Chennai, Dec. 21
Chennai-based commercial vehicles company, Ashok Leyland Ltd, which has been making and selling buses and trucks for more than six decades, has won a suit filed in the Madras High Court against infringement of its registered trade mark ‘LUXURA' by two firms, one in Bangalore and the other in Mumbai.
Mr Justice V. Ramasubramanian, who heard the suit, ruled that “allowing the first defendant (Blue Hill Logistics Pvt Ltd, Bangalore) to continue to infringe would result in irreparable loss and injury to the plaintiff and would also embolden the commission of infringement by others.”
In his 31-page order delivered on Tuesday, the judge said that the balance of convenience was also in favour of the plaintiff and the denial of an order of injunction would cause irreparable loss and injury to the company.
Adopted in 2006
The plaintiff contended that it adopted a trademark known as ‘LUXURA' in relation to commercial vehicles in 2006 and obtained registration of the said trademark on April 20, 2007. It launched the LUXURA bus during the Auto Expo held in January 2006 in Delhi. When in August 2010 it came across information that 2 {+n} {+d} defendant (Dilip Chhabria Design Pvt Ltd., Mumbai) had designed and engineered a business class bus under trademark ‘LUXURA/LUXURIA', it issued legal notice calling upon the second defendant to cease and desist and it replied stating that it did not own the said vehicle.
The plaintiff, after making further enquiries, issued another cease and desist notice on November 30, 2010, but despite the notice, Dilip Chhabria Design proceeded with the launch of the bus under trade name ‘LUXURIA' on November 12, 2010. The plaintiff said it also came to know that another company — Blue Hill Logistics — was the one that proposed to market the buses under the trademark ‘LUXURIA'. The plaintiff said it was therefore constrained to file the suit against that company for infringement and passing off and for various consequential reliefs.
Blue Hill Logistics said the service mark adopted by it was preceded by image of a luxurious reclining seat and that both words ‘LUXURA' and ‘LUXURIA' were derived from the generic word ‘LUXURY'. The plaintiff could not claim monopoly over the word ‘LUXURY'.
‘Exclusive right'
The judge ruled it was clear that plaintiff had obtained registration of word ‘LUXURA' in respect of goods falling under Class 12. Hence, it had the exclusive right to use of the trademark. The mark adopted by Blue Hill Logistics was the word ‘LUXURIA' along with the device of a reclining chair. Certainly, the mark adopted by the first defendant was similar to registered trademark of the plaintiff.
The fact that the plaintiff had a reputation in India could not be disputed, the judge added. The fact was that the bus under brand name ‘LUXURA' was launched in 2006, which was reported in leading newspapers. The AP State Road Transport Corporation had also bought buses carrying the registered trademark of the plaintiff. Therefore, prima facie, it appeared that the registered trademark of the plaintiff had a reputation in India.
The judge held that from the pleadings of the plaintiff the use of similar mark, namely, ‘LUXURIA', by Blue Hill Logistics would certainly tend to take undue advantage of, and was also detrimental to, the reputation of the registered trademark of the plaintiff. “Therefore, I hold that the plaintiff has established a prima facie case.” Allowing the first defendant to continue to infringe would result in irreparable loss and injury to the plaintiff and would also embolden commission of infringement by others.
In view of the above, the applications for injunctions by the plaintiff were allowed.
Source : The Hindu Business Line : Thursday, December 23, 2010