Gillette India Ltd. V. Harbans Lal Malhotra & Sons Private Limited 2009 (41) PTC 182 (Cal)(DB) deals with intervention with the right of Gillette India Ltd. Gillette used the suffix 'champion', which is identical and deceptively similar to the registered trademark of Harbans Lal Malhotra. The mark in question 'champion' is commonly used as a trade practice and widely accepted as a mark of wide range of goods and services. The registration/use of 'champion' as a mark for a long time does not make it an enforceable right; rights can only be enforceable when the mark/expression used is distinct and dissimilar.
The present case is an appeal against an order by the Trial judge allowing an application for temporary injunction. Gillette India Ltd. filed a suit for declaration that the use of the suffix mark by Harbans Lal Malhotra is identical to the Gillette India Ltd. hence, causing infringement off their goods and seeks permanent injunction against the defendant.
Gillette India Ltd. a renowned manufacturer, seller and exporter of safety razors, blades and shaving systems; they have been using the mark 'champion' since 1962 and a registered proprietor of the same since 1964. The trademarks of Gillette India Ltd. were said to have acquired global acknowledgment and are still valid and subsisting. The consumers and members of the public trade identify the mark with them and this mark has earned considerable goodwill in the country and abroad.
Harbans Lal Malhotra introduced shaving razor bearing the mark 'champion', which is deceptively similar. The mark 'champion' used by them as a prefix, was alleged to lead the consumer to believe that the product is originating from Gillette India Ltd., or the existence of some business connection between them. Gillette India Ltd. alleged that Harbans Lal Malhotra is causing harm and irreparable damage to its business along with infringement of their mark and passing off of their goods.
Gillette India Ltd. in respect of their contention produces certificate issued by the Trademark registry showing the mark as a registered trademark. On this, Harbans Lal Malhotra countered the contention by challenging the validity of the registration of the trademark and applies before the Intellectual Property Appellate Board for cancellation of the trademark registration.
Harbans Lal Malhotra stated that the mark 'champion' is used in the trade to depict a leader, excellence of quality or laudatory epithet along with their respective trademarks. It is also used to declare superiority of the quality of products in comparison to other products. To prove their point they gave a long list of examples of such common trade practices and thus, contended that no single member should be allowed to monopolize such a mark and contended that, it is not using the mark as a trademark but, using it as a brand image and trade description like other members of the trade, hence they are not liable for infringement.
The Court held that Gillette India Ltd. would not suffer any injury during the pendency of the suit and Harbans Lal Malhotra was permitted to market its product with the expression 'champion' along with its trademark under the condition that if Gillette India Ltd. succeeds in the suit, they will be compensated. In the case wherein, Harbans Lal Malhotra is injuncted from marketing its product, they would remain irremediable. The court further observed that the grant or refusal of temporary injunction is a discretionary matter of the court.. Keeping in mind the interest of both parties, the court ordered Harbans Lal Malhotra to maintain accounts in respect of produce and sale of its products bearing the mark 'champion'. However the impugned order was set aside and the application for temporary injunction stood rejected.
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