RPG Enterprises, a multi-industry company founded in 1979 and is the plaintiff in the present lawsuit. The plaintiff holds numerous registrations for other RPG/RPG formative marks under the Trade Marks Act, 1999 in different classes along with a copyright registration under artistic work and has been continuously, extensively and uninterruptedly using the mark. As a result the mark RPG has become a source identifier of the Plaintiff and its goods/services thereunder.
The plaintiff came across the marks “RPG opticals” and “RPG pharmacy” and subsequently filed objection and rectification against them respectively, both of which were pending. The plaintiff, therefore, filed a suit against the above-said marks for infringement of trademarks as well as copyright infringement and passing off.
CONTENTION OF THE PLAINTIFF:
The plaintiff contended that their mark was an honest conception in the form of an acronym extracted from the initials of their founder’s name and infamous industrialist Mr Ram Prasad Goenka and hence, has been distinctive ever since its inception. Not to mention that apart from the continuous and uninterrupted use of the range of products and services that the plaintiff has been operating under, it also holds a copyright registration of the mark RPG under artistic work. From possessing an ownership of numerous domain names to their extra-ordinary presence both online and offline, the plaintiff has acquired a secondary meaning. The plaintiff contends that the defendants “RPG opticals” and “RPG pharmacy” are aesthetically, architecturally and phonetically identical to their mark. With such stark similarity and owing to the substantial goodwill that the plaintiff possesses, it is highly likely for the customers to get confused with the mark of the defendants and into believing that they are indeed emanating from the plaintiff.
CONTENTION OF THE DEFENDANTS:
The defendant’s contentions were two-fold. They iterated that, in addition to the rival marks being extremely dissimilar, the goods and services are completely distinct. They furthered their argument by mentioning that they are simply utilising their trademarks “RPG Opticals” and “RPG Pharmacy” as a trade name and are not selling any items under the RPG mark. Being only limited to the use as a trading name, the plaintiff should establish infringement, if any, under Section 29(5) of the Trademarks Act, 1999. The defendants also added that a trademark proprietor cannot enjoy monopoly over the entire class of goods if he is not using the same trademark for certain goods in the same class.
OBSERVATION OF THE COURT:
The court went through a supremely profound analysis to weigh the rival party’s contentions. The court took into consideration relevant points such as the plaintiff being in the market for around 37 years as marked before the defendant’s entry in the market, the plaintiff’s mark having acquired secondary meaning and the immense recognition amongst the general public. The interpretation of certain legal points that paved way for the present conclusion of the court also entailed the true test for checking the deceptive similarity, the built up goodwill and reputation and the aftermath it could render if deception continues at the instance of the defendants and the superiority of prior users over the registrations.
In the light of aforementioned discussion, the suit was disposed of and the defendants were restrained from manufacturing, marketing, trading, selling or/and using RPG mark, logo and domain name in any manner whatsoever.