Perfetti Van Melle S.P.A. & Anr. vs. Suresh Nanik

Introduction

This case revolves around the alleged infringement of the plaintiffs' trademark "CHUPA CHUPS" by the defendants, who marketed their products under the mark "HARNIK CHUPA CHUP." The legal dispute primarily concerns trademark infringement, passing off, and the interplay between pending rectification proceedings and the rights to seek relief in a civil court under the Trade Marks Act, 1999.

Background

The plaintiffs, Perfetti Van Melle S.P.A., are globally recognized manufacturers of confectionery products and owners of the registered trademark "CHUPA CHUPS." The defendants used the mark "HARNIK CHUPA CHUP" for similar products. The plaintiffs claimed this use was deceptive and likely to cause confusion among consumers, constituting trademark infringement and passing off.

Brief Facts of the Case

1. The plaintiffs filed a suit seeking a permanent injunction against the defendants from using the mark "HARNIK CHUPA CHUP."

2. The defendants argued their mark was registered and invoked Sections 28(3), 30(2)(e), and 124 of the Trade Marks Act, asserting the suit was not maintainable.

3. The plaintiffs had already filed a rectification petition in 2011, prior to instituting the present suit in 2017, seeking cancellation of the defendants' trademark registration.

Issues Involved

1. Primary Issue: Whether the suit for trademark infringement could proceed while rectification proceedings were pending.

2. Secondary Issue: Whether the relief for passing off could continue independently despite the stay on infringement claims.

Submissions of the Parties

Plaintiffs

Argued that under Section 124 of the Trade Marks Act, the court must frame an issue regarding the invalidity of the defendants' mark before staying the infringement proceedings.

Relied on the Supreme Court's decision in Patel Field Marshal Agencies v. P.M. Diesels Ltd., which mandates the court to assess the prima facie tenability of the rectification claim.

Defendants

Contended that since the rectification petition was filed before the suit, the stay under Section 124(1)(b)(i) was automatic, without requiring the court to frame any issue.

Asserted that both infringement and passing off claims should be stayed as they are interconnected.

Reasoning and Analysis by the Judge

1. Stay of Infringement Proceedings:

Section 124(1)(b)(i) provides for an automatic stay when rectification proceedings are already pending at the time of instituting the suit.

The court clarified that no prima facie assessment or framing of issues is required in such cases, distinguishing it from situations where rectification proceedings are initiated post-suit.

2. Passing Off Claims:

The court held that Section 124 applies only to trademark infringement claims, not to passing off.

Referring to precedents like Puma Stationer P. Ltd. v. Hindustan Pencils Ltd., the court emphasized that passing off claims can proceed independently.

3. Applicability of Precedents:

The court rejected the plaintiffs' reliance on Patel Field Marshal Agencies and Abbott Healthcare Pvt. Ltd. v. Raj Kumar Prasad, noting that these cases addressed different factual scenarios.

Decision

1. The court stayed the suit concerning the infringement of the plaintiffs' trademark under Section 124(1)(b)(i).

2. The passing off claim was allowed to proceed independently, as it fell outside the scope of Section 124.

Conclusion

The judgment underscores the distinct procedural pathways for trademark infringement and passing off claims under Indian law. It reaffirms the automatic stay provision under Section 124(1)(b)(i) when rectification proceedings are pending, while preserving the independent nature of passing off claims. This case is a vital reference for understanding the procedural nuances in trademark litigation.

Case Title: Perfetti Van Melle S.P.A. & Anr. vs. Suresh Nanik

Case Number: CS(COMM) 363/2017

Neutral Citation: 2022:DHC:3414

Date of Decision: September 1, 2022

Court: High Court of Delhi, New Delhi

Judge: Hon’ble Mr. Justice Navin Chawla

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] 

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

 Phone: 9990389539

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