Case Summary
| Citation | Carreefour v. Suburaman 2007 (35) PTC 225(Mad.) |
| Keywords | trademark, section 11 of Trademarks Act, injunction, honest adoption |
| Facts | Carrefour, is a French company and one of the country’s largest retailers. The company applied for an injunction against the defendant for infringing its trademark, “Carrefour” by using it for its products and its “C” logo. During the pendency of the suits, the plaintiff files six applications for interlocutory orders for interim injunction before the court. The court granted injunctions in all six applications. Matter was reduced to trademark “carrefour”. The plaintiff registered its trademark in various countries but did not apply in India. The defendant argued that they are the first one to run such a business under the said name in India and they have been using it since 2000. |
| Issues | Whether the plaintiff can claim injunction for its trademark against the defendant? |
| Contentions | Defendant argued that: 1. The mark “carrefour” is not well known in India because plaintiff owned hypermarkets in other countries and their is no reputation of the products in India. 2. the trade name and mark CARREFOUR did not have the status of a well-known mark under Section 11 of the Trademark Act 1999 3. the plaintiff was not involved in the manufacture and marketing of furniture in India, as proven by the fact that the trademark had not been registered in that particular class. |
| Law Points | Court found that plaintiff got 2500 registrations in 80 countries for its trademark. Also stated that the concept of a well-known trademark, as distinguished from a normal trademark, aims not only to protect a mark that is identified with a particular type of goods or services, but also to protect that mark from being used in relation to other goods and services if a substantial sector of the public would be led to believe that there is a connection between the two sets of goods and services. However, Court found that the defendant had failed to pass the test of “honest adoption” and emphasized that the defendant had established only adoption. Court said that such trademark causing confusion among customers. |
| Judgement | Court held that plaintiff have a prima facie case for injunctions against the defendant for infringing their trademark. |
| Ratio Decidendi & Case Authority |
Full Case Details
V. RAMASUBRAMANIAN, J. – CARREFOUR, which claims to be a society anonyme, organised under the laws of France and considered to be one of the largest retailers, has come up with the Suit C.S. No 73 of 2007 praying for (a) a permanent injunction restraining the defendants from manufacturing, marketing, selling, exporting, offering for sale or advertising, any product under the trade mark “CARREFOUR” or from using the same as a trade name thereby infringing the trade mark “CARREFOUR” (b) a permanent injunction restraining the defendants from manufacturing, marketing, selling, exporting, offering for sale or advertising, any product under the trade mark “C” logo or from using the same as a trade name thereby infringing the trade mark “CARREFOUR” (c) a permanent injunction restraining the defendants from printing the “C” logo or reproducing the logo on any product or service and from using the same as an artistic work (d) a permanent injunction restraining the defendants from manufacturing, marketing, selling, exporting, offering for sale or advertising, any product bearing the trade mark “CARREFOUR” or deceptive variation thereof (e) a permanent injunction restraining the defendants from manufacturing, marketing, selling, exporting, offering for sale or advertising, any product bearing the trade mark “C” logo or deceptive variation thereof (f) a permanent injunction restraining the defendants from using the plaintiffs trade mark/name “CARREFOUR” or any other formative mark singularly or in conjunction with any other word deceptively similar as a domain name or website address or electronic mail identity (g) directing the defendants to surrender to the plaintiff for destruction, all stocks bearing the impugned trade mark “CARREFOUR” and “C” logo including packages, strips, labels, dyes and blocks etc. and (h) directing the defendants to pay damages of Rs. 20,00,000.
2. Pending suit, the plaintiff has come up with six applications for interlocutory orders to the following effect viz.:-
• O.A. No. 100 of 2007 for an interim injunction restraining the defendants from manufacturing, marketing, selling, exporting, offering for sale or advertising, any product under the trade mark “CARREFOUR” or from using the same as a trade name thereby infringing the trade mark “CARREFOUR”.
• O.A. No. 101 of 2007 for an interim injunction restraining the defendants from manufacturing, marketing, selling, exporting, offering for sale or advertising, any product under the trade mark “C” logo or from using the same as a trade name thereby infringing the trade mark “CARREFOUR”.
• O.A. No. 102 of 2007 for an interim injunction restraining the defendants from printing the “C” logo or reproducing the logo on any product or service and from using the same as an artistic work.
• O.A. No. 103 of 2007 for an interim injunction restraining the defendants from manufacturing, marketing. selling, exporting, offering for sale or advertising, any product bearing the trade mark “CARREFOUR” or deceptive variation thereof.
• O.A. No. 104 of 2007 for an interim injunction restraining the defendants from manufacturing, marketing, selling, exporting, offering for sale or advertising, any
product bearing the trade mark “C” logo or deceptive variation thereof.
