An interim application under Order XXXIX Rules 1 and 2 of CPC seeking interlocutory injunction had been filed by the plaintiff wherein ad interim injunction was granted in the favour of the plaintiff. The defendant further filed an interim application to vacate ad interim injunction granted on 11th October 2022. For the given below reasons the application of defendant is dismissed and application of plaintiff stands accordingly.
Facts of the Case[1]:
The plaintiff is proprietor of various marks such as 91CARES, OUTDOORS91 and so on. The plaintiff has additional to the said marks applied for the registrations of word mark “NINETY ONE” and device mark “91”. The plaintiff uses its marks on bicycles and accessories of bicycles.
The defendant uses the mark “Ninety Nine” and “99” on bicycles manufactured by the defendants.
The use of mark “Ninety Nine” by the defendant and “Ninety One” by the plaintiff were placed on record by the plaintiff. The plaintiff alleges that use of mark ‘99’ and ‘ninety nine’ by defendant have infringed the plaintiffs registered mark in which “91” is the dominant part of the mark therefore plaintiff seeks injunctive relief along with reliefs such as delivery up, rendition of accounts , costs and damages .
Submissions by Plaintiff:
It is pointed out that the marks “NINETY ONE” and “NINETY NINE” are printed on the cross bars of the bicycle. Further the lettering and font on both the marks is identical which in every likelihood will confuse purchaser and the purchaser may mistake the bicycle of the defendant for those of the plaintiff.
It is further pointed out that the formative similarity between numerals read with usage by the defendant and similar font used in the mark “Ninety Nine” discloses clear intent of the defendant which is to confuse the customer.
In addition to aforesaid the plaintiff states that plaintiff holds various registered marks in which “91” is the dominant part and thus use of “99” by the defendant infringes the registered trademarks of the plaintiff.
In continuation it is submitted a lot of discrepancies have been found with regards to the invoices produced by defendants and the user date. Also invoices produced where the logo is conspicuously absent. Also an invoice submitted by the defendant dated April 2014 has a column for GSTIN No. whereas GST was introduced in India only w.e.f. 1st July, 2017. Hence the documents produced by the defendant are fabricated.
The defendants claimed to be the user of the mark since 17th June 2021 in the application for registration of device mark “NINETY NINE; 99”, however in a reply filed by defendant dated 7th June 2021 to the legal notice of the plaintiff, the defendants did not plead prior user.
Submission by defendants:
The defendants claim themselves to be the prior user of the mark. As per their contention they coined and adopted the mark “Sachin99 in 2006 and the mark “Only 99” in 2018. These marks are also part of “99 Family of Trademarks”
Court:
On the question of priority:
The court was of the opinion that the defendants have not chosen to address the issue of infringement and restricted their defense to prior usage. Also as per the defendants they have been using the mark “Only 99” and “Sachin 99” prior to 2020. The court is unable to accept the plea of priority of user as advanced by the defendants as:
Para 4 of the written statement states the mark “Only 99” was adopted in 2018 and the one of the invoices relied on is dated May 2017.
Invoices dated April 2019 and April 2018 filed by defendants do not contain logo.
If mark “NINETY NINE” was devised in June 2020 as stated in written statement then how the said mark was on the body of invoices dated April 2018 and April 2019.
In addition to above said some invoices of 2014 produced before the court have GSTIN No. column when GST itself was introduced in 2014.
On the question of Infringement:
The Court held that the mark 91 and 99 are deceptively similar and provided the placement of the marks in the cycle is also similar. Also when viewed from an arm’s length distance it is impossible to distinguish the “NINETY NINE” printed on the crossbar of defendant’s cycle from the “NINETY ONE “ of plaintiff’s. The difficulty is that the first six and last two letters are same.
Also there is a prima facie substance that selection of two digit number in the nineties is no mere co incidence but intended to confuse average customer of imperfect recollection.
Two Principles applied:
Where there is clear imitation with an intent to deceive , the Court must not bend backwards to presume that the intent is not successful[2].
Where there is intent to deceive, the Court must pay greater attention to the similarities between the competing marks and avoid searching instead for dissimilarities[3].
The court opinioned that applying the above said principles the similarities is too many to ignore. The defendants are prima facie, culpable of having infringed the plaintiff’s. The marks would confuse the customer of average intelligence and imperfect recollection into believing the defendant’s bicycle to be the plaintiff’s.
[1] ALPHA VECTOR INDIA PVT LTD v. M/S SACH INDUSTRIES & ORS., CS (COMM) 691/2022.
[2] Slazenger & Sons v. Feltham & Co.
[3] Munday v. Carey
DUCTUS EDGE 