Proprietary right over trade mark has to be protected: HC

NEW DELHI: In a significant order, the Delhi High Court has held that in the passing off action if the proprietary right over a trade mark was established then it has to be protected even if the infringing mark was used for cognate and allied goods or for different articles.
The order to this effect was passed recently by Justice M.A. Khan (since retired) while restraining leading pen maker Rotomac Pens Pvt Ltd from using the mark "SOLO" as sub-brand for its product.
Felix Systems Pvt Ltd, manufacturer and promoter of stationery products, had approached the court claiming proprietary right in the trade mark "SOLO" and alleged that the pen maker adopted the mark to pass off its goods as that of Felix''s product.
Advocate Amarjit Singh, appearing for Felix, had submitted that the use of the word "SOLO" by rival as sub-brand with their house mark Rotomac was illegal as the stationery makers were the prior user of the impugned brand name.
Rotomac had contended that the use of sub-brand did not constitute confusion and deception in the minds of consumer as the house name on its products distinguishes its pen. However, the court rejected the contention and said "the use and adoption of the word ''SOLO'' by defendant (Rotomac) in relation to its own goods, i.e pen manufactured and sold by it in the market will infringe the proprietary rights of Felix in its trade mark and the defendant would be guilty of committing passing off".

"It will be an unfair trade practice which cannot be allowed to be continued," the court added.
The court said the argument of Rotomac was devoid of any force that the consumers of the two companies were different and stationery items sold by the Felix under the mark "SOLO" were not allied or cognate to the goods marketed by it.
"The pens are undoubtedly allied and cognate to the stationery items which Felix (plaintiff) is selling. Pens and other stationery items sold by plaintiff which is said to be so different that there was no likelihood of any confusion to be caused to the consumers of these goods," the court observed.