Irrespective of being big brands or smaller players, the awareness about protecting one's intellectual property is on the rise. As disputes, forages and court litigations rise, this sphere of law is becoming busier each passing day. While the tug of war to rightly be conferred with ones rights is on, the case of Kalpana Sharma v. Personal Care System [2008 (37) PTC 231] is just one such instance amongst the ongoing many.
The matter at hand deals with the trademark "PYRAMID VASTU", whereby Kalpana Sharma, alleged Personal Care System of having infringed her intellectual property. Claiming to be an inventor and long user of the same, Sharma placed reliance upon the certificate issued by the Trademarks Registry. Sharma also averred her co-plaintiff Pundit R.K. Sharma to be renowned in the fields of astrology, vastu shastra, gemology etc. Reliance was placed on books, periodicals, products and services to depict the goodwill and popularity amassed amongst the general public in relation to the mark. They alleged Personal Care to have adopted the mark on account of the increasing popularity of their books and publications. They further stated that the prominent use of the mark "PYRAMID VASTU" was in order to deceive and confuse the public into believing that the publication was that of Sharma's. The counsel for Sharma contended that enough material had been placed on record in order to constitute a prima facie case.
Personal Care reverted to this stating that they had oblique reasons for adopting the mark deliberately. A submission propounding Personal Care to be the prior user was also made. They stated that while they began manufacturing in 1976, while the evidence on record placed by Sharma showed the marks in conjunction to have been used as late as 1997. They further asserted that they were bona fide users of the mark, in as much as the copyright of Sharma lay vested in the literary works and not artistic works.
Sections 12, 28 and 34 of the Trademarks Act, 1999 were examined. The Court opined that in the event of a prima facie case of deception being established, as under Section 29, the Court would proceed to evaluate the necessary grant of the relief. The Court also noted that the rule was subject to two exceptions engrafted under Section 28 and 34 would come into play. As under Section 28, in the event of both parties being owners of registered trademarks, an infringement action would not follow, but their rights inter se for action of passing off could be maintained. Section 34, elucidating the second exception, enacts that the proprietor or registered user of a trademark cannot interfere or restrain the use of an identical trademark by any person with or resembling it in relation to goods for which that person or predecessor in title has continuously used that trademark from a date prior to the use of the first mentioned trademark in relation to those goods by the proprietor or predecessor-in-title.
The Court enumerating a plethora of decisions in the regard, and reiterating the relevant facts, held that the use of "VASTU PYRAMID" by Personal Care did not call for any ad interim order, since they had established their stand as a prior user successfully.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
