Audioplus vs Manoj Nagar

T r a d e Mark

Application No.",Trade Mark Type,Trade Mark Image,Date of Application,Date of Certificate,Conditions [If any]

859763,DEVICE,,07.06.1999,03.07.2006,N/A

1196832,DEVICE,,06.05.2003,23.07.2005,"Registration of this

Trade Mark shall

give no right to the

exclusive use of the

WORD

PROFESSIONAL.

1204619,DEVICE,,06.06.2003,17.10.2005,N/A

1873360,DEVICE,,14.10.2009,03.09.2013,N/A

2443199,DEVICE,,17.12.2012,14.09.2016,N/A

vi. The instant suit was not properly valued.,,,,,

vii. Although the defendant does not have an exclusive right in the device mark , the plaintiff can take no advantage of the",,,,,

same as it has chosen neither to challenge the registration obtained qua the said device mark or subject it to rectification proceedings.,,,,,

viii. The plaintiff has been aware since 14.09.2019 of the existence of the impugned device marks. Therefore, the assertion made by the plaintiff that it",,,,,

became aware of the impugned device marks only in April 2020, is false. In this context, reference is made to a transcript concerning a conversation",,,,,

which was held between the defendant and a person located in the State of Uttar Pradesh to whom the defendant claims he sold his goods.,,,,,

ix. The plaintiff has falsely projected in paragraph 21 of the plaint that it had registration in the wordmark STUDIOMASTER as against a device mark,,,,,

bearing the same words.,,,,,

x. The plaintiff has indulged in approbation and reprobation inasmuch as while having its device mark  registered,",,,,,

it attempted to meet the objection raised by the trademark registry that the aforementioned device mark was deceptively similar to the device mark,,,,,

STUDIOMASTER by taking the stand that when viewed holistically, it was “distinct and dissimilar†from the cited mark â€" by failing to apply",,,,,

the same measure to the impugned device marks. The plaintiff could not have, given this stand vis-Ã -vis its device mark",,,,,

, claimed that the impugned marks are deceptively similar to the said mark and other formative marks of the parent",,,,,

device mark STUDIOMASTER.,,,,,

xi. The plaintiff had applied for the registration of device mark  on 06.05.2003 which was changed to,,,,,

 on 04.06.2003 after an objection was raised by the trademark registry on the use of the word,,,,,

PROFESSIONAL.,,,,,

xii. The impugned device mark is different and distinct from the device marks  of the plaintiff. Not only is this impugned,,,,,

device mark, as indicated above, registered but is also written in red colour and bears a rectangular frame which is not found in the device marks of",,,,,

the plaintiff. Besides this, the mark is accompanied by the letters ‘MN’ which is nothing but the shortened version of the defendant’s name.",,,,,

Besides this, the said device mark is accompanied by the following words written in blue colour “professional power amplifier boosterâ€. Also, the",,,,,

font used in the defendant’s device mark is different from that of the plaintiff without any special emphasis on the letter ‘O’ or ‘S’.,,,,,

Lastly, the words included in the impugned device mark of the defendant is different from that of the plaintiff’s device mark.",,,,,

xiii. The dominant feature of the plaintiff’s device marks is the word “STUDIO†which is common to trade qua goods falling in class 9. There,,,,,

are at least 31 registrations issued qua which information is available on the following website www.ipindiaonline.gov.in maintained by the trademark,,,,,

registry.,,,,,

xiv. The word STUDIO is, thus, not only common to the trade but, as alluded to above, is also descriptive of the plaintiff’s goods since the audio",,,,,

equipment manufactured and sold by the plaintiff is largely used in music studios.,,,,,

xv. The plaintiff in its press release has referred to its goods as ‘studio systems’. The Oxford dictionary defines the word STUDIO as “a,,,,,

room where radio or television programmes are recorded and broadcast from, or where music is recordedâ€. The plaintiff’s goods are used for",,,,,

sound recordings and, hence, its device marks are descriptive of the goods manufactured and sold by it.",,,,,

xvi. The device marks  and were adopted only in 2004 and therefore, contrary",,,,,

to the claim of the plaintiff, have not established such goodwill or reputation in the market to be declared as ‘well-known marks’. The",,,,,

documents filed by the plaintiff demonstrate that the device mark  is not being extensively used by the plaintiff,,,,,

contrary to what is portrayed before the Court. The sales revenue and the promotion expenses said to have been incurred by the plaintiff do not,,,,,

explain the impact that each such device mark of the plaintiff has had on its reputation and goodwill. Furthermore, these figures do not establish as to",,,,,

what contribution was made by each of the device marks owned by the plaintiff.,,,,,

