SKIPPER LIMITED Vs. AKASH BANSAL & ORS.

JUDGEMENT

(1.) The petitioner claims to be the proprietor of the word mark "BANSAL". The petitioner claims that petitioner has been manufacturing, selling and marketing metal pipes manufactured under the trade mark "BANSAL" with the mark "SKIPPER" suffixed thereto from 1981 without any interruption. The petitioner's turn over during the last financial year was Rs.1300 crores. The petitioner applied for registration of word mark "BANSAL" on 16th December, 2010 and the said mark has been registered in respect of pipes and tubes of metal and flexible pipes not of metal. The registration certificate is dated 29th May, 2015. The petitioner on 11th July, 2011 applied for registration of the word mark "SKIPPER BANSAL" and "BANSAL SKIPPER" and the said mark has been registered on 1st July, 2015. The petitioner has also applied for registration under class 6 and17 and the said marks have been registered in respect of both the classes on 1st July, 2015 and 5th October, 2015 respectively. On 6th September, 2010 the plaintiff has applied for registration of the word mark "BANSAL SKIPPER" under class 17 and the said trademark has been registered on 22nd May, 2015.

(2.) The plaintiff claims that by virtue of aforesaid registration the petitioner has acquired statutory right over the said trademark and is entitled to have exclusively used of the said trademarks. The petitioner alleged that on or about May 2015 the petitioner for the first time found that the products of the respondents were offered for sale under the mark "BANSAL ASTER". It is alleged that the "BANSAL ASTER" is the combination of the petitioner's trademark "BANSAL" and the mark "ASTER" is deceptively similar to the mark "ASTRAL" of M/s. Astral Pipes. The petitioner claims that both the petitioner and the said Astral Pipes are the market leaders in PVC pipes.

(3.) It is contended that by combining the two words "BANSAL" and "ASTER" the respondents are trying to piggybank the goodwill and reputation of the petitioner and the said Astral Pipes. The plaintiff issued a cease and desist notice date 7th May, 2015. The respondents replied to the said notice by a letter dated 26th May, 2015. It is contended that the respondents wanted to discuss the matter relating to infringement. It is submitted on behalf of the plaintiff that adoption of the said mark by the respondents is dishonest and the respondents are not entitled to a plea of bona fide use of the said mark as in the affidavit in opposition and during argument the respondents took the defence of bona fide use of the offending and infringing marks. It is submitted that the respondents had applied for the mark "Bansal Aster" on 8th January, 2015 claiming user since 3rd December, 2014. The name of the proprietor was given as Aakash Bansal claiming that he was carrying on proprietorship business under the name and style of "BANSAL ASTAR". Another application was filed on 20th May, 2015 for registration of the mark "BANSAL ASTAR" claiming user since 3rd December, 2014. The application was in the name of a partnership firm called Bansal Polymers, partners of which were P.L. Bansal, Bikash Bansal and Aakash Bansal.