• O.A. No. 105 of 2007 for an interim injunction restraining the defendants from using the plaintiffs trade mark/name “CARREFOUR” or any other formative mark singularly or in conjunction with any other word deceptively similar as a domain name
or website address or electronic mail identity
3. On 1.2.2007, this Court granted ad interim injunction in all the above six applications. Therefore, after service of notice, the respondents have entered appearance and have come up with A. Nos. 2014 to 2019 of 2007 to vacate the interim orders of injunction. Hence, all the applications were taken up together for disposal.
5. The second respondent, who is the wife of the third respondent, has filed a counter affidavit in common, to the applications for injunction and has also filed separate applications for vacating the interim orders of injunction, claiming to be the Proprietor of the 4th respondent. In the counter affidavits filed by the 2nd respondent in support of the vacate injunction applications, the 2nd respondent has made two things very clear, viz.,
(a) that the 1st respondent has nothing to do with their business; and (b) that from the year 2002 they have stopped using the “C” logo.
6. In para 5 of the counter affidavit, the 2nd respondent has stated categorically that the 1st respondent has nothing to do with the business of the fourth respondent. The first respondent has neither filed any counter affidavit nor filed any vacate injunction application. Therefore there cannot be any impediment for making the interim orders of injunction absolute insofar as the first respondent is concerned. In view of the aforesaid stand taken by the second respondent, the applicant has filed an additional set of documents containing the visiting card of the first respondent showing him as representing the fourth respondent. Therefore there is no alternative except to make the interim orders of injunction absolute insofar as the first respondent is concerned, especially since he has not chosen to file a counter claiming or disclaiming any right over the disputed trade name/mark.
7. Similarly, the second respondent has stated in para 4 of her counter affidavit that immediately after the receipt of the cease and desist notice, they discontinued the use of the “C” logo. She has reiterated this is para 8, 15, 24 and 27 of her counter affidavit. In view of the said stand taken by the respondents 2 to 4 with regal the “C” logo, the applications relating to the use of “C” logo are to be allowed and vacate injunction applications arising out of the same are to be dismissed. Accordingly, O.A. Nos. 101, 102 and 104 of 2007 are allowed and Application Nos. 2015, 2016 and 2018 of 2007 are dismissed.
8. Thus, the dispute raised both with regard to the trade name/mark “CARREFOUR” and with regard to the “C” logo, has now been reduced only dispute relating to the trade name/mark “CARREFOUR”. The applicant/plaintiff claims a right over the said trade name/mark by virtue of its user from 1960 in France, where the first store carrying the name was opened on 8.4.1960, as evidenced by Document No.2, which is an extract from the Register of the Registrar of Commerce and Companies, France. The applicant claims to be the largest retailer in Europe and the second largest in the world with a network of 7,000 stores in about 30 countries of the world, with 4,36,000 employees and a sales turnover of Euro 94 Billion. In the counter affidavits, the respondents have raised no dispute about the fact that the word “CARREFOUR”
is a French word meaning “crossroad” and about the fact that the applicant has a chain of stores all over the world under the same name. The actual stand taken by the respondents in their counter affidavits is that the name/mark used by the applicant is not a well known mark and that since the applicant is only into retail business, they could not have acquired trans-border reputation or goodwill. In other words, the user of the name/mark by the applicant from 1960 is not in dispute. The respondents claim user of the name “CARREFOUR” only from 2000, while Document No.2 filed by the applicant shows the applicant’s user of the name/mark “CARREFOUR” from 1960.
9. The applicant claims to have secured/filed 2,500 registrations/applications for their trade name/mark “CARREFOUR” and the “C” logo in about 80 countries, the details of these registrations/applications are filed as Document Nos. 7 and 8. ‘Furrniture’ falls under class 20 of the Fourth Schedule to the Trade Marks Act, 1999 and the list of registrations/applications secured/filed by the applicant/plaintiff all over the world and furnished herein under Document Nos. 7 and 8, discloses that the applicant has secured registrations or filed applications for registration with regard to class 20 also in various countries.
10. The applicant has also secured, registrations from the Indian Trade Marks Registry for several products in Class 16, 25, 29, 30, 31, 32, 33 and 35 under Registration Nos. 651900 to 651905 in respect of the name/mark “CARREFOUR” and Registration Nos. 651895 to 651899 in respect of “C” logo. The certified extracts of these registrations are filed as Document No. 9 series by the applicant and the respondents have not disputed this fact in para 13 of their counter affidavits. These registrations have been secured by the applicant on 12.1.1995 and they are due for renewal only in the year 2009. But none of these registrations or applications for registration secured or filed in India relates to “Furrniture” in Class 20. In other words, though the applicant/plaintiff has registration of the trade mark in other countries, even in respect of furrniture, the: have neither applied for nor obtained\ registration in India for furrniture.
