Delhi mark. However the defendant tried to use

Delhi
High Court in the case of Virgin Enterprises Ltd & Anr. v. Virgin Foods and
Feeds Pvt Ltd & Ors. decided by Hon’ble Mr. Justice Manmohan on 28th August
2017 (CS (COMM) 824/2016) granted miscellaneous reliefs to the plaintiffs owing
to passing off and infringement of its trademark as stated in the preamble of
The Trademarks Act, 1999 which provides for registration and better protection
of trademark and for the prevention and use of fraudulent marks.

Plaintiffs
in this case is the prior user of the trademark “Virgin” and has obtained
registration for its use for over 3000 “Virgin” trademarks across the globe
including India and is a well-known and famous trade mark. However the
defendant tried to use this famous mark in his business so as to establish a
non-existing nexus between the plaintiffs and defendants to lure the customers.
On 28th October, 2015 this Court granted an ex parte interim
injunction in favor of the plaintiffs and against the defendants restraining
the latter from using the name “Virgin” in manufacturing, selling, offering for
sale, advertising, directly or indirectly dealing in advertising services or
any other related services under the said corporate name. The ex parte interim
injunction was confirmed on 4th may 2017 as the defendants did not
make any appearance regardless of services.

We Will Write a Custom Essay Specifically
For You For Only $13.90/page!


order now

Issue
emerged for consideration is whether infringement and passing off is proved in
this combined action and if so then can all the reliefs sought be allowed?

Plaintiffs
contended that they are the prior user of the trademark “Virgin” and have obtained
registration of it across the globe including India. It is a well-known and
famous trade mark as defined under section 2(1) (zg) and satisfy the other
relevant provisions of the Trademarks Act, 1999 having trans-border reputation.
The Trade Marks Registry has recently added the plaintiffs’ mark in the list of
Well-Known Trademarks. Their business has an annual turnover running in
billions of pound sterling. On the contrary the defendant has dishonestly
adopted the trademark “Virgin” as part of its company name which is identical
to the plaintiffs’ well known trade mark causing irreparable loss and damage to
the plaintiffs as they are engaged in all kinds of foods, chemicals, feeds
etc., taking the role as manufacturers, dealers, distributors, processors or likewise.
Defendants were neither bothered to put their contentions nor were even ready
to rebut the averments of plaintiffs hence there was only silence from their
part.

The
aforementioned action of infringement and passing off invited the institution of
this suit for a plethora of reliefs like:

a)      To
grant an order for permanent injunction

b)      To
issue direction to the company to delete the name “Virgin” from its company
name

c)      In
the alternative, to issue direction to the Regional Director and Registrar of
Companies , Ministry of Corporate Affairs, Hyderabad directing the defendant to
delete the name “Virgin” from its company name

d)     To
grant damages to the tune of  Rs. 21,00,000/-
for plaintiffs

e)      To
direct the defendant to submit the Account of Profits and to pay the plaintiffs
all the dues

f)       Costs
of the  suit and incidental expenses may
be awarded to the plaintiffs and against the defendants

g)      Any
other just and equitable relief in the interests of justice and equity may be
passed

After
an analysis of the arguments and upon perusal of the papers the Court was
convinced that the plaintiffs’ mark is well known as defined under section
2(1)(zg) of the Act. It took reliance on its own decisions in the cases of
Virgin Enterprises Ltd. & Anr. v.Virgin Paradise Airlines Training Pvt.
Ltd., 2015(61) PTC 145 Del to look into the infringement and passing off in
well-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 a
well-known trademark. The court held that the defendants and their allies are
restrained from using “Virgin” as it causes deceptive similarity to the
plaintiffs’ mark. Reliefs were granted as stated under (a) and (b) of the
prayer as the counsel for plaintiffs just wished to press just these two from
the plaint by particularly surrendering the reliefs on damages and account of
profits. The court has directed the Registry to prepare the decree sheet
accordingly. The essential feature here is the name “Virgin” which causes
confusion and deception among public at large and is indeed used to suggest
some sort of connection between plaintiffs and defendants which is non-existent
in reality and the plaintiffs were able to establish their case against the
defendants.

If
one ganders at the trademark landscape in India we understand that there are
statutory and common law provisions to shield trademark. When a mark is
registered, the plaintiffs may combine infringement along with passing off as
the scope of passing off is wider than the former and in case if an action for
infringement fails still there is a chance for merit under passing off provided
it is a combined action. So it is always advisable to combine the two in the
case of registered trademark for an assurance of protection whatsoever be the
case in almost all the scenarios. Any matter of disguise or masquerade in this
regard should be nipped in the bud as it not only harms the owners of the
original trademark but also harms the confidence of public at large who falls
into the rattrap of deception seeing the bait of well-known marks.