Submissions on behalf of the plaintiff: -,,,,,

The arguments on behalf of the plaintiff were advanced by Mr. Saif Khan while submissions on behalf of the defendant were made by Mr. Uday,,,,,

Bedi. The arguments advanced by the counsels were largely in line with the averments made in the pleadings filed on behalf of the parties.,,,,,

Mr. Khan’s submissions are, broadly, paraphrased as follows.",,,,,

i. The instant action has been filed both, for infringement as well as for passing off qua plaintiff’s trademark STUDIOMASTER and formative",,,,,

marks to injunct the defendant from adopting and using the marks  and  which are,,,,,

deceptively and conceptually similar to the plaintiff’s marks.,,,,,

ii. The plaintiff and its predecessor-in-interests have been manufacturing and selling audio and sound recording equipment with the trademark,,,,,

STUDIOMASTER for more than two decades. The trademark STUDIOMASTER has been used on a standalone basis as well as in logo and device,,,,,

form over the years in the course of its business.,,,,,

iii. The trademark STUDIOMASTER enjoys immense goodwill and reputation which is reflected in the plaintiff’s turnover achieved over the,,,,,

years. The investment made in promoting the brand name STUDIOMASTER is evident if one were to only peruse the financial figures concerning,,,,,

the promotional expenses.,,,,,

iv. The defendant’s first adoption of the impugned mark  is as recent as 02.05.2019. There is not an iota of material,,,,,

placed on record, let alone evidence, in support of sales made and advertising expenses incurred for promotion of the impugned marks.",,,,,

v. The allegation that the plaintiff had concealed the fact that it had abandoned its earlier application no. 503296 for registration of the work mark,,,,,

STUDIOMASTER cannot shore up the case of the defendant. The fact that reference was not made to this application would neither confer any,,,,,

advantage on the plaintiff nor would it have prejudiced the case of the defendant. Importantly, due to oversight, the application although, not",,,,,

prosecuted to its logical end, was not rejected. The more pertinent aspect is that the plaintiff continued to make commercial use of the word mark",,,,,

STUDIOMASTER, albeit, without a registration. There was, in fact, no abandonment of the mark, as alleged, or at all.",,,,,

vi. There is no averment in the plaint that the plaintiff has a registration in the work mark  STUDIOMASTER per,,,,,

se. That being said, the plaintiff has common law right in the mark STUDIOMASTER on account of use of the same continuously as is evident from",,,,,

a perusal of the invoices and the press clippings placed on record.,,,,,

vii. The fact that the plaintiff has obtained the registration in the device mark which is a stylised version of the mark STUDIOMASTER will confer,,,,,

statutory rights in favour of the plaintiff under the Trade Marks Act, 1999 [in short “the Actâ€]. The word STUDIOMASTER formed an",,,,,

important feature of the aforementioned device mark. The plaintiff has, thus, a right in the word STUDIOMASTER both, on a standalone basis, as",,,,,

well as a part of the device mark.,,,,,

viii. The allegation of the defendant that the plaintiff knew about the impugned mark since 14.09.2019 is false and this is demonstrable if one were to,,,,,

cross-reference paragraph 16 of the written statement with paragraph 7 of the application [I.A. No. 6664/2020] filed by the defendant under Order,,,,,

XXXIX Rule 4 of the CPC. Pertinently, although in the written statement, the defendant avers that the plaintiff acquired knowledge of the impugned",,,,,

mark  on 14.09.2019, in the application, it is stated that the plaintiff acquired knowledge sometime in the month of July-",,,,,