11. Therefore, the facts admitted on both sides (or at last not disputed on either side) read with document Nos. 2, 7, 8 and 9 filed by the applicant, lead one to the following conclusions:-
- a) that the word “CARREFOUR”. a word in French, meaning cross road, has come to be associated with the retail business carried on by the applicant in France as well as in several other countries;
- b) that the applicant has obtained registration of the trade name/mark “CARREFOUR” in several countries in respect of a variety of goods including furnniture; and
- c) that the applicant has also obtained registration of the trade name/mark “CARREFOUR” in India in respect of a variety of goods excluding furniture.
12. In the light of the factual matrix that unfolds as above, the respondents/defendants have taken the following contentions, for opposing the claim of the applicant:-
a) that the applicant is guilty of suppression of a communication dated 9.9.2003 sent by the counsel for the respondents to the counsel for the applicant;
b) that since the applicant is only into the business of running super markets, hyper markets, hard discount stores, convenient stores, cash and carry stores and electronic commerce, there is no question of international reputation for the applicant in respect of any products;
c) that the trade name/mark “CARREFOUR” cannot be considered to have acquired the status of a “well known mark”;
d) that the applicant is not into the business of manufacturing or marketing furrniture in India, as seen from the fact that the applicant has not applied or obtained registration in respect of goods under Class 20;
e) that the respondents have been using the trade name “CARREFOUR” from July 2000 and that by keeping quiet after the issue of a letter dated 9.9.2003, for a period of more than three years, the applicant has acquiesced to the user of the trade mark/name by the respondents;
f) that the respondents have already applied for registration of the trade mark “CARREFOUR” under Application No. 1046701 dated 21.9.2001 in respect of furrnitures under Class 20 and that the same was advertised in the Trade Marks Journal No. 1330 Supp. 1 dated 15.5.2005, and that there had been no opposition from anyone including the respondents; and
g) that the respondents have come to use the trade mark as a result of “honest adoption” and that therefore, the applicant is not entitled prevent them from using the trade mark.
FIRST CONTENTION
13. Taking up the first contention of the respondents that the applicant is guilty of suppression of fact, it is seen that the said contention is based upon a letter of the counsel for the respondents dated 9.9.2003 to the counsel for the applicant. The applicant has filed a common reply affidavit, taking a stand in para 3 of the said reply affidavit that it was an omission on the part of the erstwhile counsel for applicant, to inform the present counsel, of the receipt of such a letter dated 9.9.2003. The said letter of the counsel for the respondents dated 9.9.2003 has been filed by the respondents as Document No. 10 on their side. The said letter merely reiterates the contents of their earlier letter dated 28.5.2003 and points out that if the applicant did not furnish the details called for in their earlier letter, it would not be possible for them to give a proper reply. Thus, a perusal of Document No. 10 dated 9.9.2003 filed on the side of the respondents, discloses that there were no material facts pleaded in the said letter and that nothing turned on the content of the said letter. In other words, the disclosure of the said letter dated 9.9.2003 by the applicant in their plaint or affidavit, would not have tilted the balance in favour of the respondents. Therefore, I am unable to accept the first contention of the respondents.
SECOND CONTENTION
14. The second contention of the respondents is that the applicant cannot taken to have acquired international or transborder reputation, since they are only into retail business of the products of others. In my considered view, it is not open to the respondents to raise such a contention, in view of the fact that the respondents have conceded to the claim of the applicant in respect of “C” logo and stopped using the “C” logo from the year 2002, immediately after the receipt of “cease and desist” notice from the applicant. The respondents have not explained as to how the second contention would not hold water only in respect of “C” logo, even while it would hold good in respect of the name “CARREFOUR”. The second contention of the
respondents is not acceptable for one more reason. If the applicant cannot have proprietary rights over a trade mark merely because of being into retail business, they could not have secured as many as 2500 registrations for the trade mark all over the world and they could not have secured 12 registrations in India. The acquisition of reputation world wide, is a question of fact and the applicant has established prima facie, their presence in several countries under the same trade name/mark.
THIRD AND FOURTH CONTENTIONS
15. The third contention of the respondents is that the trade mark/name “CARREFOUR” is not a well known mark. Their fourth contention is that the applicant is not into the business of manufacturing or marketing furrniture in India, as seen from the fact that the applicant has not applied or obtained registration in respect of goods under Class 20. Since both these contentions are mutually complementary and are based upon certain provisions of the Act, it is useful to take them together.
16. The third contention of the respondents is based upon the definition of the term “well known trade mark”, contained in Section 2(1)(zg) read with Section 11(6) and (7) of the Trade Marks Act, 1999. Section 2(1)(zg) reads as follows:-
“Well-known trade mark”, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the fist-mentioned goods or services.”
Section 11 (6) and (7) read as follows:-
“The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as well-known trade mark including-
(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;
(ii) the duration, extent and geographical area of any use of that trade mark;
(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;
(iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;
(v) the record of successful enforcement of the rights in that trade mark, in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any Court or Registrar under that record.
