- (1.) A word mark, a label mark and copyright relating to them are involved in this application. The word is "Emami". I will come to the details later.
(2.) This suit was filed in the year 2001. Thereafter an application for injunction was filed by the plaintiff. An injunction was sought to restrain the defendants from infringing the plaintiff's label mark "Emami". This is that injunction application (G. A. 4273 Of 2001) being presently heard by me.
(3.) It has a long history. Upon completion of affidavits it was heard at length before Indira Banerjee J. She delivered a judgment on 29th August, 2005. The Court came to the prima facie conclusion that the plaintiffs had not been able to establish a prima facie case. It was observed that the defendants were using the alphabets TTK along with "Emami". Emami was also written in hindi. Furthermore, the plaintiff had not been able to make out a prima facie case regarding damage to its goodwill or "tarnishing of its image and repute". They had made considerable delay in approaching the Court. Her ladyship also went to the extent of saying that the plaintiff could not establish "any great reputation". The sales figures "are hardly impressive". The learned Judge further said and held: "As rightly argued by Mr. Chakraborty registration in itself may not be a defence against passing of, if it can be established that the defendant was trying to pass off its goods as that of the defendant. However, as observed above, the conditions for an action for passing off must exist. Even if a mark is not internationally used, the mark might still be entitled to protection, if the plaintiff could establish even prima facie that the goods of the plaintiff were of such repute that the users would only associate the mark Emami with the goods of the plaintiff and that use of the mark by the defendant even in respect of totally different products would give the defendant an unfair advantage and consequently tarnish the image of the plaintiff. There is nothing on record to show that the plaintiff has in any manner been prejudiced. The plaintiff has itself not taken any action to stop the defendant from using the mark. The plaintiff has knowingly allowed the defendant to use the mark. Moreover the defendant was registered as proprietor of the mark Emami in respect of clothing before the plaintiff. It is difficult to understand how both the plaintiff and the defendant could have obtained registration of the same Trade Mark in respect of the same class of goods. The plaintiff was prima facie not entitled to registration of the mark in respect of clothing until and unless the earlier registration of the Trade Mark in the name of the plaintiff was cancelled. It is admitted in reply that the predecessor in interest of the plaintiff, Kemco Chemicals issued a notice way back in August, 1991 through its lawyers calling upon the defendant to cease and resist from using the mark Emami in respect of hosiery. No follow up action appears to have been taken. The explanation that there was no use of the mark after 1991 and till 2001 when a notice was once again issued and the instant suit filed is difficult to accept. The defendants have produced bill books, challans and advertisements. Newspaper advertisements of textiles under the trademark Emami appear to have been issued till 2000. It is true that delay in itself may not be fatal to an action for passing off. At the same time, in considering an application for injunction, delay cannot be ignored and not so when the delay may reasonably be construed as laches amounting to acquiescence, as in this case, where no action has been initiated for over ten years after issuance of notice. Waiver of the notice might be inferred. In any case, there being no whisper of the first notice, the petition suffers from suppression of a material fact. For the reasons stated above, the defendant cannot be injuncted from using e mark 'Emami' in respect of hosiery goods at this stage. It, however, appears that the plaintiff has copy right in the 'Emami' label, with the word 'Emami' depicted above in a stylized and artistic manner with the first letter written like turned 3 followed by the letters mami in small letters and the dot over 'I' resembling a flower with six petals and/or a star. There will be therefore be an order of injunction restraining the defendants from infringing the copy right of the plaintiff in the 'Emami' label as registered, with the word 'Emami' depicted above motifs in a stylized and artistic manner with the first letter written like turned '3' followed by the letters mami in small letters and the dot over 'I' resembling a flower with six petals similar to a star. ";