August 2019. Furthermore, nothing has been placed on record to link the phone call received on 14.09.2019 by the defendant to the plaintiff.",,,,,

ix. The trademark STUDIOMASTER is neither common to the trade nor is it descriptive as contended by the defendant. The trademark is inherently,,,,,

distinctive as it is an arbitrary combination of the words STUDIO and MASTER. The trademark STUDIOMASTER does not describe the products-,,,,,

in-issue i.e. audio and sound recording equipment. The trade mark registry does not have an identical mark on its register. There is also, to the",,,,,

knowledge of the plaintiff, no third party, except the defendant, making or attempting to make, commercial use of a mark, which is, identical or",,,,,

deceptively similar to the plaintiff’s mark. Assuming without admitting that the mark is descriptive, the same can be protected if it is otherwise",,,,,

well-known. It does not lie in the mouth of the defendant to assert that the plaintiff’s mark STUDIOMASTER is descriptive when the marks qua,,,,,

which he is claiming protection include the word STUDIO.,,,,,

x. There is a conceptual similarity between the plaintiff's mark STUDIOMASTER and the impugned marks  and,,,,,

. The plaintiff has never claimed a right to exclusively use the word STUDIO on a standalone basis. It is important to,,,,,

emphasise: what is common to the register maintained by the trademark registry is not, necessarily, common to the trade. Besides this, as stated",,,,,

above, there is not a single instance cited by the defendant which would demonstrate that the plaintiff’s mark STUDIOMASTER is common",,,,,

either to the register or to the trade.,,,,,

xi. The impugned marks being used in the same trade channel are deceptively similar to the plaintiff’s marks, on account of not only conceptual",,,,,

similarity but also its look and get-up. The deceptive similarity of the impugned marks is not only on account of the use of the prefix STUDIO but also,,,,,

in the use of the suffix MAN/MIN. The suffix MAN/MIN rides close to the suffix used in the plaintiff’s mark, which is, MASTER. Coupled with",,,,,

this, the stylisation of the impugned marks establishes the charge of deceptive similarity.",,,,,

In support of his submissions, Mr. Khan relied upon the following judgements.",,,,,

a) Shree Nath Heritage Liquor Pvt. Ltd. and Ors. vs. Allied Blender & Distillers Pvt. Ltd., MANU/DE/1933/2015",,,,,

b) BCH Electric Limited vs. Eaton Corporation and Ors., MANU/DE/1416/2016.",,,,,

c) Sunil Mittal and Ors. vs. Darzi on Call, MANU/DE/1028/2017.",,,,,

d) Automatic Electric Limited vs. R.K. Dgawan and Ors., MANU/DE/0461/1999.",,,,,

Submissions on behalf of the defendant: -,,,,,

On the other hand, the submissions made by Mr. Bedi, as expected, raised converse arguments.",,,,,

i. The plaintiff had abandoned its trademark STUDIOMASTER. The plaintiff, admittedly, has not been using the trademark STUDIOMASTER since",,,,,

2003. In this behalf, reliance was placed on paragraph 3 of the plaintiff’s additional affidavit dated 02.09.2020. Given this position, the plaintiff",,,,,

cannot claim exclusive ownership over the trademark STUDIOMASTER.,,,,,

ii. The word STUDIO is common to the trade and the register. That being so, the plaintiff cannot claim a monopoly over the same. If this is allowed,",,,,,

an unfair monopoly will be created in favour of the plaintiff. In support of this plea, reliance was placed on the 31 registrations made in Class 9 which",,,,,

comprised the word STUDIO. Furthermore, to buttress the plea that the word STUDIO was descriptive of the nature of the goods, reference was",,,,,

made to the plaintiff’s pamphlets wherein its goods were described as “Studio systemsâ€​.,,,,,

iii. The plaintiff’s and the defendant’s marks were dissimilar. In this context, reference was made to paragraph 50 of the written statement",,,,,

wherein the 7 differences obtaining in the plaintiff’s and the defendant’s marks are set out.,,,,,

iv. It is settled law that the marks have to be seen as a whole and not placed side by side as is outlined in the plaint and in the order dated 24.06.2020.,,,,,

The standard to be applied is how an average person of imperfect recollection would view the competing marks.,,,,,

v. The mark STUDIOMASTER may have been on the trademark register but has not been in use since 2003. Strictures need to be passed against the,,,,,

trademark registry as to how the mark is being renewed without proof of usage. The use of the word PROFESSIONAL along with the word,,,,,

