Read the following case study carefully and answer the questions given at the end : Facts of the case : The plaintiff XYZ Ltd. is a Company publicly listed, organized and existing under the laws of USA, having its regist

CS Professional · Intellectual Property Rights - Laws and Practices · PYQS · June 2019
Read the following case study carefully and answer the questions given at the end : Facts of the case : The plaintiff XYZ Ltd. is a Company publicly listed, organized and existing under the laws of USA, having its registered office at New York. Mr. ABC is duly authorised to sign, verify and institute the present suit. The plaintiff's group of companies is one of the world's most famous and well-known hotel and resort chain group using the trademark 'sleepingcat' and its device. The plaintiff's flagship company 'sleepingcat Resort' was launched in 1994 in Laguna Phuket under the trademark 'sleepingcat' and its device. Hence, the mark is inherently distinctive of the business and products of the plaintiff and the continuous use of the trademark 'sleepingcat' by the plaintiff group since the year 1994 has created goodwill and reputation in the said mark that is associated with the plaintiff and the plaintiff alone. The plaintiff Group's services and products under the trademarks 'sleepingcat' and its device have been widely promoted inter alia through print and audio-visual media including television programmes, advertisements, articles and write-ups appearing in leading newspapers, magazines, journals, etc. all of which enjoy a wide viewership, circulation and readership all over the world. Many of these forms of media also have a substantial reach and circulation in India and are viewed by millions of Indians who travel abroad or who subscribe to the same in India every year. In addition, many people from all over the world including India access the plaintiff Group's websites : www.sleepingcat.com, www.sleepingcatspa.com, www.sleepingcatgallery.com, www.sleepingcatresorts.com that have been registered since as early as 1996 and become acquainted with the plaintiff Group's business, services and products which further contributed to the reputation and notoriety of the mark 'sleepingcat' and its device of the plaintiff. The plaintiff Group, being prior in the adoption and use of the mark 'sleepingcat' and its device, is its proprietor and thus, entitled to the use of these marks under common law rights, to the exclusion of all others. Apart from having common law rights in the mark 'sleepingcat' and its device, the plaintiff also has statutory right in the same. It is submitted that the plaintiff has registered or has sought to register the mark 'sleepingcat' and its device in more than 30 countries of the world. The plaintiff is, thus, the registered owner of the trademark 'sleepingcat' as well as the device in various countries. The defendant Mr. X is the Managing Director of defendant No. 2 which is 'sleepingcat Tours and Travels (Pvt.) Ltd.' having its office at Dadar, Mumbai and at Regal Building, Parliament Street, New Delhi. It is the case of the plaintiff against the defendant that sometime in 2004 it came to the knowledge of the plaintiff that the defendants had applied for registration of the mark 'sleepingcat' under the Trademarks Act, 1999. The plaintiff had filed opposition against the purported registration applications in 2004. The said application were thereafter abandoned in February 2005 since the defendants failed to file any counter statements to the oppositions filed by the plaintiffs predecessor in-title and thus, the cases were closed. In June, 2005 the defendants filed an application with trademark office seeking registration of the mark 'sleepingcat' with device, opposition to which was filed by the plaintiff in May 2006 and September 2006 respectively. While the said applications were under contest before the trademarks registry, the defendant used the trademark for advertising his services. It adopted the website www.sleepingcattours.com which was created on 16th August 2003. The plaintiff filed the suit against the defendant use of the trademark on 15 January 2019. It plead to the court that : (1) The adoption of the mark 'sleepingcat' and its device by the plaintiff is much prior to the filing of the application for registration of the mark 'sleepingcat' and its device by the defendants and also much prior to the alleged use of it by the defendants. (2) It is submitted that the defendants belong to the same trade/industry and therefore, there exists every reason for the defendants to have been aware of the plaintiffs marks and also the goodwill and reputation of the said marks worldwide. (3) The plaintiff submits that there is no way in which the defendants could have honestly or by sheer coincidence adopted such a well known mark for his goods, except for ulterior gains. The conduct of the defendants is totally dishonest and is solely motivated to create mass deception and confusion by running a trade/business under an identical trademark. The defendants' activities are clearly motivated to encash upon the hard earned reputation and goodwill of the plaintiff's well known and recognized trademark 'sleepingcat' and its device. The following defence were raised by the defendant : (1) The plaintiffs have no area of operation from India nor do they have any office in India, while the defendants are a company incorporated within India and have their area operations in India and have been actively conducting business since 1996 without any interruption. The plaintiffs are only trying to take advantage of the goodwill and reputation of the defendants and to encash on the presence of the defendants' business which the defendants have established for the last 12 years in India and abroad under the trademark of 'sleepingcat' and its device. (2) The defendant No. 2 is one of the leading tour and travel companies including camping and adventure sports and lay special emphasis on providing services to suit the clients and to provide such hospitality designed to fit into its natural surrounding, using indigenous resources as far as possible which may reflect the landscape and architecture of the area of travel and also catering to all such needs of clients visiting India and taking the advantage of the facilities and other opportunities available in India with regards to well known tourists spots in India. (3) The plaintiffs are conducting a business of hotels, resorts and spas while the defendants are primarily conducting services relating to travel and tourism in India through their company and the trademark 'sleepingcat' and its device. There is no trade connection between the business of the plaintiff and defendants. Questions : Is the current suit barred by limitation ?

Answer & Explanation:

It has been decided in many cases that such statutory right cannot be lost merely on the question of principles of delay, laches or acquiescence. It was also held that a mere delay after knowledge of infringement does not deprive the registered proprietor of a trade mark of his statutory rights or of the appropriate remedy for the enforcement of those rights so long as the said delay is not an inordinate delay. It is now well settled that an action for passing off is a common law remedy being an action in substance of deceit under the Law of Torts. Wherever and whenever fresh deceitful act is committed the person deceived would naturally have a fresh cause of action in his favour. Thus every time when a person passes off his goods as those of another he commits the act of such deceit. Similarly whenever and wherever a person commits breach of a registered trade mark of another he commits a recurring act of breach or infringement of such trade mark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved. The present suit is not barred by limitation. Generally limitation period is for 3 years from the start of cause of action. Article 88 and Section 22 of the Limitation Act, 1963 are to be read conjointly, it clearly provides that in case of a continuing breach of contract or in the case of a continuing tort, a fresh period of limitation begins to run at every moment of the time during which the breach or the tort, as the case may be, continues. In the present case, admittedly, the defendants are subsequent users of the trademark 'SLEEPING CAT' and 'SLEEEPING CAT' device. It is a continuous cause of action. The passing off is one of the facet of tort. In case both the provisions are read, prima facie it appears to the court that the suit is not barred by limitation. In Timken Company v. Timken Services Private Ltd. , the Delhi High Court held that if a new deceitful act is committed, the deceived party would naturally have a fresh cause of action in its favour. Thus, every time a party passes its goods off as those of another it commits an act of infringement. Similarly, whenever a party breaches another party's registered trademark, it commits a recurring act of breach or infringement of that mark, giving rise to a fresh cause of action to the aggrieved party.

Topics: Trademark Law

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