Gomzi Active Vs. M/S. Reebok India Co. & Anr.  Insc 92 (2 February 2007)
Dr. ARIJIT PASAYAT & S.H. KAPADIA
(Arising out of SLP(C) No. 12460 of 2006) Dr. ARIJIT PASAYAT, J.
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
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.
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
"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
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
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
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.