Are you a company who is manufacturing goods in India only for export purposes and wondering whether use of your trademark on your goods actually amounts to use in India? Read on to find the answer!
In this article I am going to briefly discuss a recent case, UFO Contemporary, Inc. vs. Creative Kids Wear (India) Pvt. Ltd. & Ors., which squarely covers your above question.
UFO Contemporary, Inc. (UFO Contemporary) a clothing company based in USA filed a suit for infringement and passing off against Creative Kids Wear (India) Pvt. Ltd. & Ors. (defendants) at Delhi High Court. The suit was filed in relation to their trade mark “UFO” (word per se) registered in India vide trade mark registration No. 388739 dated April 13, 1982 in class 25 for description of goods comprising trousers including pants and blouses and shirts for men, women and children. The said registration in the name of UFO Contemporary is valid till April 13, 2030.
UFO Contemporary adopted their trademark in 1968, has registration in various countries including India and also owns UFO as their domain name. Under a licence arrangement, the defendants were engaged and associated with manufacturers of clothing under the trademark UFO for and on behalf of UFO Contemporary in India since 1970s till 2011. In 2011, one of the defendant’s sought full ownership of the trademark UFO in India instead of licensed use, which was categorically denied by UFO Contemporary and this led to the parties falling apart in respect of the then business relationship and the license agreement was terminated. Thereafter, UFO Contemporary started getting their clothing for export, manufactured from other manufacturers until 2017.
In January, 2019 UFO Contemporary came across the trade mark of the defendant
published in the Trade Marks Journal on “proposed to be used basis” for garments falling in class 25. UFO Contemporary filed an opposition against the said application since the
used in the advertised mark was the same, the use of which was disallowed by UFO Contemporary, except by way of licence granted by UFO Contemporary. Further inquiry revealed that the defendants were even selling their clothing on various e-commerce websites like Amazon India, Tatacliq and Myntra etc. UFO Contemporary sent a notice to the defendants seeking an undertaking not to use the trade mark
. In spite of agreeing to change the logo and assuring that they have stopped using
, UFO Contemporary found that the infringing UFO branded products were still selling on the e-commerce platforms in June, 2020 and it is then that they filed the suit against the defendants.
The defendants stated in their defence that theirs is a label mark with the brand mascot “Oodle” and the letter “u, f & o” are mere acronym of their Indian brand “Under Fourteen Only”, which is used to save space for branding on its apparel. They also contended that UFO Contemporary and its goods have no presence in the Indian markets through any online platforms or offline in the form of Brick and mortar stores. Also, the products of UFO Contemporary have only been manufactured in factories in India for export purposes to various countries but not for sale in India. They further contended that they were using their mark to manufacture and sell garments for children under the age of 14 years only and same will not be detrimental to the mark of UFO Contemporary.
After hearing both the parties, the Court concluded that
is phonetically identical to UFO Contemporary’s trade mark “UFO” and coupled with the fact that the goods in question are also identical, the same constitutes infringement of UFO Contemporary trade mark “UFO”.
The Court further held that “……even if it is said that there is no commercial sale of clothes / garments of the plaintiff in India through online / offline, but the fact that the clothes / garments are being manufactured by putting trade mark UFO and exported outside India, the parameters of Section 56 are satisfied inasmuch as there is a Brand in India of the trade mark although goods to be exported from India is deemed to constitute the use of the trade mark in relation to goods. So, it is inconsequential that there is no commercial sale of goods of the plaintiff in India.”
Lastly, the Court opined that the plea of UFO Contemporary’s counsel that the adoption of the mark as an abbreviation of “under fourteen only” by the defendants is malafide, is justified. The defendant’s manufactured clothes for UFO Contemporary for almost 22 years. After termination of licence, used the mark
on their apparel, in spite categorical refusal by UFO Contemporary and gave false assurances when called upon to cease and desist from using the trade mark “UFO”. The same was clearly with an intent to encash upon the goodwill and reputation of UFO Contemporary as an international brand.
In light of the above the defendants are restrained from using the impugned trademark
or any other mark which is identical or deceptively similar to UFO Contemporary’s trade mark “UFO”. However, the defendants are allowed to use the mark UNDER FOURTEEN ONLY without UFO.
Hope the above clears all your doubts.
Author: Kanika Aeri
Dated: 22 February, 2021
The author can be contacted at email@edgewithipr.in
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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