BRITANNIA INDUSTRIES LTD v. GOOD DAY ORAL CARE & ORS.
Citation: CS(COMM) 572/2021
The wordmark/ trademark “GOOD DAY” – carrying Registration No. 452003 in Class 30 – has been in use for products such as “biscuits, bread, and nonmedicated confectionery” since 3 April 1986, while the wordmark/ trademark with Registration No. 4006020 in Class 30 has been in use since 23 November 2018 for goods such as “biscuits”. In addition, the Plaintiff has a number of additional registrations in India and abroad that use the wordmark “GOOD DAY”.
Defendant No. 1 [Good Day Oral Care] is a producer of the allegedly infringing product utilising the allegedly infringing trademark “GOOD DAY”. The website on which Defendant No. 1’s items are advertised and sold is owned by Defendant No. 2 [JJ Dental Corporation]. The impugned items are allegedly promoted and advertised by Defendant No. 3 [J.J. Orthodontics Pvt. Ltd.] and Defendant No. 4 [Mr. Mechery Johny Jiju John]. The other defendants jointly applied for registration of the Mark. Plaintiff contended that the Defendants’ use of the contested mark suggests an association and a misidentification with Plaintiff’s mark.
Whether in the present case Plaintiff is entitled to seek an injunction under Section 29(4) (b) of the Trademarks Act, 1999 despite other trademarks has been registered under the same mark
The Court in the present opined that the plaintiff would have the right to seek injunction under Section 29(4) (b) of the Trademarks Act, 1999 as Plaintiff was able to prove that the Plaintiff’s mark is a well-known mark. As reliance on the Intellectual Property Appellate Board [hereinafter, ‘IPAB’] order declaring that the Plaintiff mark is a well-known trademark as within the ambit of Section 2 (1) (zg) of Trades Marks Act,1999. Also, Court deliberated that as Defendant was claiming registration on the “proposed to be used” basis and unable to cajole as to how much use would not amount to infringement. Court pressing on the fact, adoption of the impugned mark by the Defendant is not honest and is in pursuit of taking advantage of the Plaintiff’s goodwill of “GOOD DAY” misleading an average man of ordinary intelligence. And in spite of the previous registration in the respect of the mark, in the present case prima facie it is established that Plaintiff is entitled to approach the court.
Thereby, as the balance of convenience lies in favor of the plaintiff an ex parte interim injunction was passed against Defendant Nos 1-9 restricting them from offering a sale or any kind of dealing in the goods bearing the impugned mark. Also, Defendant No. 10 has been directed in case of the impugned domain name, to suspend the same.