Bombay High Court Grants Interim Protection In Intellectual Property To RPG Enterprises Ltd. On Grounds Of Being Deceptively Similar Leading To Passing-Off

Justice S.J. Kathawalla in his last week dealt with a challenge to intellectual property rights wherein he reiterated the rights of a Plaintiff in long standing marks over any right created by registration. The suit was filed by the Plaintiff against the Defendants claiming infringement of its registered trade marks; infringement of copyright and passing off. The court observed that the moot question that requires consideration in the present case is whether the Defendants' use of the trade mark and/or trade name containing 'RPG' as its only leading, essential and prominent feature in respect of their services is likely to cause confusion or deception in the minds of the public so as to mistake or associate the same with the Plaintiff or the services offered by the Plaintiff under its RPG trade marks. According to the Plaintiff, in the year 1979, the Plaintiff honestly adopted the distinctive and unique trade mark RPG, i.e. an acronym derived from the initials of its founder, Mr. Rama Prasad Goenka, a known industrialist. Over the subsequent years, the Plaintiff and its group companies, have adopted various stylized / formative trade marks incorporating the mark RPG in respect of their various products and services. It is the Plaintiff's case that it has been using the RPG Marks continuously, extensively and uninterruptedly in respect of its products and services, in the sense of a trade mark, trade name as well as trading style, and therefore, the mark RPG has become a source identifier of the Plaintiff and its goods / services thereunder. The Plaintiff has applied for and secured registration of several RPG / RPG formative marks in various classes under the Trade Marks Act, 1999. The Plaintiff has also secured copyright registration in respect of the artistic work in its RPG Logo. The Plaintiff claims to be the owner of various websites under the domain names, incorporating the trade mark RPG. The Plaintiff is also active on popular social media websites such as Facebook, YouTube, Twitter and LinkedIn and has a substantial following on its Facebook and Twitter pages. It is stated that the Plaintiff has effected large sales of its products and services bearing the RPG marks. Plaintiff submits that the Defendants' marks, viz, RPG Opticals and RPG Pharmacy and are visually, structurally, phonetically identical with and/ or deceptively similar to the Plaintiff's prior RPG Marks in each and every aspect. Plaintiff further submitted that the adoption and/or use of the impugned marks by the Defendants, is likely to cause confusion and deception in the minds of the consumer and/or members of the relevant trade. Such consumers are likely to be misled into assuming that the services of the Defendants originate from the Plaintiff, when they do not, and/or that the services of the Defendants are in some way endorsed, licensed by, affiliated with and/or connected with the Plaintiff, when no such connection exists. the Defendants' use of RPG as a part of the impugned domain names (www.rpgpharmacy.com and www.rpgopticals.com) also amounts to infringement and passing off since the Plaintiff maintains various active websites under the domain names incorporating its prior and famous trade mark RPG, inter alia, www.rpggroup.com, www.rpg.in, www.rpglifesciences.com, www.kecrpg.com, www.rpgcables.com and www.raychemrpg.com. Defendants countered that their marks are different from the Plaintiff's RPG Marks. Defendants' marks are logo marks whereas the Plaintiff's marks are 'word marks' and 'logo mark'; Defendants' impugned marks are combination of the words 'RPG' + "Opticals"/"Pharmacy". Defendant No. 1 and 2's impugned marks also include the taglines "PERFECT LOOK PERFECT VISION" and "YOUR HEALTH IS OUR WORLD", respectively. the Defendants have claimed that they are using the impugned marks in respect of services (i.e. 'RPG Opticals' in respect of the services falling in class 35 namely- advertisement, wholesale, retail of Optical lenses, sunglass, eyewear, eyeglasses, contact lens, ophthalmology, spectacles and other optical products, and 'RPG Pharmacy' in respect of the services falling in class 44 namely- pharmacy services, pharmacy advice, pharmacy dispensary services), that they are not manufacturing or supplying any goods under their trade marks and that the Defendants are not manufacturers, but only retailers. In contrast, the Plaintiff is manufacturing goods under its RPG Marks. The Defendants have filed their respective applications in classes 35 and 44 and the Plaintiff has no registration for the service category. The Defendants are using their marks 'RPG Opticals' and 'RPG Pharmacy' only as a trade name and they are not selling any goods under the mark RPG. The use by the Defendants of the expression RPG is found only in the trading name and hence the Plaintiff has to prove infringement, if any, under Section 29(5) of the Trade Marks...

Bombay High Court Grants Interim Protection In Intellectual Property To RPG Enterprises Ltd. On Grounds Of Being Deceptively Similar Leading To Passing-Off

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