(7) The Registrar shall, while determining as to whether a trade mark is known
or recognized in a relevant section of the public for the purposes of sub-section (6) take into account –
(i) the number of actual or potential consumers of the goods or services;
(ii) the number of persons involved in the channels of distribution of the goods or services;
(iii) the business circles dealing with the goods or services, to which that trade mark applies.”
Drawing my attention to Section 2(I) (zg) and Section 11(6) and (7) of the learned counsel for the respondents contended that in order to claim protection as a “well-known trade mark”, the applicant should establish several factors in enlisted sub-section (6) of section 11 and that in order to claim protection as a mark recognized in a relevant section of the public, the applicant should established the factors enlisted in sub-section (7) of Section 11. As on date, the applicant could not place its foot in India, due to the Government Policy not to permit Foreign Direct Investment in the field of trading and retailing. This is admitted ever applicant in para 20 of its affidavit in support of the application for injunction. Therefore, the learned counsel for the respondents contended that the applicant would not be entitled to protection, without first establishing their presence and the knowledge of the public in India about the trade mark being associated with the applicant.
17. However, Mr. Habibullah Basha, learned senior counsel appearing for the applicant drew my attention to sub-sections (8) and (9) of Section 11, which read as follows:-
“(8) Where a trade mark has been determined to be well-known in at relevant section of the public in India by any Court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registrations under this Act.
(9) The Registrar shall not require as a condition, for determining whether a trade mark is a well-known trade mark, any of the following namely:
(i) that the trade mark has been used in India;
(ii) that the trade mark has been registered;
(iii) that the application for registration of the trade mark has be India; (iv) that the trade mark
(a) is well-known in; or
(b) has been registered in; or
(c) in respect of which an application for registration has been filed in
any jurisdiction other than India; or
(v) that the trade mark is well-known to the public at large in India.
18. On a careful consideration of the rival contentions with regard to the term “well-known trade mark”, in the light of Section 2(1) (zg) read with sub-sections (6), (7), (8) and (9) of Section 11, I am of the considered view that the provisions of Section 11 may not be applicable to the case on hand. Section 11 deals with the grounds available to the Registrar for refusal to register a trade mark. We are not in this case concerned with the registration of the trade mark of anyone of the parties hereto. We are only concerned in this case, with the alleged act of the respondents in passing off their goods as those of the applicant. It is an admitted case of both parties that the application made by the respondents for the registration of the trade name/mark “CARREFOUR” in relation to furrniture under Class 20 is pending consideration with the Registrar and the applicant has not even applied for registration of the same trade name/mark with respect to furrniture under Class 20. Therefore, the case on hand could be taken primarily
as an action for passing off and it is not a case of grant or refusal to grant registration so as to invoke the provisions of Section 11.
19. Insofar as the definition of the term “well-known trade mark” under Section 2(1)(zg) is concerned, it is seen that the very concept of “well-known trade mark”, as distinguished from a mere “trade mark” (defined under Section 2(1)(zb)) has been incorporated in the new Act, for the purpose of protecting not only a mark which has come to be identified with a particular type of goods or services, but also for protection the same mark from being used in relation to other goods and services, if a substantial segment of the public which uses the first mentioned goods or services is likely to be mislead to believe that there is a connection in the course of trade between the second mentioned goods and the proprietor of the trade mark in relation to the first mentioned goods or services. The Trade and Merchandise Marks Act, 1958, did not define or deal with a “well-known trade mark”. Therefore, the very grievance of the applicant is that though the trade mark has not been registered in respect of furrniture in India in favour of the applicant, the same has been registered in respect of future in other countries and the same has also been registered in respect of other goods even in India. As pointed out above, it is not disputed by the respondents (i) that he applicant has obtained registration of the same trade name/mark “CARREFOUR” in respect of a variety of products including furrniture in several other countries; and (ii) that the applicant has obtained registration of the same trade name mark in respect of a variety of products except furrniture in India. Therefore, the grievance of the applicant that the substantial segment of the public for whom their products have come to be identified and associated with the trade name, are likely to take the products of the Respondents as having a connection in the course of trade, with the applicant, appears prima facie to be justified.
20. The contention of the learned counsel for the respondents that as on date, the applicant has no presence in India and that therefore, they cannot claim to hold a “well-known trade mark” as on date in India, cannot be countenanced for two reasons, viz. (a) that the applicant has already set up a Liaison Office of its associate by name CARREFOUR TRADING ASIA LTD at Gurgaon, Haryana with effect from 10.10.2000, as evidenced by the “Certificate of establishment of place of business in India”, a PAN Card and TAN Number, filed a Document No. 16 series; and (b) that the applicant had already entered into “Global Sourcing Agreements” with various manufacturers throughout India, as seen from Document No. 18 series and the invoices showing purchases, filed as Document No. 19 series. Therefore, the respondents cannot escape by contending that the applicant has no actual physical presence in India to maintain an action for passing off. The fact that the applicant has no applied for registration of the trade mark in India in relation to furrniture under Class 20, cannot also go to the rescue of the respondents, since the definitions of the words “trade mark” and “well-known trade mark” under Section 2(1)(zg) and of the Act, read together protects the proprietor of a trade mark in relation to a particular type of goods against exploitation by others in relation to other types of goods also, if there is a likelihood of a substantial segment of the public taking it to have a connection in the course of trade.