STUDIOMASTER cannot confer any proprietary right in the plaintiff in the word PROFESSIONAL as has been indicated by the trademark registry,,,,,

at the time of registration â€" it is, however, important to emphasize that the plaintiff had to use the word INDUSTRIAL with the word",,,,,

STUDIOMASTER because the objection was taken in the first instance by the trademark registry qua the use of the word PROFESSIONAL.,,,,,

Mr. Bedi, in support of his submissions, relied upon the following judgements.",,,,,

a) JR Kapoor vs. Micronix India, 1994 Supp (3) SCC 215",,,,,

b) Indo Pharma Pharmaceuticals Works Ltd vs. Citadel Fine Pharmaceuticals Ltd., (1998) 2 LW 646",,,,,

c) Valvoline Cummins Ltd. vs. Apar Industries Ltd., 2013 SCC Online Del 4738",,,,,

d) AstraZeneca UK Ltd v. Orchid Chemicals & Pharmaceuticals Ltd., (2007) ILR I DELHI 874",,,,,

e) Marico Ltd v. Agro Tech Foods Ltd, (2010) 174 DLT 279 (DB)",,,,,

f) Eatman Foods India Pvt. Ltd. v. Savorit Ltd., 2013 SCC Online Mad 2138",,,,,

g) F. Hoffman La Roche v. Geoffrey Manner & Co, (1969) 2 SCC 716",,,,,

h) Novelty Emporium vs. Novelty Creation Private Limited, 2001 SCC OnLine Del 1262.",,,,,

Analysis and Reasons: -,,,,,

Before I proceed to sift the wheat from the chaff, insofar as facts and circumstances of this particular case are concerned, it may be helpful to set",,,,,

down certain broad principles concerning the test to be applied in a situation which obtains in the present matter.,,,,,

i. Likelihood of confusion [which is probable and not simply possible] is a standard that is applied both in infringement actions and in passing off.,,,,,

[See: McCarthy on Trademarks and Unfair Competition, 4th Edition, cited with approval in Shree Nath Heritage Liquor Pvt. Ltd. vs. Allied Blender &",,,,,

Distillers Pvt. Ltd., 2015 SCC OnLine Del 10164].",,,,,

ii. The priority of use needs to be considered [[See: McCarthy on Trademarks and Unfair Competition, 4th Edition, cited with approval in Shree Nath",,,,,

Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers Pvt. Ltd., 2015 SCC OnLine Del 10164]].",,,,,

iii. A passing off action can lie even against the proprietor of a registered mark. [See: R. Thorne & Sons Ltd. v. Pimms Ltd. (1909) 26 R.P.C. 221],,,,,

Registration of a mark confers certain statutory rights but certainly does not degrade or dilute common law rights which may inhere in a mark because,,,,,

of its commercial use merely because the marks are not registered.,,,,,

a) R. Thorne was a case where the plaintiff brought an action of passing off based on a mark “Thorne’s Whisky†against the defendant for,,,,,

selling the same product under a registered trademark consisting of the label “Glen Thorneâ€. The Court after considering the material on record,,,,,

granted an injunction against the defendant who was a proprietor of a registered trademark even though there was additional material printed on the,,,,,

label such as the name of the proprietor etcetera on the ground that the defendant’s mark was misleading. Although this case had been decided,,,,,

after evidence being placed before the Court. the principle set forth hereinabove emerges clearly from this judgement.,,,,,

iv. In a passing off action, the plaintiff is required to establish that the misrepresentation made by the defendant in the course of the trade via the",,,,,

impugned marks is calculated to injure or damage its goodwill, which could be actual or a foreseeable consequence of the defendant’s actions.",,,,,

The misrepresentation need not be fraudulent. The tort of passing off i.e. deception/misrepresentation is agnostic to the intent of the defendant. [See:,,,,,

Reckitt & Colman Products Ltd. vs. Borden Inc., (1990) 1 All E.R. 873; cited with approval in RB Health (US) LLC and Ors. vs. Dabur India Ltd.,",,,,,

