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CASE NO.: Appeal (civil)  440 of 2007

PETITIONER: M/s. Gomzi Active                                       ...Appellant

RESPONDENT: M/s. Reebok India Co. & Anr.                    ...Respondents

DATE OF JUDGMENT: 02/02/2007

BENCH: Dr. ARIJIT PASAYAT & S.H. KAPADIA

JUDGMENT: J U D G M E N T (Arising out of SLP(C) No. 12460 of 2006)  

Dr. ARIJIT PASAYAT, J.

       Leave granted.

Challenge in this appeal is to the judgment rendered by a  learned Single Judge of the Karnataka High  

Court partially allowing the appeal filed by the respondent and  directing the trial court to dispose of the suit early, preferably  within six months from the date of order i.e. 22.6.2006.

Background facts in a nutshell are as follows:

Appellant filed the suit i.e. O.S. No. 16861 of 2005  seeking permanent injunction against the respondents by  restraining them from using their product logo/trade mark  "I am what I am" and for payment of damages and for  rendition of accounts.  The controversy involved was  pertaining to the use of the trade slogan "I am what I am".   Respondents had filed the appeal challenging the grant of  temporary injunction restraining them from using the logo "I  am what I am" along with their trade mark.   

Case of the plaintiff was that the trade slogan "I am what  I am" is its distinctive style and design at least since 1998,  used on garments which were stolen/pirated by the defendant  thus infringing their proprietary right including their  intellectual property.  The plaintiff further asserted that it first  used the logo "I am what I am" and therefore, it alone can  claim rights over the said slogan as a trade mark.  Defendant  resisted the claim.   

The trial court, upon consideration of the pleadings and  the documents produced, held that the trademark of the  plaintiff under which it carried on business was "Gomzi" and  not "I am what I am".  It further held that the plaintiff did not  file any application to get the slogan registered as a trade  mark until May, 2005.  The Court prima facie found that "I am  what I am" cannot be construed as a logo or trade mark of the  plaintiff.  This conclusion was challenged by the respondents.  

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The High Court as noted above allowed the appeal and set  aside the order under challenge before it.

Learned counsel for the appellant submitted that in view  of what has been stated in respect of trade mark, the High  Court was not justified in its view.  Learned counsel for the  respondent on the other hand supported the impugned order  of the High Court.

In S.M. Dyechem Ltd. v. Cadbury (India) Ltd. (2000(5)  SCC 573) at paragraph 47 it was observed as follows:  "For the above reasons, we hold that on the   question of the relative strength, the decision  must go in favour of the defendant that there is  no infringement and the High Court was right in  refusing temporary injunction. Point 5 is  decided accordingly."

In para 49 after referring to Halsbury’s laws of England it  was observed as follows: "It is possible that, on the same facts, a  suit for passing off may fail but a suit for  infringement may succeed because the  additions, the get up and trade dress may  enable a defendant to escape in a passing off  action. A somewhat similar but interesting  situation arose in a dispute between two  companies. In N.S. Thread & Co. v. James  Chadwick & Bros. (AIR 1948 Mad. 481), the  passing off action failed. But thereafter James  Chadwick Co. succeeded in an appeal arising  out of the registration proceedings and the  said judgment was confirmed by this Court in  N.S. Thread & Co. v. James Chadwick & Bros.  (AIR 1953 SC 357) It was held that the  judgment in the passing off case could not be  relied upon by the opposite side in latter  registration proceedings." In the same tone, Halsbury (Trade Marks,  4th Ed., 1984 Vol. 48, para 187) says that in a  passing off action the "degree of similarity of  the name, mark or other features concerned is  important but not necessarily decisive, so that  an action for infringement of a registered trade  mark may succeed on the same facts where a  passing off action fails or vice versa". As to  vice-versa, Kerly says (para 16.12), an  infringement action may fail where plaintiff  cannot prove registration or that its  registration extends to the goods or to all the  goods in question or because the registration  is invalid and yet the plaintiff may show that  by imitating the mark or otherwise, the  defendant has done what is calculated to pass  off his goods as those of plaintiff.

In Kaviraj Pandit Durga Dutt Sharma v. Navaratna  Pharmaceutical Laboratories (AIR 1965 SC 980) the distinction  between passing off action and infringement action was  highlighted.   

The facts of the case when tested on the principles set  out above make the position clear that grant of any interim  protection in this case would not be proper.

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Learned counsel for the appellant submitted that it has  taken a positive stand that the logo was intellectual property  and therefore without any further material, grant of injunction  was warranted.  This plea was resisted by learned counsel for  the respondent.

It is stated that issues have already been framed and the  High Court had directed disposal of the suit within a period of  six months from the date of order.  That being so, the proper  course would be to direct the concerned Court to dispose of  the matter as early as practicable, preferably within four  months, as issues are stated to have been already framed. The  defendant shall maintain separate accounts in respect of the  impugned transactions. Leaving open all questions for   adjudication, we direct the matter shall be heard expeditiously  by the trial court and disposed of preferably by the end of  April, 2007.  Appeal is disposed of.  It is made clear that  whatever view has been taken by the trial court or the High  Court would be a tentative view, and not the final view.  

The appeal is disposed of accordingly but without any  order as to costs.