Facts
Mangalam Organics Ltd (“Plaintiff”) sells camphor-related products under the name “CAMPURE,” which was first used as a mark in March of 2017 in relation to deodorants, air fresheners, soaps, and toiletries, and also has extensive registrations and sales numbers to demonstrate goodwill attached to the mark. The Plaintiff created a cone-shaped camphor product in 2014, originally branded as “MANGALAM,” before using the name “CAMPURE” for that product too.
In December of 2022, the Plaintiff sent a cease-and-desist notice to N Ranga Rao & Sons Pvt Ltd (“Defendant”) indicating that it had become aware of Defendant’s intentions of launching a product called “Air Kapur Camphor Cone” that closely resembled the CAMPURE mark. The Defendant has been dealing in the fragrance industry for a long time and denied infringement and established its own use of a registered mark “KARPURE” and “AIR KARPURE” in the years 2020 and 2022 for the same class of products. Following additional facts discovered about the Defendant using the mark “AIR KARPURE” on an actual camphor-type of product, the Plaintiff filed for cancellation of the Defendant’s mark.
The dispute ended in litigation in the Bombay High Court with the Plaintiff seeking injunctions against the Defendant’s use of the marks which were alleged by the Plaintiff to be deceptively similar and likely to cause confusion among consumers.
Issues
The main issues before the Court were:
- Whether the KARPURE and AIR KARPURE marks of the Defendant is similar to that of Plaintiff‟s registered mark CAMPURE under Section 29 of Trade Marks Act, 1999 and thereby infringe upon it.
- Whether a suit for infringement could be filed against a registered owner or not.
- Whether the Plaintiff has established a prima facie case of passing off against the Defendant’s use of the use of marks in question.
Legal Provisions Involved
The case invoked several provisions of the Trade Marks Act, 1999:
- Section 28: Rights conferred by registration.
- Section 29: Infringement of registered trademarks.
- Section 30: Limits on effect of registered trademark.
- Section 31: Registration to be prima facie evidence of validity.
- Section 124: Stay of proceedings when validity of registration is questioned.
Arguments
Plaintiff’s Arguments:
- The Plaintiff based its priority rights on its long-term and extensive use of “CAMPURE” with significant sales and advertising.
- The Plaintiff submitted that KARPURE was deceptively similar to it in sound, style and otherwise as a product of the two parties to be sold on the respective markets.
- The Plaintiff contended that the adoption of the Defendant was fraudulent with an intention to misuse goodwill of the Plaintiff.
Defendant’s Arguments:
- The Defendant also pointed out its distinctive marks as well as its repute in the perfume trade.
- It argued that “KARPURE” was a composite of “Karpura” and “Pure,” and that it has used the mark extensively to achieve distinctiveness.
- The Defendant tried to rely on its position as a registered owner and said an action for infringement under Section 29 was not available, and “Pure” was a descriptive term.
- The Defendant denied that its product was similar to that of the Plaintiff’s in any way and that consumers could easily differentiate between the brand and design, and said the Plaintiff did not act in good faith.
Analysis
The Court undertook a thorough analysis of the dispute regarding trademark rights using both statutory and common law. It first considered the Trade Marks Act, 1999, Section 29A and held after ruling that a claim for infringement can only emerge if both plaintiff and defendant have applications/registration of their marks pending unless the defendants mark is prima facie illegal or has been obtained fraudulently. This interpretation was consistent with previous cases such as Corona Remedies Pvt Ltd v. Franco-Indian Pharmaceuticals and S. Syed Moideen v. Sulochana Bai, which indicated that the only way to sustain a claim of infringement in circumstances where marks co-exist and are held by both parties, is if there is sufficient clear evidence of fraud or invalidity.
As to the issue of deceptive similarity, the Court performed a holistic analysis of the marks, “CAMPURE” and “KARPURE/AIR KARPURE” as whole marks. The Court examined visual features, which included stylization, font and colour and the packaging of the products. The presence of the letter “K”, and “AIR” in the Defendant’s marks, and the application of distinct graphic treatments, lowered any risk of confusion as to the source of either mark. The Court also found “Pure” descriptive in this context and therefore to undermine exclusivity claims adequately.
With respect to passing off, the Court restated the requirements of goodwill, misrepresentation and damage. The evidence of the Plaintiff failed to do so, tying sales to the overall “Mangalam” brand and not the specific “CAMPURE” mark. The Defendant had no evidence that consumers confused CAMPURE with the D defendant’s products and thus the plaintiff could not succeed with its charge of passing off. Since, it was accepted by the Court that Defendant had a right to use its registered marks, there was no convincing material on record which could show fraud or confusion.
Judgement
The Court dismissed the Plaintiff’s interim application and concluded:
- The Court found no ex-facie illegality or fraud in the Defendant’s registration of “KARPURE” and “AIR KARPURE.”
- No prima facie case of infringement was made out by the Plaintiff.
- The Plaintiff’s case for passing off also failed, requiring proof of distinctiveness and consumer association to “CAMPURE” alone, as well as distinct differences in look and packaging of the Defendant products.
- The Court also noted delay and the Plaintiff’s alleged failure to disclose facts surrounding the opposition would provide further basis for denying discretionary relief.
Conclusion
This case confirms the statutory regime in place to protect registered proprietors’ rights against each other, and clarifies the high threshold necessary to set aside a competitor’s registration upon an application for interlocutory relief. The judgement clearly states the importance of proving fraudulent obtainment of the defendant’s mark when a case is filed for infringement under Section 29 of the Trade Marks Act, 1999, in cases where both parties have registered marks. It also points out that in a passing off claim, the plaintiff must show misrepresentation, consumer confusion, and harm to their own goodwill caused by the defendant. Since, the Plaintiff failed to do this, the court sided with the defendant who had proved to be acting in good faith.
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WRITTEN BY Stuti Vineet
For reading more click here: Mangalam Organics Ltd. v. N Ranga Rao & Sons (P) Ltd