276 (2021) DLT 64].,,,,,

Thus, bearing in mind, the aforesaid, broad, principles, let me delve into the factual aspects which have emerged in the instant case.",,,,,

What has emerged upon perusal of the record and after considering the submissions made by the counsels is that the dispute between the parties,,,,,

veers around the following facts and circumstances.,,,,,

i. The plaintiff has been in the business of manufacture and sale of audio-equipment as a part of the AHUJA GROUP for several decades.,,,,,

ii. The plaintiff’s sister concern M/s Prosound Products was the owner of the device  mark . The rights in the,,,,,

said registered (device) mark were assigned to the plaintiff via assignment deed dated 27.05.2008.,,,,,

iii. The application for registration of the device mark  is dated 07.06.1999. There is material on record in the form,,,,,

of press releases and advertisements concerning various products manufactured and sold which span between May-June 1998 and November-,,,,,

December 2018. Besides this, some invoices have been placed on record, which advert to the trademark STUDIOMASTER. These invoices span",,,,,

between 31.12.2003 and 28.03.2012. The said invoices, apparently, have been generated by the plaintiff’s sister concern M/s Prosound Products.",,,,,

Interestingly, there are, on record, three invoices, two of which are dated 01.12.2008, while the third is dated 28.03.2012. The body of these three",,,,,

invoices adverts to the trademark STUDIOMASTER and although the consignor is M/s Prosound Products, the consignee is the plaintiff. There",,,,,

appears to be an overlap, in the use of, the trademark STUDIOMASTER as after the execution of the assignment deed on 27.05.2008, the rights in",,,,,

the said mark were admittedly assigned by M/s Prosound Products in favour of the plaintiff.,,,,,

iv. The plaintiff has also placed on record tax invoices which span between 30.04.2008 and 31.07.2018. These invoices are in the name of the plaintiff,",,,,,

though, there is no reference in the body of the invoices to the mark STUDIOMASTER.",,,,,

v. The plaintiff has, as indicated above, placed on record a certificate of the chartered accountant to establish inter alia the turnover achieved by it",,,,,

between 2007-2008 and 2018-2019 and the expenses incurred on advertising, promotion, and website charges. The certificate is suggestive of the fact",,,,,

that its turnover as noted above increased from Rs. 48,02,01, 022 in 2007-2008 to Rs. 131,97,01,805 while in the same period its advertising and",,,,,

promotion expenses increased from Rs. 31,59,542/- in 2007-2008 to Rs. 45,01,784/- in 2018-2019.",,,,,

vi. The plaintiff had filed an application dated 03.01.1989 for seeking registration of the word mark STUDIOMASTER on a “proposed to be,,,,,

usedâ€​ basis, which was not prosecuted.",,,,,

vii. The plaintiff, thereafter, obtained trademark registration for the following formative marks.",,,,,

Â,,,,,

Â,,,,,

viii. The plaintiff claims to have used the device mark  between 1990 and 2003. Insofar as the formative marks are,,,,,

concerned, the plaintiff avers they were used by M/s Prosound Products between 2003 and 2007-2008 and, thereafter, by the plaintiff.",,,,,

ix. The defendant had filed an application for registration of its device mark  on 02.05.2019 qua which no objection was,,,,,

lodged by the plaintiff. The said mark was registered on 21.05.2020.,,,,,

x. The defendant’s application for registration of his second device mark was lodged with the trademark registry on,,,,,

19.11.2019 and has not, as yet, been approved for issuance of a trademark certificate; the reason, perhaps, being that the plaintiff lodged its notice of",,,,,

opposition qua this application on 22.04.2020.,,,,,

xi. The defendant is desirous of being in the same channel of business as the plaintiff [that is if he is not already there] i.e. deal in audio and sound,,,,,

recording equipment.,,,,,

xii. The defendant has placed no material on record which would demonstrate any commercial use of the impugned mark. The defendant has by way,,,,,

of additional affidavit 28.11.2020 placed on record copies of registration certificates obtained from various statutory authorities to which I have,,,,,

referred hereinbelow.,,,,,

Therefore, what emerges is that the plaintiff has been in business much longer than the defendant, and has been making commercial use of its",,,,,