21. In order to substantiate his contention that actual physical presence in India is a sine qua non for acquiring transborder reputation and for seeking protection, the learned counsel for the respondents relied upon the Judgment of the Division Bench of the Delhi High Court in
Rob Mathys India Pvt. Ltd v. Synthes Ag Chur [1997 (17) PTC 669 (DB)]. In the said case, the Division Bench of the Delhi High Court considered the scope of trans border reputation or spill over reputation and held that the same cannot be accepted a the sole criteria for protecting a registered or unregistered trade mark. For holding so, the Division Bench of the Delhi High Court drew inspiration from the Judgment of the Apex Court in M/s. N.R. Dongre v. Whirlpool Corporation USA [1996 (16) PTC 583]. Therefore, the learned counsel for the respondents contended that transborder reputation, claimed to have been acquired by the applicant, cannot be the sole criteria for granting protection to their mark.
22. In any event, according to the learned counsel for the respondents the applicant has to establish actual presence in India since the Division Bench of the Delhi High Court held in page 716 of the aforesaid Judgment that “need of the user of the trade mark in India by plaintiff/respondent No.1 cannot be given a total go by”.
23. However, a careful consideration of the aforesaid Judgment of the Division Bench of the Delhi High Court would show that the law on the issue varied from the Courts in England and the Courts in Commonwealth countries and that the Indian Courts would do well to follow the middle path. The relevant observations of the Division Bench of the Delhi High Court in this regard are found in page 721, which read as follows:-
“It would thus appear that there is conflict of approach between the “hardline or national approach” of the English authorities and the “liberal international approach” of the Courts in other Commonwealth countries. We feel that we must follow a middle course. We must readily support decisions which seek to promote commercial morality and discourage unethical trade practices of making such a situation where Indian purchaser/consumer starts presuming franchise like connection between foreign products and Indian Products which either cause confusion or which appear to be deceptively similar. Indian Courts have consistently and rightly disapproved the attempt by Indian trade and industry to bask in the warmth of, and make illicit profit from, a reputation not earned legitimately by their own effort but built by others elsewhere, by the short cut of trickery and passing off and thus protected not only private rights but commercial morality and thus expanded the scope of passing off action to meet that end. This approach is essential to protect the interest of Indian users i.e., public in general. But, this approach must be confined to same or similar products or at the most closely related products and services. This approach cannot be extended to totally different kind of products. In this later area, in order to protect national economic interest English rigidity appears to be essential.”
24. Therefore, the trade mark/name used by the applicant for the past 47 years throughout the world, has to be protected, in order to promote commercial morality and discourage unethical trade practices (as observed by the Delhi High Court), since the applicant has obtained registration even in India in respect of similar products and closely related products such as office requisites under Class 16.
25. The learned counsel for the respondents also relied upon a Judgment of the single Judge of the Delhi High Court in Sears Roebuck and Company v. Happy House (TV) Mfg. Co. Pvt. Ltd. [1992 (12) PTC 59]. As in the present case, the plaintiff in the said case before the Delhi
High Court was an American Corporation running a chain of retail stores in several countries. When a Company in India started manufacturing and marketing its televisions under the name “SEARS”, the American Corporation instituted a suit in the Delhi High Court. In para 9 and 13 of its judgment, the learned Judge of the Delhi High Court, held as follows:-
“9. Undoubtedly, reputation in the modern world is not confined within political frontiers. However, in the present case, considering the evidence place by the plaintiff on record. I do not think it is necessary for me to go into the question whether physical commercial presence in India is necessary to protect a right in a passing off action. In the present case, the nature of activity of the plaintiff and that of the defendants totally different. The plaintiff does no manufacture televisions but is a chain of retail stores which sells all sorts of consumer items : Whereas the defendants are manufacturers of televisions do not sell all sorts of consumer items : Any other goods excepting television. It is thus, unnecessary to refer to the large number of authorities cited by the learned counsel for the parties because in all most all the cases there was some commercial transaction in the country where the action was initiated.”
“13. Thus unless evidence is brought before the Court showing the reputation and goodwill of the plaintiff in India as a manufacturer of televisions a substantial evidence of the reputation and goodwill of the plaintiff as a retail store in India is placed on record, this Court cannot grant the injunction restraining the defendants as prayed for by the plaintiff. The relief sought for by the plaintiff can be considered when the suit is finally decided.”
