs.
The defendant counsel, contended that the plaintiff earlier suppressed the suit against the defendant before the district court.
He said that the plaintiff also suppressed the fact that defendant no. 2 in the case, who is the Managing Partner of firm ‘Al-Ali Enterprises,’ had filed a trademark application for the mark ‘Haji Ali Fresh Fruit Juices’ with the logo of a red apple.
He claimed that the plaintiff was not entitled to continuation of the ad-interim relief that the court had already given. The phrase “Haji Ali” was also asserted to be publici juris (of public right), negating the plaintiff’s entitlement to exclusivity.
On the other hand, plaintiff’s lawyer Rashmin Khandekar emphasised that it could not be assumed that there was a direct connection between the establishments merely because the offensive mark used in the Vijayawada establishments was the same as the mark used by defendant no. 2 in Kerala.
As a result, he asserted, the plaintiff had not omitted any relevant information.
For the only reason that the defendants themselves had applied for registration of their mark, of which the words “Haji Ali” were a significant component, he stated that the argument that the words “Haji Ali” were publici juris had no merit.
The court observed that plaintiff’s assertions regarding the lack of any content in the public domain and any relationship or connection between the establishments were unchallenged by the defendant.
The court found that the plaintiff had taken legal action against infringement of its registered trademark much earlier than the current litigation had been filed, showing that there had been instances of businesses using marks that were identical to or confusingly similar to the plaintiff’s registered trademark.
Hence, the basis on which the defendants alleged suppression of facts on part of the plaintiff was found to be unsustainable by the Court.
Regarding on the word “Haji Ali” the Court examined that the plaintiff is trying to gain exclusive rights on the combination of words ‘Haji Ali Juice Centre’ and which makes it kind of inapplicable.
The Court added that, “In any case, the defendants themselves having applied for registration of their mark consisting of the words ‘Haji Ali,’ shows that they are blowing hot and cold at the same time. In this backdrop, this Court is of the opinion that the plaintiff has indeed made out a case in her favour for continuation of the ad-interim reliefs in the interest of justice,”
Due to these reasons, the Court upheld and sustained the ad-interim reliefs it had earlier given to the Haji Ali Juice Center’s owner.