device marks, if not earlier, certainly since 2003; firstly, through its predecessor-in-interest, and after May 2008, through the plaintiff [As indicated",,,,,

above, there is one invoice, though of 2012, whereby the plaintiff’s predecessor-in-interest i.e. M/s Prosound Products appears to have sold some",,,,,

goods to the plaintiff]. Besides this, there is material on record in the form of press releases and advertisements which span between May-June 1998",,,,,

and November-December 2018 which advert to the trademark STUDIOMASTER. Although the plaintiff has placed on record invoices even for the,,,,,

period spanning between 30.04.2008 and 31.07.2018, these do not refer to, at least in the body, as in the earlier invoices, to the trademark",,,,,

STUDIOMASTER.,,,,,

On the other hand, the defendant, undoubtedly, has jumped into the fray only in November-December 2019. The application filed by the defendant",,,,,

for registration of its device mark  clearly stated that at that juncture the defendant only “proposed to use†the said,,,,,

mark. As noticed above, insofar as the other device mark of the defendant is concerned i.e. , he has, concededly, not",,,,,

obtained registration qua the same, as yet.",,,,,

16.1. Although the plaintiff has placed some material on record to show commercial use of its trademark STUDIOMASTER and STUDIOMASTER,,,,,

PROFESSIONAL, in the form of invoices and advertisement material, with some gaps, the defendant has placed next to nothing on record to",,,,,

demonstrate the commercial use of the impugned marks.,,,,,

Therefore, clearly, the plaintiff has the advantage of being the early bird i.e. frontrunner insofar as the use of its trademarks is concerned. Besides",,,,,

this, the plaintiff claims to have invested substantial funds in promoting its device marks; a claim which is supported by a certificate of the chartered",,,,,

accountant. On the other hand, the written statement of the defendant is completely silent on this aspect of the matter.",,,,,

17.1. Faced with this situation, the defendant, during the course of the hearing, placed on record, additional documents, by way of an affidavit dated",,,,,

28.11.2020 to demonstrate that he had been using the impugned trademarks since 22.12.2016.,,,,,

17.2. The documents filed included:,,,,,

i. The application dated 22.12.2016 filed by the defendant for registration under Section 7(1)/7(2) of the Central Sales Tax Act, 1956 with the",,,,,

department of trade and taxes, Government of National Capital Territory of Delhi. In this application, it is stated by the defendant that he was carrying",,,,,

on his business under the name STUDIO MAN within the Union Territory of Delhi.,,,,,

ii. The provisional certificate of registration dated 22.12.2016 issued by the department of trade and taxes, Government of National Capital Territory of",,,,,

Delhi [GNCTD]. This certificate gave the name of the dealer as STUDIO MAN.,,,,,

iii. The GST registration certificate dated 17.07.2018 issued by the Government of India. In this application, the defendant indicated once again that he",,,,,

used the trade name STUDIO MAN. Furthermore, GST Identification Number which has been issued to the defendant also shows that he has been",,,,,

doing his business under the trade name STUDIO MAN.,,,,,

17.3. Thus, contrary to the stand taken on behalf of the defendant that it had been using the impugned trade devices",,,,,

since December 2016, what emerged, was that he had filed and obtained a registration certificate from the GNCTD and",,,,,

the Government of India for the purposes of Central Sales Tax and GST by only claiming that he was using the trade name STUDIO MAN. As,,,,,

indicated above, there is no material on record which would, at this juncture, even prima facie, establish that the defendant has been making",,,,,

commercial use of the impugned device marks  and .. Apart from the fact that this case is not,,,,,

set up in the written statement, what is noticed, upon perusal of the copies of the invoices appended and marked as Annexure A-3 (Colly) which are",,,,,

26 in number [in effect, 25], that the defendant has been using STUDIOMAN in conjunction with the word ELECTRONICS, in the form of a trade-",,,,,

name. Thus, the trade-name mentioned in these 25 invoices is STUDIOMAN ELECTRONICS. These 25 documents are a collection of invoices",,,,,

raised both by and on the defendant as well i.e. consists of suppliers, purchasers, and transporter. The total worth of sales and purchase is Rs.",,,,,