26. Unfortunately, I am unable to persuade myself to adopt the same view, as taken by the learned Judge of the Delhi High Court, for a variety of reason viz.
(a) the applicant has established that they have developed goodwill and reputation in several countries.
(b) the applicant has also established that they have secured 2500 registrations of their trade name/mark in several countries in respect of a variety of products’, including furrniture.
(c) the applicant has established that they have obtained several registrations of their trade mark/name in India, way back in the year 1995 in respect of many products excluding furrniture.
(d) while the applicant has an explanation for adopting the French word “CARREFOUR” as its trade name/mark, the respondents have not offered any explanation as to how they have come to adopt such a mark.
Therefore, the ratio laid down by the Division Bench of the Delhi High Court in the decision in Rob Mathys India Pvt. Ltd. case, appears to be more relevant for deciding the issue on hand.
27. The learned counsel for the respondents relied upon another judgment of a learned Judge of the Delhi High Court in Smithkline Beecham PIc. v. Hindustan Lever Limited, [1999 PTC 775]. In para 12 of the said judgment, the learned judge held that “since the produce was not available in the Indian Market having not been marketed and sold in the Indian Market by the plaintiffs, there was no scope for contending that the said product had already achieved a goodwill in India”. As in SEARS case (discussed in the previous paragraph), this judgment of the learned Judge of the Delhi High Court is also one passed in an Interlocutory application.
But as stated in the previous paragraph, the law laid down by the Division Bench of the Delhi High Court in Rob Matltys case to the effect that the goodwill acquired in respect of similar products and related products has to be taken into account provides an answer even to this judgment.
28. The learned counsel for the respondents, then relied upon another judgment of a learned Judge of the Delhi High Court in The Gillette Company v. A.K. Stationery [(2001 PTC 513 (Del)] for the proposition that for deciding prior user, use in India is necessary. But in the said case, the defendant started manufacturing and marketing its product under the trade mark from 1993 and the plaintiff filed an application for registration only in 1995. Therefore, the Delhi High Court applied the provisions of Section 33 of the old Act, to hold so. But at the same time, it was held in page. 528 of the said Judgment as follows:-
“No doubt the Courts in India have protected the transborder or spill over of international reputation of trade marks of overseas companies in various cases and would continue to do so. It also does not require any, emphasis that rapidly grown international trade makes it imperative that intellectual property are properly rights are properly recognised and managed in different countries of the globe. The Court frowns upon any attempt by one proprietor or appropriate the mark of a another proprietor although that proprietor is a foreign proprietor and the mark has only been used by him in a foreign country. However, these principles are to be applied keeping in view the salient aspects of each case.”
Therefore, the ratio to be drawn from the said judgment is only that which is extracted above.
29. The learned counsel for the respondents also relied upon two decisions of the Intellectual Property Appellate Board in Champagne Moet and Chandon v. Moet’s [2005 (30) PTC 323 (IPAB)] and Jolen Inc. v. Assistant Registrar of Trade Marks [2005 (30) PTC 542 (IPAB)]. But both cases arose out of orders of the Deputy Registrar/Assistant Registrar of Trade Marks disallowing the opposition of the appellant for the registration of the trade mark of the respondent. Moreover, those cases arose after the statutory authorities went into great detail on the question of prior use and acquisition of goodwill and reputation, after the parties let in evidence. Therefore, the IPAB had the benefit of pleadings as well as evidence let in before the Deputy/Assistant Registrar and considered the correctness of the orders passed by those authorities. But in this case, we are at the interlocutory stage and hence, the said decisions cannot provide a clue for arriving at a conclusion in this case.
FIFTH CONTENTION
30. Since the applicant instituted the suit only in February 2007, after the expiry of three years from the date of the last communication viz., 9.9.2003, the learned counsel for the respondents contended that the applicant was guilty of acquiescence. In order to drive home this contention, the learned counsel for the respondents drew my attention to Section 33 of the Act, which reads as follows:-
“33. Effect of acquiescence.-
(1) Where the proprietor of an earlier trade mark has acquiesced for a continuous period of five years in the use of registered trade mark, being aware of that use, he
shall no longer be entitled on the basis of that earlier trade mark
(a) to apply for a declaration that the registration of the later trade mark is invalid,
or
(b) to oppose the use of the later trade mark in relation to the goods or services in
relation to which it has been so used, unless the registration of the later trade mark was not applied in good faith.
(2) Where sub-section (1) applies, the proprietor of the later trade mark is not entitled to oppose the use of the earlier trade mark, or as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trade mark “may no longer be invoked against his later trade mark”.
