Pending Trademark Applications Confer No Rights
The case of Metro Playing Card Co. vs Wazir Chand Kapoor,
decided by the Delhi High Court on April 5, 1972, is a seminal decision in
Indian trademark law, illustrating the principles governing interim injunctions
in cases of trademark infringement and passing off. This dispute centered on the
use of a tractor device and the word "tractor" as a registered trademark by the
respondent, Wazir Chand Kapoor, for playing cards, which the appellant, Metro
Playing Card Co., allegedly infringed by using a similar tractor device and the
word "Ferguson" on its playing cards.
The case highlights the judiciary's approach to protecting registered trademarks, the significance of visual similarity in infringement claims, and the limitations of defenses based on pending trademark applications or concurrent use. The Delhi High Court's affirmation of the interim injunction underscores the robust protection afforded to registered trademarks under the Trade and Merchandise Marks Act, 1958, and the importance of establishing a prima facie case in interlocutory proceedings.
Detailed Factual Background:The respondent, Wazir Chand Kapoor, was a manufacturer and seller of playing cards, operating under a registered trademark comprising the device of a tractor and the word "tractor." This trademark was registered on February 8, 1968, under No. 233581 in Class 16, which pertains to paper goods, including playing cards. The registration granted Kapoor exclusive rights to use the trademark in relation to his playing cards, which were packaged in cartons bearing the tractor device.
The appellant, Metro Playing Card Co., also engaged in the manufacture and sale of playing cards. In early 1971, Kapoor discovered that Metro was marketing playing cards under the trademark "Ferguson," with a tractor device printed on the back of the cards. While the cartons containing Metro's playing cards bore only the word "Ferguson" and lacked the tractor device, the cards themselves prominently featured the tractor, which Kapoor alleged was deceptively similar to his registered trademark.
Metro claimed to have used the "Ferguson" mark since February 1966 and had applied for its registration in Class 16 at the Trade Mark Registry in Bombay. The application was accepted and advertised in the Trade Mark Journal No. 531 on July 16, 1971, to which Kapoor filed an opposition on September 11, 1971.
Kapoor contended that Metro's use of the tractor device and the word "Ferguson" infringed his registered trademark and constituted passing off, as it could mislead consumers into believing Metro's cards were his. He argued that "Ferguson," a well-known tractor brand, was synonymous with "tractor" in common parlance, exacerbating the likelihood of confusion. Metro countered that its use of the tractor was merely ornamental, not a trademark, and that the distinct packaging (cartons without the tractor device) eliminated any risk of confusion. Metro also asserted its prior use of "Ferguson" and the pending registration as defenses against the infringement claim.
Detailed Procedural Background:The dispute arose when Kapoor filed a suit in the Delhi High Court, seeking a permanent injunction to restrain Metro from infringing his registered trademark and passing off its playing cards as his, along with claims for damages and rendition of accounts. Concurrently, Kapoor moved an application under Order 39, Rules 1 and 2, read with Section 151 of the Code of Civil Procedure (CPC), requesting an interim injunction to prevent Metro from manufacturing, selling, or dealing in playing cards bearing the "Ferguson" mark and the tractor device during the pendency of the suit.
Metro opposed both the suit and the interlocutory application, arguing that its trademark application for "Ferguson" had been accepted, its use predated Kapoor's registration, and the differences in packaging negated any infringement or passing off. The matter was heard by a learned Single Judge, P.N. Khanna, J., on the original side of the Delhi High Court. On November 29, 1971, the Single Judge granted an interim injunction, restraining Metro, its agents, and representatives from manufacturing, selling, or dealing in playing cards printed with the tractor device or any mark resembling Kapoor's registered trademark. The injunction was limited to the tractor device on the cards, as the court found no infringement in the use of "Ferguson" on the cartons.Aggrieved by this order, Metro filed a First Appeal from Order (F.A.O. (OS) No. 1 of 1972) before a Division Bench of the Delhi High Court.