10,37,847/-.",,,,,

17.4. Admittedly, the defendant has not secured an exclusive right over this mark which is, otherwise, registered; as is evident from the caveat entered",,,,,

in the registration certificate dated 21.05.2020, bearing number 2433575.",,,,,

17.5. Pertinently, while there are several marks, apparently, on the trademark registry which bear the prefix or the suffix STUDIO, there is nothing",,,,,

placed on record by the defendant to demonstrate that they are in the same trade channel i.e. in the business of manufacture and sale of sound,,,,,

recording equipment.,,,,,

17.6. On the other hand, the defendant claims to have entered the business of selling audio equipment, if one were to give credence to the invoices",,,,,

placed on record along with his additional affidavit. I must point out here that in the application bearing number 4351530 dated 19.11.2019, the",,,,,

defendant had, contrary to the stand taken in the additional affidavit dated 28.11.2020, stated that the registration of the device mark",,,,,

 was sought on a “proposed to be usedâ€​ basis.,,,,,

17.7. Thus, in my view, there is a likelihood of confusion being caused in the mind of a consumer who has an imperfect recollection given the fact the",,,,,

stylised version of the impugned marks is deceptively similar to the plaintiff’s marks.,,,,,

17.8. More pertinently, on balance, based on the material placed on record, at this stage, I am inclined to agree with Mr. Khan that the plaintiff has",,,,,

been making commercial use of its mark over a longer period and much more extensively as compared to the defendant. Therefore, given the fact that",,,,,

the plaintiff has obtained registrations qua the formative marks of the original device mark, Â it should be able to",,,,,

obtain protective orders qua other deceptively similar marks such as the impugned marks.,,,,,

17.9. As noticed above, the standard for ascertaining as to whether or not the impugned marks are likely to cause confusion as to the origin of the",,,,,

goods is the same for an infringement action as well as for a passing off action.,,,,,

I am prima facie of the view that the defendant has, since 2016, attempted to slowly but surely, creep close to the plaintiff’s device marks by",,,,,

adopting a stylised version of the mark STUDIO MAN. It is well settled that where the plaintiff has made sufficiently long use of a particularly,,,,,

distinctive device mark, a special obligation is cast on the competitor to avoid confusion. [See: United Biscuits vs. Asda Stores, (1997) 12 RPC 513 at",,,,,

531] Asda Stores was a case where the plaintiff filed a passing off and a trademark infringement action against the defendant. The plaintiff,,,,,

manufactured and sold chocolate coated sandwich biscuits under the mark ‘PENGUIN’ while the defendant sold the same product under the,,,,,

mark ‘Puffin’. The Court inter alia granted an injunction, principally, on the ground that there was a likelihood of deception. The Court",,,,,

enunciated a pertinent principle which is “In aiming to avoid what the law would characterise as deception, the defendant had nevertheless taken a",,,,,

conscious decision to live dangerously. This was not something which the Court was bound to disregard.â€​.,,,,,

18.1. The defendant, as indicated above, on his own showing was going about using the tradename STUDIO MAN. It is only in November-December",,,,,

2019 that he chose to stylise it by seeking registration of the following mark.,,,,,

Thus, while Mr. Bedi is right that if an injunction is sought against a registered mark, the Courts are, ordinarily, slow in granting relief, this, though,",,,,,

by itself, cannot be an impediment where the Court is prima facie satisfied that the plaintiff is the prior user of a mark which is deceptively similar to",,,,,

the impugned mark and the impugned mark has the potentiality of deceiving the consumers, having imperfect recollection, as to the origin of the goods.",,,,,

[See: Specsavers International Healthcare Ltd., Specsavers BV, Specsavers Optical Group Ltd. and Specsavers Optical Superstores Ltd. vs. Asda",,,,,