31. But unfortunately, the preconditions prescribed under Section 33 for invoking the doctrine of acquiescence, are not satisfied in this case. Section 33 (1) prescribes two preconditions viz., (i) that there must be acquiescence for a continuous period of five years in the use of a registered trade mark; and (ii) that the proprietor of the earlier mark acquiesced to the use of the registered mark in spite of being aware of that use. In other words, the respondents should not only prove knowledge on the part of the applicant but also prove use of the mark for a continuous period of five years. Moreover, the words “acquiesced for a continuous period of five years in the use of a registered trade mark” appearing in Section 33 (1) makes it clear that such acquiescence by the proprietor of an earlier mark, should be in relation to a registered trade mark. The respondents have not so far obtained registration of the trade mark. Therefore, the applicant, who claims to be the proprietor of the earlier mark, cannot be said to have acquiesced in the use of a registered trade mark by the respondents.
32. Moreover, the respondents claim to have started using the trade name from July 2000 and admit to have received a cease and desist notice for the first time from the applicant on 17.6.2002. The exchange of notices which commenced from 17.6.2002, ended up with a legal reply dated 9.9.2003 and the suit was instituted thereafter in February 2007. Therefore, even if June 2002 is taken to be the date knowledge of the applicant and the date of commencement of any acquiescence, the suit has been instituted within five years. Hence, the applicant cannot be held to have acquiesced to the use of the mark by the respondents, so as to enable the respondents to claim protection under Section 33 of the Act.
33. The issue of acquiescence was considered in great detail by the Supreme Court in Ramdev Food Products Pvt Ltd v. Arvindbhai Rambhai Patel [AIR 2006 SC 3304]. In para 105 and 106 of the said Judgment. the Apex Court crystallised the law on the point as follows:-
“105. Acquiescence is a facet of delay:- The principle of acquiescence would apply where: (i) sitting by or allow another to invade the rights and spending money on it; (ii) it is a course of conduct inconsistent with the claim for exclusive rights for trade mark, trade name, etc.”
“106. In M/s. Power Control Appliances v. Sumeet Machines Pvt. Ltd. [(1994) 2 SCC 448 : 1995 (15) PTC 165 (SC)] this Court stated:
“Acquiescence is sitting by, when another is invading the rights and spending money on in. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc. It implies positive acts; not merely silence or inaction such as is involved in laches…. “
Therefore, I am unable to accept the contention that there was acquiescence on the part of the appellant.
SIXTH CONTENTION
34. The next contention of the respondents is that they have applied for registration of the trade mark under Application No. 1046701 dated 21.9.2001 in respect of goods falling under Class 20 and that the same was advertised in the Trade Marks Journal No. 1330 Supp. 1 dated 15.5.2005 and that there had been no opposition form anyone till date.
35. The factual position that the respondent have already applied for registration and that the applicant has not filed any Notice of Opposition till date to the advertisement published in the Trade Marks Journal dated 15.5.2005 is admitted by the applicant. However, the learned Senior Counsel for the applicant brought to my notice that nothing is lost for the applicant, since a second advertisement was published in the Trade Marks Journal No. 1355 dated 1.11.2006 and that the time limit prescribed for filing Notice of Opposition under Section 21 (1) of the Act had not expired. Section 21 (1) allows a time limit of three months for filing a Notice of Opposition. This period of three months can be extended by one more month at the discretion of the Registrar, on an application made to him. The section makes it clear that the period of limitation for filing a Notice of Opposition would commence from the date of the advertisement or re-advertisement. In this case, the date of advertisement was 15.5.2005 and the date of re-advertisement was 1.11.2006. Therefore, the period of limitation would commence only form the date of re-advertisement.
36. A Division Bench of this Court (to which I was a party) has already held in Nalli Sambasivam v. The Deputy Registrar of Trade Marks [2006-4-L.W. 658] that the date of the advertisement would mean only the date on which the journal was published and made available for circulation for the first time. Therefore, the contention of the respondents that they had already applied for registration and that there had been no opposition till date, does not really help them.
SEVENTH CONTENTION
37. The last contention of the learned counsel for the respondents is that they have come to use the trade mark as a result of “honest adoption” and that therefore, the applicant is not entitled to prevent them from using the trade mark. Elaborating on this contention, the learned counsel for the respondents contended that the applicant has not so far started using the mark in India in relation to furrniture and that therefore the respondents, who have been using the trade mark since July 2000 in India in relation to furrniture, cannot be uprooted.
38. In order to drive home the said contention, the learned counsel for the respondents invited my attention to Section 11 (11) and Section 34 of the Act. Section 11 (11) reads as follows:-
“Where trade mark has been registered in good faith disclosing the material information to the Registrar or where right to a trade mark has been acquired through use in good faith before the commencement of this Act, then, nothing in this Act shall prejudice the validity of the registration of that trade mark or right to use that trade mark on the ground that such trade mark
is identical with or similar to a well-known trade mark.” Section 34 reads as follows:-
“34. Saving for vested rights. – Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior –
(a) to the use of the first-mentioned trade mark in relation to those goods or services be the proprietor or a predecessor in title of his; or
(b) to the date of registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his, whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second mentioned trade mark by reason only of the registration of the first-mentioned trade mark.”
