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In the case of Peps Industries Pvt. Ltd. v. Kurlon Ltd., the Delhi High Court Single bench comprising of Justice Mukta Gupta obdserved that when the trademark is not descriptive or has no distinctiveness, the claim for permanent injunction cannot stand. Hence, the claim for injunction was rejected.
The facts of the above mentioned case are as follows:
(i) The Plaintiff being the registered owner of the trademark 'NO TURN', the Plaintiff has adopted and is in continuous use of the same since 15th January, 2008, and this claim is supported by the trademark registration certificate, the orders and invoice of 'NO TURN labels for a continuous period of around 11 years.
(ii) The Plaintiff seeks for permanent injunction against the Respondent from providing any goods or services under the mark 'NO TURN'
(iii) The Plaintiff contended that commodity of the Defendant is not continuously used commercially and there is no material on record that the latter is affixing 'NO TURN' labels on its products while arguing about the claim of 'prior use' raised by the Defendant, and on the basis of the documents placed on record by the defendant along with the written statement no prior use is made out.
(iv) The Defendant submitted that it uses the 'NO TURN' mark along with its brand which is a well established and reputed brand in mattresses. This argument from the Defendants was submitted in response to the argument made by the Plaintiff wherein it was said that since the Plaintiff and Defendant are using 'NO TURN' for identical goods, which is mattresses, there is a clear likelihood of confusion.
Therefore, the Bench noted that the collective reading of the Trade Marks Act indicates that the action for passing off which is premised on the rights of the prior user generating a goodwill, shall be unaffected by any registration provided under the Act.
Further, it was observed that a trademark exists independently of the registration which merely affords a further protection under the Statute, the common law rights being left wholly unaffected.
Even though the Court agreed that the Defendant is not entitled to the defence of prior use under section 34 of the Trade Mark Act as its usage was intermittent and not voluminous, it still refused to provide injunction to the Plaintiff as the mark 'NO TURN' is a descriptive mark.
In conclusion, the High Court of delhi held that when the use of mark has been intermittent and not voluminous, the defence of prior-use under the Trade Marks Act cannot be allowed to sustain.
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