- (1.) In asuit for infringement of trademark and passing off the plaintiffs have filed this application seeking various interim reliefs against the respondents.
(2.) The petitioner no.1 claims to be in the cement business since 1950 and is one of renowned manufacturers of cement in India.The petitioner no.2 is primarily involved in the manufacturing and marketing of cement. In the year 2016 the petitioner no.1 has also taken over the petitioner no.2 along with its brand name. Thus, the petitioner no.2 is a wholly owned subsidiary of the petitioner no.1.Since the year 2014, the petitioner no.2 started to use openly, extensivelyand continuouslyitstrademark "PERFECT" cement and its label variants with the check mark device .As part of acquisition of the petitioner no.2 in the year 2016 and in terms of a written assignment agreement dated October 21, 2016 the saidtrademark "PERFECT"and its label variants with the distinctive check mark logo and the artistic work also came to be owned by the petitioner No. 1. The products bearing thetrademark "PERFECT",werethereafter re- launchedbythepetitionersin2016 witha redesigned logo by addition of the words "MP BIRLA" to the distinctive trade mark "PERFECT". Subsequently, in 2018, the petitioners also launchedthe trademark"PERFECTPLUS"along-with its logo variant . The trade marks "PERFECT", "PERFECT PLUS" and the check mark device are the prominent, leading, identifying and essential features of both the said trademarks. The phrase "MP BIRLA", the name of the group to which the petitioners belong, is written in small font. The said trademarks of the petitioner No.1 "PERFECT"/ "PERFECT PLUS",are depictedon theactualproduct packaging in highlydistinctiveandconspicuousmanner,with unique styleswhich are accompaniedbydistinctive andunique trade dresses.The trademark of the petitioner no.1 is a registered trademark. In December 2016, the petitioner no.1 has also applied for registration of the trademarkand the registering authorityhas acceptedand advertisedthe said application of the petitioners. Apart from manufacture and sale of cement by the petitioner No. 1 under the trademarks "PERFECT" and "PERFECT PLUS", the same are also manufactured and sold by the PetitionerNo. 2 withtheconsent ofpetitionerNo.1. The petitioners claim that cement sold by them bearing the trade marks "PERFECT"/ "PERFECTPLUS"have acquired enormous goodwill and reputation with anincreasing marketshare andsales.The petitioners have relied upon documents to indicate their sales figure.The petitioners claim that they have spent huge amount of moneyonsales andpromotionalactivities,including advertisements in various newspapers, magazines and trade journals etc.oftheir productsbearingthe distinctive trademarks "PERFECT" and "PERFECT PLUS" with.The Petitioners'products bearing the trade marks "PERFECT" and "PERFECT PLUS" have been extensively sold and promoted across the country and such products are referred to and purchased by asking for as "PERFECT"/ "PERFECT PLUS" products and members of the trade and public, alike identify such products with the petitioners and none else. Apart from the said trademarks "PERFECT"/ "PERFECT PLUS" the petitioner no.1 also owns and uses the other registered trademarks, namely and The trademarks comprising "SAMRAT", the device and "BIRLA" have been used by the petitioner no.2, with the consent of the petitioner no.1. Due toitssustained presence in themarketcoupled with substantial anduninterruptedinvestment made inmarketing and branding, the said trademarks of the petitioner no.1, have also achievedan iconicstatusin theconsumer consciousness and unparalleled and enviable reputation in the market so much so that, any use of the trade marks comprising "PERFECT"/ "PERFECT PLUS", "SAMRAT", the device and "BIRLA" are immediately associatedbythe membersof therelevant tradecirclesand public, with the petitioners and their business. The petitioners also claim to enjoy common law rights, as well as statutory rights under theTrade Marks Act , 1999, as well asCopyright Act , 1957, in relation to the trademarks "PERFECT"/"PERFECT PLUS", "SAMRAT"/ and "BIRLA" use of any similar/ deceptively similar mark, by any entity, not connected with the petitioners would be an infringement of the rights of the petitioners and tantamount to infringement and passing off. According to thepetitioners, the respondentnos.1and 2 companiesareowned, controlledandmanaged by the respondent nos.3 to 5 who are the shareholders and directors of both the said companies. The respondent nos. 1 and 2 company also manufacture and sell cement.It is the case of the petitioners that the respondents, have blatantly copied and/orimitatedthe trademarks/trade dresses of the petitioners "PERFECT" and "PERFECT PLUS" products, including the check markdevice, colour combination, the placement and arrangement of various graphical elements and get up of the cement bags, as also the positioning of other content.
(3.) The petitioners have also disclosed documents to show that none of the respondents has any registered trademark in their favour and they have only filed applications for registering a trademark "NEW KLK CEMENT"/ "PERFECT PLUS"/ "NEW BOKHARA CEMENT". One of the said applications for registering of the trademarks was filed by the respondent no.3 after receipt of the notice dated December 12, 2018 from the petitioner. It is also submitted that the respondentnos.1 and 2 have wrongfully,illegally filed applications for registration of other marks, closely resembling the trademarksofthepetitioner no.1,the deviceand "BIRLA".;