39. The Central Government appointed 15.9.2003 as the date of commencement of the Trade Marks Act, 1999, by a notification issued on 15.9.2003 in exercise of the powers conferred under Section 1 (3) of the Act. Therefore, the learned counsel for the respondents contended that as a person who started using the trade mark “CARREFOUR” from July 2000, prior to the date of commencement of that Act, the respondents are entitled to protection under Section 11(11) of the Act. But in my considered view, the said contention is misconceived. Section 11, as pointed out in para 18 above, enumerates the grounds on which the Registrar is entitled to refuse registration of a trade mark. Even if it is presumed for the sake of argument that Section 11 (11) applies both to the registration of a trade mark as well to the acquisition of a right to a trade mark through prior use, it is made clear by the section that such use must be” in good faith”. The respondents have not proved such use in good faith. Admittedly, the word “CARREFOUR” is a French word first used by the applicant in 1960 and being used by them in relation to their retail business for the past 47 years throughout the world. Therefore, the respondents ought to have shows as to how they adopted a French word in India, especially in relation to furrniture. There is not even a whisper in the pleadings about the manner the respondents came to adopt the said word.
40. Insofar as the contention based upon Section 34 of the Act is concerned, the contention of the learned counsel for the respondents cannot hold water, since the object of Section 34 is totally different. Under this section, if a person has been using a trade mark in relation to his goods from a date anterior in point of time to the date of registration of a similar mark, the registered user or proprietor of a registered mark is prevented from interfering with the right of the prior user. In other words, the vested rights of a prior user of a trade mark are protected by this section from interference by a registered subsequent user. As a matter off act, this section would actually operate in favour of the applicant, even if the respondents secure registration.
41. The contention of the respondents about “honest adoption” cannot also be accepted, since the respondents have established only “adoption” and not “honest adoption”. As pointed out already, the applicant, as a French Company, adopted the trade mark, which is a French word, way back in the year 1960 and had started using the same in many countries throughout the world. They have also secured registration of the said trade mark is several countries including India. Though the applicant had not obtained registration of the said trade mark in
relation to furrniture, in India, they have obtained registration of the said mark in relation to furrniture also, in other countries as seen from several documents filed by them. The registration of the trade name “CARREFOUR” secured by the applicant in India, dates back to January 1995. The respondents started adopting the mark only in July 2000 and there is no whisper as to how the respondents came to adopt a French word for their business in furrniture. Hence, the respondents in my considered view, have failed to pass the test of “honesty in adoption”.
42. The learned counsel for the respondents relied upon the provisions of Section 29 (4) (b) and (c) of the Act, to buttress his contention that the question of infringement would arise only if the trade mark is used in relation to same or similar goods and only if the registered trade mark has a reputation in India. But in my considered view, the said question need not be gone into, in view of the admitted position that Section 29 (4) applies only to an infringement of a registered trade mark and not to an action for passing off in respect of an unregistered trade mark. Therefore, the applicant is entitled to protection under Section 27 (2) of the Act which reads as follows:-
“Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.”
In view of the non abstante clause contained in Section 27 (2), the provisions of Section 29 (4) will have no application to the case on hand.
CONCLUSION:
43. To summarise – (i) The applicant/plaintiff has established that they had adopted the trade name ‘CARREFOUR” way back in the year 1960 and started a chain of retail outlets originally in France and spread over to European, Asian and Middle East countries, as seen from Document Nos. 2, 4, 5 and 6. (ii) Through Document Nos. 7 and 8, the applicant has also established that they have world-wide registrations (about 2500 in number) of the trade mark for a variety of products including furniture. (iii) That the applicant has obtained registration in India way back in 1995 in respect of several other products (except furrniture) is also established by Document No. 9. (iv) That the applicant has a huge turnover and that they have incurred heavy expenditure on publicity is established by Document Nos. 12 and 13. (v) That the applicant has already set foot in India is established by the Certificate issued by the Reserve Bank of India, the PAN Card and TAN Number filed as Document No. 16. (vi) The respondents have given up their claim to use the “C” logo, immediately after the receipt of a cease and desist notice from the applicant in the year 2002. By such a conduct, the respondents had given up their claim over a part of the trade mark and hence, the respondents will explain as to how they could sustain their claim in respect of the other part of the trade mark.
44. In view of the above overwhelming material, I am of the view that the applicant/plaintiff has established a prima facie case, The balance of convenience is also in favour of the applicant in view of the fact that the public is likely to be deceived into thinking that the products offered by respondent have a connection in the course of trade, to the applicant. The applicant would suffer irreparable injury if injunction is refused.
45. In view of the above, all the applications for injunction O.A. Nos. 100 to 105 of 2007 are allowed and the application for vacating the injunctions in A. Nos. 2014 to 2019 of 2007 are dismissed.