Stores Ltd., 2012 FSR 19 at 115, 116].",,,,,

Therefore, the distinctions sought to be drawn by Mr. Bedi between the plaintiff's marks and the impugned marks are an exercise in futility. As",,,,,

noticed hereinabove, even while Mr. Bedi sought to draw distinctions between the impugned marks and the plaintiff's marks, he sought to emphasize,",,,,,

which in my view is the correct approach, that the test to be applied is whether a reasonable man, having an imperfect memory, is likely to be",,,,,

confused as regards the origin of the goods. As noticed above, my sense is, that there is every likelihood of confusion as to the origin of the goods in",,,,,

issue if the stylised version of the impugned marks is allowed to be used by the defendant. The defendant’s use of the impugned marks has the,,,,,

potential of injuring the goodwill of the plaintiff.,,,,,

The fact that the defendant has a registered trademark can certainly not come in the way of the plaintiff seeking an injunction based on, if nothing",,,,,

else, in a passing off action if it is otherwise able to demonstrate that the defendant’s mark is deceptively similar to its mark which has been in use",,,,,

prior to the defendant’s mark. To my mind, it cannot be said that there is no deceptive similarity between the plaintiff’s mark and the",,,,,

impugned marks if one were to view the competing marks without dissecting them into two halves contrary to the defendant's contention.,,,,,

I may also indicate that there is not much weight in the argument advanced on behalf of the defendant that the plaintiff had abandoned its earlier,,,,,

attempt to get its word mark STUDIOMASTER registered or that this aspect was not disclosed in the plaint since, in my opinion, this aspect is not",,,,,

material to the case set up by the plaintiff. The plaintiff claims rights based on the registered device marks qua which it has obtained rights and on,,,,,

account of their prior use, which spans over nearly a decade or more.",,,,,

22.1. The argument advanced by Mr. Bedi that the trademark STUDIOMASTER was descriptive and hence being invalid would not enure any rights,,,,,

in favour of the plaintiff is misconceived. Firstly, the word STUDIO is not descriptive of the product manufactured and sold by the plaintiff. The",,,,,

dictionary meaning of the word STUDIO is a room where an artist, photographer or sculptor works. It also often refers to space/place or facility",,,,,

where the production of movies takes place. STUDIO also means a small flat which is often described as studio apartments. Thus, by itself, the word",,,,,

STUDIO does not describe the goods manufactured and sold by the plaintiff. Furthermore, the word STUDIO has been combined by the plaintiff with",,,,,

another word i.e. MASTER which, as correctly pointed by Mr. Khan, is arbitrary, and unless, it is accompanied by the name of the product, say, for",,,,,

instance, a mixer or an amplifier, it does not by itself give a clue as to what is the product about. Thus, by itself, STUDIOMASTER does not describe",,,,,

the products and goods manufactured and sold by the plaintiff. Likewise, STUDIOMASTER is not descriptive of the product.",,,,,

Therefore, Mr. Bedi’s argument that since the word mark is descriptive and, hence, it can be accorded no protection by the Court, in my",,,,,

opinion, is unsustainable. The other submissions, although, not advanced during the hearing, but form part of the written statement i.e. that the",,,,,

assignment deed is insufficiently stamped or, that the suit is overvalued for the purposes of jurisdiction are matters which can only be examined at the",,,,,

stage of the trial. Mr. Bedi, perhaps, bearing this in mind, made no submissions concerning the same at the time when arguments were heard in the",,,,,

captioned applications.,,,,,

Conclusion: -,,,,,

Thus, for the foregoing reasons, in my view, the best way forward would be to injunct the defendant from using the impugned marks",,,,,

 with the leeway to use the trade name/trademark STUDIO MAN, albeit, without any",,,,,

stylisation. In this context, it is pertinent to record that Mr. Khan, on behalf of the plaintiff, made a statement, to the following effect, which is,",,,,,

recorded in the order dated 17.12.2020.,,,,,

“3. Mr. Khan says that the plaintiff had an objection to only the stylized version of the mark “STUDIOMAN†& “STUDIOMIN†used by,,,,,

the defendant.,,,,,

Mr. Khan emphasizes that in the documents filed with the aforesaid additional affidavit, the mark used is “STUDIO MAN†with a space",,,,,

between STUDIO and MAN, to which, the plaintiff has no objection.â€​",,,,,

[Emphasis is mine],,,,,

Accordingly, the order dated 24.06.2020 is partially varied to the extent given hereinabove. The captioned applications are disposed of in the",,,,,

aforementioned terms.,,,,,

CS (COMM) 193/2020,,,,,

List the matter before the Roster Bench, for directions, on 14.04.2021.",,,,,