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Condition in which prima-facie case of passing off can be made out- Delhi High Court

Intellectual property rights are rights which are been given to persons to protect their own set of ideas, creations, and intellect. Thus, it is the most important facet in the life of the creators which gives credit and authenticity for the same. IPR secures an individual’s right in their sector of development and creation, without infringing the other’s people’s right. Specifically, a trademark signifies the mark which one uses in its business transactions or trade. Infringement of is one of the most common offences which takes place of day-to-day activity. Such an example was decided by the Delhi High Court in the case of Jagmohan Ratra v. Ampa Cycles Pvt. Limited [I.A. Nos. 12625/2020 (u/O 39 R 1 & 2 CPC) & 1394/2021 (u/O 39 R 4 CPC)].

The facts of the case initiates when the plaintiff had filed to restrain the defendants its proprietors, directors, etc. from manufacturing, marketing, offering for sale, selling, advertising or any kind of impugned goods and services marks AMPA and or any other mark which is deceptively similar to the Plaintiff’s trademark AMPA and logo so as to result in an act of passing off its goods and services as those of the plaintiff.

In this case, the plaintiff argued that the mark was invented by Sh.Jagmohan Ratra, the plaintiff, and was adopted by the partnership company in 1991 for bicycles and tricycles. Ampa Bikes Private Limited was incorporated on March 30, 1992, with the plaintiff and the then partnership firm M/s Four Diamonds as shareholders. The company filed a trademark claim in Class 12 for the word mark AMPA on June 21, 1995, with Ampa Bikes as the user since April 1, 1992. The trademark application, however, was abandoned in 2002. A Deed of Dissolution dated 01.08.2003 was used to dissolve the partnership company M/s Four Diamonds. It is also claimed in this document that the plaintiff filed a trademark application in March 2019 seeking registration of a unique logo consisting of the plaintiff’s trademark AMPA in black and the letter “A” in red written in a unique and distinctive manner. The application is still being processed. The complainant has claimed that the consumer dates back to 2011. According to the plaintiff, for the past nine years, the plaintiff has been the sole entity producing and selling cycles and other goods under the mark AMPA, and as a result of extensive use, distribution, promotion, and other activities, the plaintiff has established considerable goodwill and prestige among the buying public and members of the trade.

It had been contended by the plaintiff has been using the trademark in question since 1991, first as a partnership company called M/s Four Diamonds, and then as the sole proprietor of the proprietorship concern. It is also alleged that under the Deed of Dissolution between the plaintiff and Sh.Hari Dutt Sharma dated 01.08.2003, the plaintiff obtained rights to use the trademark AMPA, which was used by both the plaintiff and Ampa Bikes Private Limited. The company Ampa Bikes Private Limited was deregistered from the Companies Register in 2013. The plaintiff has been using the trademark AMPA solely since 2011.

It is further contended by defendant no. 1 that they had also filed trademark registration applications for the impugned mark in Class 12 and the same have been advertised in the Trademarks Journal by the Trademarks Registry. These applications were filed on 17.09.2020 and 15.11.2018. All the above applications have been filed by defendant No.1 on a “proposed to be used basis”.

Defendant No. 1 also contended that his written statement had been filed. The trademark “AMPA” was invented and formulated/designed by Sh.Hari Dutt Sharma himself, according to the written statement. Two divisions were created within Ampa Bikes Private Limited. The first division was solely responsible for the production of children’s and adult bicycles under the brand name “AMPA,” while the second division was responsible for the production of plastic tricycles and other plastic toys. Following that, conflicts emerged between the parties, which were resolved by mutual agreement between the parties, namely Sh.Hari Dutt Sharma and the complainant in this case.

Thus, based on the above facts the judge had resorted to the case of of Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd., 2001 (5) SCC 73. That was a case in which the appellant had filed a suit seeking injunction against the respondent from using the trade mark ‘Falcitab’ as it was claimed that the same would be passed off as the appellant’s drug ‘Falcigo’ for treatment of the same disease.

The court was of the view that the “What is striking is that defendant No. 1 has itself applied for registration of the trademark AMPA in 2018 and again in 2020 on “proposed to be basis”. To now claim that this was done based on an erroneous advice and that there is prior user prima facie appears to be an afterthought. At this stage, without leading evidence, this plea of the defendants cannot be accepted. That apart, there is no explanation as to who was using the said trademark AMPA from 2013 to 2018 in the interregnum i.e. after the alleged Assignment Deed dated 03.01.2013 in favour of Sh. Ajay Kumar Bawa till defendant No. 1 was incorporated in 2018.

In contrast, the plaintiff has placed on record invoices showing user of the trademark AMPA since 2011. The application for registration of the trademark filed of the plaintiff also claims user since 2011. In my opinion, the plaintiff has made out a prima facie case. Thus, the court was of the strict view that prima facie, it is clear that defendant No.1 is illegally using the trade mark AMPA and trying to pass off its goods as that of the plaintiff. Prima facie, a case of passing off is clearly made out.

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