GOOD DAY trademark infringement: Britannia Industries bags injunction
Introduction: –
Recently Britannia Industries Ltd. filed a case of infringement against ‘good day oral care & ors.’ for violating their registered trademark ‘GOOD DAY.’
Facts: –
The plaintiff, i.e., Britannia Industries ltd., filed a case against good day oral care & Ors for infringement of their “Good Day” mark. The plaintiff seeks a permanent injunction to restrain the violation of the IP rights associated with the ‘Good day’ mark.
The plaintiff accuses the defendant of using their trademark/wordmark for toothpaste and operating a website under the name of “gooddayoralcare.com.” The plaintiff contends that they have continuously and uninterruptedly used this mark since 1986 for biscuits and cookies. They applied for registration on 3rd April 1986, which was duly granted to them over time. The defendants have wrongly adopted several other representations of their brand.
Also read: Cross Fit secures injunction over well-known mark ‘Crossfit’
To support their contention, the plaintiff also put forth the fact that their mark is a well-known mark as specified under Section 11(6)(i) and Section 11(7) of the Trade Marks Act. The well-known status of the mark makes the defendant liable under Section 29(4)(b) of the Act. The IPAB (Intellectual Property Appellate Board) had declared on 23rd December 2020 that their mark qualifies as a well-known mark within the ambit of Section 2(1)(zg) of the Trade Marks Act.
The defendant stated that their mark is generic and is used by several other people owing to which the plaintiff has no right to sue them and ask for an injunction. They further contended that this Court does not have the jurisdiction to pass any order related to the case, as the items from their site were purchased online by the plaintiffs to claim jurisdiction before this Court. The plaintiff made this attempt to show the defendants were at fault; instead, the jurisdiction lies under Chennai Court.
Visual depiction of the three variants of goods used by the defendant:
Also read: Tata Sons Pvt. Ltd succeeded in getting injunction for well-known trademark
The Decision of the Court:
After seeing the evidence and contentions of the parties, the Court decided that the plaintiff, i.e., Britannia industries, does have a well-known mark on the prima face. Therefore, they have a right to ask for an injunction. However, the defendant cannot show yet that they are not infringing the plaintiff’s registered trademark. Therefore, an ad-interim injunction is granted because it would likely be causing irreparable loss to the plaintiff if not given. The Court also directed the defendants to suspend the website naming “gooddayoralcare.com” and led them to submit the necessary documents within two weeks.
Also read: Choice Hotels International granted injunction for well-known trademark COMFORT INN
Comments
There is an infringement of the wordmark/ trademark even though the registration subsists in different classes. However, it is still a well-known mark, and no other person other than the registered owner can use it without the owner’s permission. Here, “good day” has become a popular word and has a spectacular image of its own any changes would amount to deceiving the people. The same thing happened in Kirloskar Diesel Recon pvt. Ltd.& Anr. Vs. Kirloskar Proprietary Ltd.[1] held that the name had become a household name and thus is considered a trademark[2]. In Century Traders vs. Roshan Lal Duggar & Co.[3] the prior use gives a more superior hand in terms of the use of trademark and here the Britannia Industries Ltd. Is using the trademark far earlier than good day oral care; therefore, they have every right to sue them for infringement of the mark.
[1] AIR 149, (Bom:1996)
[2] https://www.jusdicere.in/dr-reddys-laboratories-ltd-v-reddy-pharmaceuticals-ltd/#Summary_of_court_decision_and_judgment
[3] 1997 SCC Online Del 50
Authored by: Harsh Gehlot; student of D.E.S NAVLAMAL FIRODIA LAW COLLEGE, PUNE
Disclaimer: This brief is intended to provide general guidance to the subject matter. It does not contain legal advice. For any specific advice/corrections, write to [email protected]
© ZEST IP