The court addressed the following key issues in adjudicating the appeal: Whether Kapoor established a prima facie case of trademark infringement to justify the interim injunction against Metro's use of the tractor device on its playing cards. Whether Metro's use of the tractor device was likely to cause confusion or deceive consumers, infringing Kapoor's registered trademark rights under the Trade and Merchandise Marks Act, 1958. Whether Metro's pending trademark application for "Ferguson" and its claim of prior use constituted a valid defense against the interim injunction.
Whether the suit should have been stayed pending the outcome of Metro's trademark registration application, or whether Kapoor should have been subjected to terms in case the suit was dismissed. Whether the scope of Kapoor's registered trademark extended to the tractor device on the playing cards themselves, or was limited to the carton packaging.
Respondent's (Kapoor's) Submissions: Kapoor argued that his registered trademark, comprising the tractor device and the word "tractor," was infringed by Metro's use of a similar tractor device on its playing cards. He contended that the visual similarity between the two tractor devices was patent, likely to confuse consumers purchasing playing cards.
Kapoor emphasized that playing cards are often inspected before purchase, and the presence of the tractor device on Metro's cards could lead unwary buyers to mistake them for his products. He further argued that "Ferguson," being a well-known tractor brand, was synonymous with "tractor" in common parlance, reinforcing the likelihood of confusion and supporting his passing off claim.
Kapoor relied on Sections 28 and 29 of the Trade and Merchandise Marks Act, 1958, asserting that his registration conferred exclusive rights to use the trademark in relation to playing cards, including both the cards and their packaging. He maintained that Metro's unregistered use of the tractor device violated his statutory rights, as Metro had not challenged the validity of his registration.
Kapoor also argued that Metro's pending application for "Ferguson" did not confer any rights until granted, and its advertisement in the Trade Mark Journal was irrelevant to the infringement claim. He urged the court to uphold the interim injunction to protect his trademark during the suit's pendency.
Appellant's (Metro's) Submissions
Metro contested the interim injunction on several grounds. First, Metro argued that Kapoor failed to establish a prima facie case, as the tractor device on its cards was merely ornamental, not a trademark, and the cartons bore only the word "Ferguson," distinguishing them from Kapoor's packaging. Metro asserted that playing cards are sold in sealed cartons, and consumers rely on the carton's labeling, reducing the risk of confusion.
Second, Metro invoked Section 12(3) of the Trade and Merchandise Marks Act, 1958, which allows concurrent registration for honest use or special circumstances. Metro claimed that its application for "Ferguson" had been accepted and advertised, and Kapoor's opposition was pending. It argued that the suit should be stayed until the Registrar decided on its application, citing Edwards v. Elkan (1888) 5 R.P.C. 70, where an interim injunction was deferred pending a defendant's registration application due to prior use.
Third, Metro claimed prior use of "Ferguson" since February 1966, predating Kapoor's 1968 registration, and argued that this entitled it to continue using the mark. Metro also contended that the injunction was overly broad, as Kapoor's registration covered the tractor device on cartons, not the cards themselves, citing the statutory definitions in Section 2(2) of the Act.
Metro cited several precedents to support its case. In Mitchell v. Henry (1880) 15 Ch D 181, an injunction was refused due to dissimilar goods, which Metro analogized to the distinct packaging of its cards. Bravingtons Ltd. v. Barrington Tennant (1957 RPC 183) and Tavener Rutledge Ltd. v. Specters Ltd. (1957 RPC 498) were cited to argue that injunctions should be denied where similarity is doubtful or there is delay, though Metro did not allege delay by Kapoor.
Metro also relied on D. Adinarayana Setty v. Brooke Bond Tea of India Ltd. (AIR 1960 Mys 142) and an English case (1932 RPC 597) to urge that the suit be stayed or terms imposed on Kapoor, such as security for potential dismissal of the suit.Finally, Metro argued that its pending application, advertised in July 1971, warranted a stay or conditional relief, as concurrent use could be recognized if its registration was granted.
