Single Judge Bench- Lathakumari M.
The particular case happened in Bangalore District Court, in front of Additional city civil and session judge, in this particular case, the plaintiff has filed a suit for permanent injunctions with additional prayer mentioning but not limited to restraining all people related to the business of defendant to stop using this name, submit the profit made on this name, destroy material which had this trademark written on it that is related to the business.
The plaintiff has mentioned that they are the trademark holder of this particular company which is registered in Japan, they also pointed out their history with this trademark which consisted of facts such as that this particular company was registered in 1946 that delas with different domain of business such as electricity, entertainment, media, etc. The word SONY was adopted as a trademark in 1950s, the plaintiff focused on the fact, that this trademark had been used first in year 1955 on their transistor radio, the trademark had gone through some logo changes but this logo has been there since 1973, they also pointed out that they have registered the trademark SONY in India under clause 39 in context of packaging of goods, transport, storage, on 6/10/2003 which they have always renewed timely. They also pointed out how they are renewed worldwide since celebrities across the globe had endorse them, their case is based on this particular fact, that the defendant has earned profit by the use of their trademark since it is well renowned, trusted and famous. The plaintiff in their next argument pointed out how they have tried to contact the defendant according to law, the plaintiff issued a ‘cease and desist’ letter to the defendant in 2002 which was not replied to, then reminder and warning letter were also issued in year 2003 and 2004 respectively which were also not replied to. In 2014, fresh Inquiry were made, but they were not again replied to, this particular case was filed after plaintiff saw that the trademark is still being used, the plaintiff also pointed out that even the logo is same and it is just bigger in font, Plaintiff argued that limitation period has not lapsed, it was also pointed out that it is a ‘commercial dispute’ stated under section 2(1) c of the Commercial Courts Act. They also filed an interim application under order 39 rule 1 and 2 about an ex-parte order for temporary injunction, which was granted, and because defendant has not filed his reply, the counsel for plaintiff proceeded with application under section 13 A of CPC, and asked to pass a summary judgement because till now defendant has not entertained the notices or the applications.
The defendant mentioned in his written statement, that he is an Indian and he has a small transport business, that is limited to Bangalore since 1994, the defendant pointed out that the name SONY is nickname of defendant’s wife. The defendant also pointed out that his business is limited to specific clients and he used to have 3 cars and many part time drivers but due to covid, he is not able to take care of his family and has no income from this particular business which is SONY TOURS AND TRAVELS, and it is in immense losses. He also stated that his business is registered under Department of Revenue of Karnataka’s Government. His business always operated in good faith and the plaintiff are just causing problems since this proceeding is barred by time. They also argued that the name SONY is not unique or distinctive and can be used generally since it is a common name in the Hindu mythology. They also pointed out that no deception or confusion has happened which might have cause any kind of loss to plaintiff since both businesses are different. It was also pointed out that the suit should be dismissed according to Order 7 Rule 9 CPC. He does not use promotional signs for SONY, it was also pointed out that the logos are very different since one has the name SONY, and the other has SONY TOURS AND TRAVELS written on it, which is different in both, font and style. While the company of plaintiff is involved in electricity and media, the company of Defendant is limited to a very small tour and travels company. The question related to confusion of Brand cannot arise since the defendant company is not a multi-billion international company.
- Whether the plaintiff Sony corporation satisfies that the use of the mark by the defendant as Sony Tours and Travels in its travel business would take unfair advantage of or is detrimental to the unique character or repute of its registered trade mark “Sony” and because of which a registered mark is infringed by the defendant in question?
DECISISON OF COURT
The court while deciding this case focused on how plaintiff has different types of business while also focusing on the view registration office which says that they have permission for transportation, storage and goods but it was observed that the plaintiffs are not actively involved in tours and travel business like defendant. The court relied on the case of Nandini Deluxe v Karnataka co-operative Milk Producer Cooperation, which has held that the monopoly of trademark cannot be enjoyed in toto, and it positively cannot interfere in business which it does not concern itself with. This is what is happening in this case. The Court decided that two business are entirely different, since one business is restricted to Tour and travel in Bangalore, and the other is an international business which does not have a business related to Tours and Travels, the court also held that any reasonable person will not make a mistake about being confused between these two businesses because they are totally different. The Court held that the trademark cannot be said to be using the name SONY TOURS AND TRAVEL in bad faith. The Court also observed that the notices sent by plaintiff looks like they were trying to pressurize the defendant and wanted to establish an unchallenged monopoly over SONY, for this particular reason, the court decided that plaintiff is liable to pay the cost of litigation of defendant and they are also liable to pay Rs 25,000 as fine. The case is dismissed.