DelhiHigh Court in the case of Virgin Enterprises Ltd & Anr. v. Virgin Foods andFeeds Pvt Ltd & Ors. decided by Hon’ble Mr. Justice Manmohan on 28th August2017 (CS (COMM) 824/2016) granted miscellaneous reliefs to the plaintiffs owingto passing off and infringement of its trademark as stated in the preamble ofThe Trademarks Act, 1999 which provides for registration and better protectionof trademark and for the prevention and use of fraudulent marks.Plaintiffsin this case is the prior user of the trademark “Virgin” and has obtainedregistration for its use for over 3000 “Virgin” trademarks across the globeincluding India and is a well-known and famous trade mark. However thedefendant tried to use this famous mark in his business so as to establish anon-existing nexus between the plaintiffs and defendants to lure the customers.
On 28th October, 2015 this Court granted an ex parte interiminjunction in favor of the plaintiffs and against the defendants restrainingthe latter from using the name “Virgin” in manufacturing, selling, offering forsale, advertising, directly or indirectly dealing in advertising services orany other related services under the said corporate name. The ex parte interiminjunction was confirmed on 4th may 2017 as the defendants did notmake any appearance regardless of services. Issueemerged for consideration is whether infringement and passing off is proved inthis combined action and if so then can all the reliefs sought be allowed? Plaintiffscontended that they are the prior user of the trademark “Virgin” and have obtainedregistration of it across the globe including India. It is a well-known andfamous trade mark as defined under section 2(1) (zg) and satisfy the otherrelevant provisions of the Trademarks Act, 1999 having trans-border reputation.The Trade Marks Registry has recently added the plaintiffs’ mark in the list ofWell-Known Trademarks. Their business has an annual turnover running inbillions of pound sterling. On the contrary the defendant has dishonestlyadopted the trademark “Virgin” as part of its company name which is identicalto the plaintiffs’ well known trade mark causing irreparable loss and damage tothe plaintiffs as they are engaged in all kinds of foods, chemicals, feedsetc.
, taking the role as manufacturers, dealers, distributors, processors or likewise.Defendants were neither bothered to put their contentions nor were even readyto rebut the averments of plaintiffs hence there was only silence from theirpart. Theaforementioned action of infringement and passing off invited the institution ofthis suit for a plethora of reliefs like:a) Togrant an order for permanent injunction b) Toissue direction to the company to delete the name “Virgin” from its companynamec) Inthe alternative, to issue direction to the Regional Director and Registrar ofCompanies , Ministry of Corporate Affairs, Hyderabad directing the defendant todelete the name “Virgin” from its company named) Togrant damages to the tune of Rs. 21,00,000/-for plaintiffse) Todirect the defendant to submit the Account of Profits and to pay the plaintiffsall the duesf) Costsof the suit and incidental expenses maybe awarded to the plaintiffs and against the defendantsg) Anyother just and equitable relief in the interests of justice and equity may bepassed Afteran analysis of the arguments and upon perusal of the papers the Court wasconvinced that the plaintiffs’ mark is well known as defined under section2(1)(zg) of the Act.
It took reliance on its own decisions in the cases ofVirgin Enterprises Ltd. & Anr. v.
Virgin Paradise Airlines Training Pvt.Ltd., 2015(61) PTC 145 Del to look into the infringement and passing off inwell-known and famous marks and also in Tata Sons Ltd. v. Manoj Dodia &Ors., 2011(4) R.A.J 181 (Del) to look into the rights of the owners of awell-known trademark.
The court held that the defendants and their allies arerestrained from using “Virgin” as it causes deceptive similarity to theplaintiffs’ mark. Reliefs were granted as stated under (a) and (b) of theprayer as the counsel for plaintiffs just wished to press just these two fromthe plaint by particularly surrendering the reliefs on damages and account ofprofits. The court has directed the Registry to prepare the decree sheetaccordingly. The essential feature here is the name “Virgin” which causesconfusion and deception among public at large and is indeed used to suggestsome sort of connection between plaintiffs and defendants which is non-existentin reality and the plaintiffs were able to establish their case against thedefendants.
Ifone ganders at the trademark landscape in India we understand that there arestatutory and common law provisions to shield trademark. When a mark isregistered, the plaintiffs may combine infringement along with passing off asthe scope of passing off is wider than the former and in case if an action forinfringement fails still there is a chance for merit under passing off providedit is a combined action. So it is always advisable to combine the two in thecase of registered trademark for an assurance of protection whatsoever be thecase in almost all the scenarios. Any matter of disguise or masquerade in thisregard should be nipped in the bud as it not only harms the owners of theoriginal trademark but also harms the confidence of public at large who fallsinto the rattrap of deception seeing the bait of well-known marks.