CLINIQUE LABORATORIES LLC Vs. GUFIC LIMITED

JUDGEMENT

(1.) THE applications of the plaintiff for interim relief, of the defendant for vacation of the ex-parte order dated 16th december,2008 and of the plaintiff under Section 124 (1) (ii) of the trademark Act, 1999 are for consideration. The plaintiff has sued for injunction restraining infringement of its registered trademark clinique and for restraining defendants from passing off its goods as that of the plaintiff. It is the case in the plaint itself that the defendant is the registered proprietor of the trademark CLINIQ; that the plaintiff prior to the institution of the suit has initiated rectification action before the Registrar. According to the plaintiff, the plaintiff from the pleadings of the defendant in this suit learnt of other registrations including DERMA CLINIQ in the name of the defendant and which the plaintiff contends it was not aware of at the time of institution of the suit. The plaintiff has thus applied for permission to file an application for removal of the registrations in the name of the defendant and for stay of the present suit till the disposal of the rectification application.

(2.) AS far as the application under Section 124 (1) (ii) is concerned, there is no contest. It has not been disputed that the suit has to be stayed pending the decision on the rectification application. Arguments were addressed on the interim relief pending such proceedings before the Registrar. It is the contention of the senior counsel for the defendant that it being now the admitted position that the defendant is also the registered proprietor of the trademark, while considering the interim relief, test of passing off only which are stated to be liberal and not of infringement of trademark which are stated to be stricter are to be applied.

(3.) IT is deemed expedient to consider first, the test to be applied for interim orders, whether of infringement or of passing off. The senior counsel for the defendant has contended that though Section 124 (5) provides for grant of interim relief while staying the proceedings in the suit, the said interim relief in cases falling under section 124 (1) (b) cannot be of injunction restraining the defendant from using its registered trademark. The reason given is that Section 28 (3) of the Act expressly provides that where two or more persons are registered proprietor of the trademark which are identical or resembling each other, the exclusive right to the use thereof shall not be deemed to have been acquired by any one of those persons as against the other of those persons merely by registration. It is contended that if the interim relief of injunction restraining a registered proprietor of trademark is held to be possible under section 124 (5), the same would render Section 28 (3) otiose and which ought not to be done. It is argued that harmonious construction is possible only by so reading Section 124 (5), as limiting the interim relief to reliefs other than of injunction against user by the registered trademark. It is further argued that Section 27 of the act expressly excludes from the purview of the Act action for passing off and the plaintiff can be entitled to interim injunction against a registered proprietor of a trademark only if satisfies the ingredients of passing off and which it is argued, the plaintiff does not in the present case.