1 IN THE HIGH COURT OF JUDICATURE AT BOMBAY O. O. C. J. NOTICE OF MOTION NO.4243 OF 2007 IN SUIT NO.3085 OF 2007 Inorbit Malls (India) Pvt. Ltd. ...Plaintiff. Vs. Chug Housing & Developers & Ors. ...Defendants. .... Dr.Virendra Tulzapurkar, Senior Advocate i/b. M/s. Khaitan & Co. for the Plaintiff. Ms.Sunanda R. Kumbhat for the Defendant. ..... CORAM :DR.D.Y.CHANDRACHUD, J. January 11, 2008. P.C.: In a suit for infringement and passing off, the Plaintiff has taken out a Motion for interlocutory relief. On 27th November 2007, directions were issued for the listing of the Motion for final disposal on 17th December 2007 and the Defendant was to file a reply by 11th December 2007. No reply has been filed by the Defendant until date. 2. The Plaintiff is a Company incorporated under the Companies' Act, 1956 and is engaged in the construction and 2 management of shopping malls. The Plaintiff is the proprietor of a trade mark called “INORBIT” which has been registered in respect of goods falling in Classes 3, 7, 9, 11, 17, 18, and 26. At Exhibit 'C' to the Plaint is a certificate issued by the Chartered Accountant of the Plaintiff certifying that licence fees in the amount of Rs. 31.95 crores were received by the Plaintiff for the financial year 2006-07. The income earned by the Company from advertisements, promotions and signages was Rs. 4.48 crores for the aforesaid financial year. Paragraph 9 of the Plaint contains a description of several awards received by the Plaintiff recognizing the position of the Plaintiff as a premier shopping destination. The Plaintiff has applied for registration of its mark in respect of goods and services falling in classes 14, 16, 20, 21, 24, 25, 28, 35, 41 and 42. These applications are pending. 3. In or about October 2005, the Plaintiff claims to have learnt that the Second Defendant was intending to use the name 'Orbit' in relation to a Mall at Indore. A cease and desist notice was issued by the Plaintiff on 19th October 2005 pointing out that the trade mark 3 Orbit that was proposed to be used was deceptively similar to the mark Inorbit of the Plaintiff. This was followed by a further notice dated 11th July 2007 to which a reply was received from the Defendant's Advocate on 26th July 2007. The reply stated that the First Defendant carried on construction business since long and had constructed a Shopping Mall at Indore under the name 'Orbit' after applying for registration of the mark in class 37 of the Fourth Schedule to the Trade Marks Act. According to the reply, the mark has been used by the First Defendant for about three years without the possibility of confusion or deception. The suit was instituted on 31st October 2007. 4. On behalf of the Plaintiff, the submission is founded on the provision of Section 29(4) of the Trade Marks Act, 1999. Sub-section (1) of Section 29 provides that a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to the trade mark in relation to goods or services in respect of which the trade mark is registered and 4 in such manner as to render the use of the mark likely to be taken as being used as a trade mark. Sub-section (2) of Section 29 provides for certain situations in which a registered trade mark is infringed by a person who not being a registered proprietor or permitted user uses in the course of trade, a mark which is likely to cause confusion or to have an association with the registered trade mark. Those situations are provided in clauses (a), (b) and (c ). Clause (a) deals with the identity of the mark with a registered trade mark and the similarity of the goods or services covered by such registered trade mark. Clause (b) deals with the similarity of the mark with the registered trade mark and the identity or similarity of the goods or services covered by a registered trade mark. Clause (c ) deals with the identity of the mark with a registered trade mark and the identity of the goods or services covered by a registered trade mark. 5. Sub-section (4) of Section 29 expands upon the ambit of protection which is available to the proprietor of a registered trade mark. Sub-section (4) provides as follows : 5 “A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which - (a) is identical with or similar to the registered trade mark ; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c ) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.” 6. Under sub-section (4), an infringement of a registered trade mark can take place even where the mark is used in relation to goods and services which are not similar to those for which the trade mark is registered, when the mark is identical with or similar to a registered trade mark, and the registered mark has a reputation in India consequent upon which the use of the mark without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark. Sub-section (4) in other words, widens the scope of protection available to a registered proprietor inasmuch as, in the circumstances stipulated therein, an infringement can take place even by the use of a mark, in respect of goods and 6 services which are not similar to those for which a trade mark is registered. 7. In the present case, as already noted above, the mark Inorbit of the Plaintiff is registered in classes 3, 7, 9, 11, 17, 18 and 26. The application for registration in several other cases including class 35 which deals with advertising, retailing and operating chain stores and shopping malls is pending. Section 29(4) would entitle the Plaintiff to protection against the infringement of its mark by the use of an identical or similar mark even in relation to goods or services which are not similar to those for which the mark is registered, provided that the requirements of sub-section (4) of Section 29 are fulfilled. The material before the Court, prima facie, indicates that the registered trade mark, 'Inorbit', of the Plaintiff has an established reputation in India and the use of the mark 'Orbit' by the Defendants would result in an unfair advantage and would be detrimental to the distinctive character or reputation of the registered mark of the Plaintiff. The averments contained in paragraphs 4, 5, 8 and 9 of the Plaint read with Exhibits 'C' and 'C-1' establish a prima facie case. 7 8. The Defendants have chosen to remain silent and have not controverted the case of the Plaintiff though sufficient opportunity has been granted to them to do so. 9. A prima facie case has been made out for the grant of interlocutory relief. The balance of convenience in such a case is in favour of the Plaintiff. The mark of the Defendant is deceptively similar and the user thereof would trade on the established reputation of the Plaintiff resulting in a detriment to the distinctive character and reputation of the mark of the Plaintiff. Prima facie, there is merit in the submission that an unwary shopper who visits the shopping mall of the Defendants would be led to believe that the goodwill and reputation of the shopping mall of the Plaintiff attaches to the mall of the Defendants. This would be detrimental as to the distinctive character and repute of the mark of the Plaintiff. Irreparable harm and injury would be caused to the Plaintiff unless an interlocutory injunction were to be granted. 8 10. Counsel appearing on behalf of the Defendants has stated on the basis of the reply dated 26th July 2007 that the Third Defendant is not a partner of the First Defendant. In that view of the matter, the grant of the injunction in the present case, will have to be confined to Defendant Nos.1, 2 and 4. The Fourth Defendant is a condominium maintenance society and in my view, it would be in the interests of justice if sufficient time is granted to the Fourth Defendant to carry out necessary rectification in pursuance of the order of injunction which I now propose to pass. The Notice of Motion is made absolute in terms of prayer clauses (a) and (b) save and except for the bracketed word, namely, “perpetual” which shall stand excluded from the purview of prayer clauses (a) and (b). The Fourth Defendant shall take necessary steps for the rectification of its name within a period of three months. The Notice of Motion is accordingly disposed of. ....... 9