The parties cited several precedents, primarily by Metro, to support their respective positions on trademark infringement, interim relief, and concurrent use:
Case Title: Metro Playing Card Co. Vs Wazir Chand Kapoor
Date of Order: April 5, 1972
Case No.: F.A.O. (OS) No. 1 of 1972
Neutral Citation: AIR 1972 Del 248
Name of Court: High Court of Delhi
Name of Hon'ble Judge: Hon'ble Chief Justice Hardayal Hardy and Hon'ble Mr. Justice Prakash Narain
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539
The case highlights the judiciary's approach to protecting registered trademarks, the significance of visual similarity in infringement claims, and the limitations of defenses based on pending trademark applications or concurrent use. The Delhi High Court's affirmation of the interim injunction underscores the robust protection afforded to registered trademarks under the Trade and Merchandise Marks Act, 1958, and the importance of establishing a prima facie case in interlocutory proceedings.
Detailed Factual Background:The respondent, Wazir Chand Kapoor, was a manufacturer and seller of playing cards, operating under a registered trademark comprising the device of a tractor and the word "tractor." This trademark was registered on February 8, 1968, under No. 233581 in Class 16, which pertains to paper goods, including playing cards. The registration granted Kapoor exclusive rights to use the trademark in relation to his playing cards, which were packaged in cartons bearing the tractor device.
The appellant, Metro Playing Card Co., also engaged in the manufacture and sale of playing cards. In early 1971, Kapoor discovered that Metro was marketing playing cards under the trademark "Ferguson," with a tractor device printed on the back of the cards. While the cartons containing Metro's playing cards bore only the word "Ferguson" and lacked the tractor device, the cards themselves prominently featured the tractor, which Kapoor alleged was deceptively similar to his registered trademark.
Metro claimed to have used the "Ferguson" mark since February 1966 and had applied for its registration in Class 16 at the Trade Mark Registry in Bombay. The application was accepted and advertised in the Trade Mark Journal No. 531 on July 16, 1971, to which Kapoor filed an opposition on September 11, 1971.
Kapoor contended that Metro's use of the tractor device and the word "Ferguson" infringed his registered trademark and constituted passing off, as it could mislead consumers into believing Metro's cards were his. He argued that "Ferguson," a well-known tractor brand, was synonymous with "tractor" in common parlance, exacerbating the likelihood of confusion. Metro countered that its use of the tractor was merely ornamental, not a trademark, and that the distinct packaging (cartons without the tractor device) eliminated any risk of confusion. Metro also asserted its prior use of "Ferguson" and the pending registration as defenses against the infringement claim.
Detailed Procedural Background:The dispute arose when Kapoor filed a suit in the Delhi High Court, seeking a permanent injunction to restrain Metro from infringing his registered trademark and passing off its playing cards as his, along with claims for damages and rendition of accounts. Concurrently, Kapoor moved an application under Order 39, Rules 1 and 2, read with Section 151 of the Code of Civil Procedure (CPC), requesting an interim injunction to prevent Metro from manufacturing, selling, or dealing in playing cards bearing the "Ferguson" mark and the tractor device during the pendency of the suit.
Metro opposed both the suit and the interlocutory application, arguing that its trademark application for "Ferguson" had been accepted, its use predated Kapoor's registration, and the differences in packaging negated any infringement or passing off. The matter was heard by a learned Single Judge, P.N. Khanna, J., on the original side of the Delhi High Court. On November 29, 1971, the Single Judge granted an interim injunction, restraining Metro, its agents, and representatives from manufacturing, selling, or dealing in playing cards printed with the tractor device or any mark resembling Kapoor's registered trademark. The injunction was limited to the tractor device on the cards, as the court found no infringement in the use of "Ferguson" on the cartons.Aggrieved by this order, Metro filed a First Appeal from Order (F.A.O. (OS) No. 1 of 1972) before a Division Bench of the Delhi High Court.
