Title: VAN TIBOLLI & ANR versus K. SRINIVAS RAO & ANR
+ CS(COMM) 339/2021 & I.A. 8970/2021
Decided on: 26 December 2023
CORAM: HON’BLE MR. JUSTICE C. HARI SHANKAR
Facts of the case:
The plaintiffs claim that the defendants’ “GK WELLNESS” mark and logos infringe on the plaintiffs’ registered trademark “GK HAIR” under Section 29(2) of the Trade Marks Act, 1999. The plaintiffs are seeking an interlocutory injunction to prevent the defendants from using the disputed mark and logos.
Laws Involved:
Section 29(2) of the Trade Marks Act, 1999- A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of–
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
Issue framed by the Court:
Whether the defendants’ mark “GK WELLNESS” and their logos infringe the plaintiffs’ registered trademark “GK HAIR” within the meaning of Section 29(2) of the Trade Marks Act, 1999?
Courts Judgement and Analysis:
Court found that the three ingredients which are required to cumulatively be satisfied for infringement, within the meaning of Section 29(2)(b) of the Trade Marks Act to be found to exist, are satisfied in the present case. In the case of Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia, the Supreme Court made it clear that when infringement is prima facie established, an injunction must be granted, and nothing less. The court emphasized that delay in approaching the court is not a sufficient reason to deny an injunction. The judgment stressed that an injunction is necessary if it appears prima facie that the adoption of the disputed mark was dishonest in cases of trademark or copyright infringement.
The court finds that there is a prima facie likelihood of confusion or association between the plaintiffs’ mark “GK HAIR” and the defendants’ mark “GK WELLNESS” as both are used for hair care solutions. The defendants’ contention that the acronym “GK” is common to the trade is not supported by substantial evidence. The court holds that the plaintiffs, as the proprietor of a validly registered trademark “GK HAIR”, are entitled to relief against infringement under Section 28(1) of the Trade Marks Act. The balance of convenience is in favor of the plaintiffs as the defendants are using an infringing mark. Refusal of injunction would result in continued infringement and confusion in the public.
Therefore, the court grants a permanent injunction restraining the defendants from using the mark “GK WELLNESS” or any other mark confusingly or deceptively similar to the plaintiffs’ registered trademark “GK HAIR” for any goods or services related to hair care or hair treatment. The court grants a permanent injunction restraining the defendants from using the mark “GK WELLNESS” or any confusingly similar mark in connection with hair care or hair treatment products or services.
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Written by- Aditi
