Bombay High Court grants relief to Khadi and Village Industries Commission in trademark infringement case

The Bombay High Court on Wednesday restrained a Mumbai based association from temporarily using the ‘KHADI’ and ‘Charkha’ logo belonging to Khadi and Village Industries Commission (KVIC). .KVIC approached the High Court claiming that one Mumbai Khadi and Village Industries Association (defendant) was using KVIC registered marks consisting of the word ‘KHADI’ and depiction of ‘Charkha’ logo in conjunction with its name.This infringed the word mark, label mark and device mark registered in favour of KVIC, and the defendant was indulging in passing off as well, it was contended. The infringement was discovered by KVIC in December 2021.KVIC also apprised the Court of an earlier instance of litigation between the two parties where KVIC had withdrawn a suit in 2021 after the defendant gave an undertaking in the High Court that they would not sell any ‘KHADI’ product without a certificate from KVIC. The continued infringement of the mark was not only dishonest but also a breach of the undertaking given to the Court, KVIC pleaded..The defendant meanwhile argued that KVIC claims were on the basis of the elaborate certificates of registration for trademark, label mark and device mark but it was all of no consequence. It placed on record material in the form of annual reports to show that it was the prior user of the word ‘KHADI’ since they used it from the year 1946..Single-judge Justice Manish Pitale noted that the defendant had approached KVIC for certificate to sell ‘KHADI’ produces. However, KVIC began receiving complaints that the cloth being sold by the defendant did not contain khadi material.This led to withdrawal of the certificate to the defendant.Despite the withdrawal, when the defendant continued selling products under the name and trademark, KVIC had been compelled to file the earlier suit. The undertaking given by the defendant in that suit, however, stated that it was not selling any product called, labelled or described as ‘KHADI’ and it agreed not to sell any ‘KHADI’ product without a certificate from KVIC.The Court also noted that KVIC held registration for its wordmark KHADI, label mark and device mark, for a plethora of classes and not limited to cloth or textile products..The Court concluded that the marks being used by the defendant, contained the word ‘KHADI’ and depiction of ‘Charkha’, which was similar to registered trademarks of KVIC.“On the face of it, the defendant cannot dispute that the prominent, essential, fundamental and substantial features of the registered trademarks of KVIC are copied in the impugned marks of the defendant. This would ordinarily satisfy the requirement of demonstrating a prima facie case as regards infringement and passing-off,” the judge opined. .The judge also said that unless the defendant is restrained from further indulging in such conduct, KVIC will suffer grave and irreparable loss.“Prima facie, the plaintiff has made out a strong case in its favour for protection of its proprietary rights as regards the registered trademark and the defendant cannot avoid interim injunction by relying upon Section 34 of the Trademarks Act,” the Court said and proceeded to grant relief to KVIC..The request for stay on the order by the defendant was also rejected by the court on the ground that the defendant's conduct was dishonest..Senior Advocate Dr Birendra Saraf with advocates Shwetasree Majumdar, Shreya Ganguly, Jay Sanklecha and Bimal Rajasekhar appeared for KVIC.Senior Advocate Venkatesh Dhond with advocates Rashmin Khandekar, Karishni Khanna, Atmaram Patade, Mohini Thorat and Suraj Naik appeared for the defendant. [Read Order]