The court addressed the following key issues in adjudicating the appeal: Whether Kapoor established a prima facie case of trademark infringement to justify the interim injunction against Metro's use of the tractor device on its playing cards. Whether Metro's use of the tractor device was likely to cause confusion or deceive consumers, infringing Kapoor's registered trademark rights under the Trade and Merchandise Marks Act, 1958. Whether Metro's pending trademark application for "Ferguson" and its claim of prior use constituted a valid defense against the interim injunction.
Whether the suit should have been stayed pending the outcome of Metro's trademark registration application, or whether Kapoor should have been subjected to terms in case the suit was dismissed. Whether the scope of Kapoor's registered trademark extended to the tractor device on the playing cards themselves, or was limited to the carton packaging.
Respondent's (Kapoor's) Submissions: Kapoor argued that his registered trademark, comprising the tractor device and the word "tractor," was infringed by Metro's use of a similar tractor device on its playing cards. He contended that the visual similarity between the two tractor devices was patent, likely to confuse consumers purchasing playing cards.
Kapoor emphasized that playing cards are often inspected before purchase, and the presence of the tractor device on Metro's cards could lead unwary buyers to mistake them for his products. He further argued that "Ferguson," being a well-known tractor brand, was synonymous with "tractor" in common parlance, reinforcing the likelihood of confusion and supporting his passing off claim.
Kapoor relied on Sections 28 and 29 of the Trade and Merchandise Marks Act, 1958, asserting that his registration conferred exclusive rights to use the trademark in relation to playing cards, including both the cards and their packaging. He maintained that Metro's unregistered use of the tractor device violated his statutory rights, as Metro had not challenged the validity of his registration.
Kapoor also argued that Metro's pending application for "Ferguson" did not confer any rights until granted, and its advertisement in the Trade Mark Journal was irrelevant to the infringement claim. He urged the court to uphold the interim injunction to protect his trademark during the suit's pendency.
Appellant's (Metro's) Submissions
Metro contested the interim injunction on several grounds. First, Metro argued that Kapoor failed to establish a prima facie case, as the tractor device on its cards was merely ornamental, not a trademark, and the cartons bore only the word "Ferguson," distinguishing them from Kapoor's packaging. Metro asserted that playing cards are sold in sealed cartons, and consumers rely on the carton's labeling, reducing the risk of confusion.
Second, Metro invoked Section 12(3) of the Trade and Merchandise Marks Act, 1958, which allows concurrent registration for honest use or special circumstances. Metro claimed that its application for "Ferguson" had been accepted and advertised, and Kapoor's opposition was pending. It argued that the suit should be stayed until the Registrar decided on its application, citing Edwards v. Elkan (1888) 5 R.P.C. 70, where an interim injunction was deferred pending a defendant's registration application due to prior use.
Third, Metro claimed prior use of "Ferguson" since February 1966, predating Kapoor's 1968 registration, and argued that this entitled it to continue using the mark. Metro also contended that the injunction was overly broad, as Kapoor's registration covered the tractor device on cartons, not the cards themselves, citing the statutory definitions in Section 2(2) of the Act.
Metro cited several precedents to support its case. In Mitchell v. Henry (1880) 15 Ch D 181, an injunction was refused due to dissimilar goods, which Metro analogized to the distinct packaging of its cards. Bravingtons Ltd. v. Barrington Tennant (1957 RPC 183) and Tavener Rutledge Ltd. v. Specters Ltd. (1957 RPC 498) were cited to argue that injunctions should be denied where similarity is doubtful or there is delay, though Metro did not allege delay by Kapoor.
Metro also relied on D. Adinarayana Setty v. Brooke Bond Tea of India Ltd. (AIR 1960 Mys 142) and an English case (1932 RPC 597) to urge that the suit be stayed or terms imposed on Kapoor, such as security for potential dismissal of the suit.Finally, Metro argued that its pending application, advertised in July 1971, warranted a stay or conditional relief, as concurrent use could be recognized if its registration was granted.
The parties cited several precedents, primarily by Metro, to support their respective positions on trademark infringement, interim relief, and concurrent use:
- Edwards v. Elkan, (1888) 5 R.P.C. 70 (Chancery Division, England): Cited by Metro to argue that the suit should be stayed pending its trademark application. The defendant used the mark "Our Boys" before the plaintiff's registration, and the court deferred the injunction until the application was decided. The Delhi High Court distinguished this, noting Metro had no prior use of the tractor device and applied for "Ferguson," not the tractor.
- Mitchell v. Henry, (1880) 15 Ch D 181 (Chancery Division, England): Cited by Metro to argue dissimilar goods negate infringement. The court refused injunction due to lack of similarity. The Delhi High Court rejected this analogy due to the clear similarity between the tractor devices on both parties' products.
- Bravingtons Ltd. v. Barrington Tennant, (1957 RPC 183) (Chancery Division, England): Metro relied on this to argue that doubtful similarity or delay precludes interim relief. The court refused an injunction for lack of deceptive similarity and delay. The Delhi High Court found no delay by Kapoor and held the similarity between tractor devices to be clear.
- Tavener Rutledge Ltd. v. Specters Ltd., (1957 RPC 498) (Chancery Division, England): Cited to argue that delay and dissimilarity justified refusal of injunction. The Delhi High Court dismissed this, noting no delay and clear similarity between the devices.
- D. Adinarayana Setty v. Brooke Bond Tea of India Ltd., AIR 1960 Mys 142 (Mysore High Court): Cited to argue for stay or imposition of terms. The Delhi High Court found no basis to stay the suit or impose terms, since Metro's pleadings lacked such a prayer.
-
English Case, (1932 RPC 597):
Cited without details. The court dismissed its relevance due to lack of applicability and prior use evidence.
- Prima Facie Case: Kapoor had a strong case of infringement. The tractor device was patently similar and likely to influence consumer perception. "Ferguson" was not ruled on but noted as potentially synonymous with "tractor."
- Pending Application: Mere acceptance of a trademark application does not grant rights (Section 28). Metro's reliance on Section 12(3) for concurrent use was invalid at the interim stage.
- Ornamental Use Argument: The court found the tractor device was used as a trademark, not merely ornamental, and its placement on cards mimicked Kapoor's registered use.
- Scope of Registration: Registration covered both goods and packaging. The tractor device on the cards was included.
- Stay or Terms: No basis found for stay or imposition of terms; the precedents cited were inapplicable.
-
Balance of Convenience: Favored Kapoor; injunction protected his trademark without unduly harming Metro.
-
The Delhi High Court dismissed Metro's appeal (F.A.O. (OS) No. 1 of 1972) with costs, upholding the interim injunction. Metro was restrained from using the tractor device on playing cards pending the suit's resolution.
- Protection of Registered Trademarks: Exclusive rights are granted under Section 28; unregistered similar marks constitute infringement.
- Visual Similarity in Infringement: Similarity between marks on visible goods (like playing cards) is sufficient for interim relief.
- Pending Trademark Applications Confer No Rights: Only registration grants rights; pending status cannot be a defense.
- Concurrent Use Defense: Requires strong evidence of honest and prior use, which Metro failed to provide.
- Scope of Registration: Includes marks on both the goods and their packaging.
Case Title: Metro Playing Card Co. Vs Wazir Chand Kapoor
Date of Order: April 5, 1972
Case No.: F.A.O. (OS) No. 1 of 1972
Neutral Citation: AIR 1972 Del 248
Name of Court: High Court of Delhi
Name of Hon'ble Judge: Hon'ble Chief Justice Hardayal Hardy and Hon'ble Mr. Justice Prakash Narain
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539
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