Calcutta High Court
IP-COM/44/2024 on 24 December, 2024
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
IN THE HIGH COURT AT CALCUTTA
INTELLECTUAL PROPERTY RIGHTS DIVISION
ORIGINAL SIDE
IA NO. GA-COM/1/2024
In IP-COM/44/2024
MOONDUST PAPER PVT LTD
BEFORE:
The Hon'ble JUSTICE RAVI KRISHAN KAPUR
Date : 24th December, 2024.
Appearance:
Mr. Sayantan Basu, Senior Advocate
Mr. Tanmoy Roy, Advocate
Mr. Bhavesh Gaodia, Advocate
Mr. Abhishek Chakrabirty, Advocate
Ms. Aheriya Roy, Advocate
Advocates for the plaintiff/petitioner
The Court: This is an action for infringement of trademark, copyright
and passing off. The matter is at an ad interim stage.
The petitioner is a company incorporated under the provisions of the
Companies Act, 2013 and is engaged in the manufacture, trade, import and
export of smoker's articles like cigarette paper booklet, card board filter tips
etc. The petitioner has been carrying on the above business under the
trademark CAPTAIN GOGO which is its house mark. It is submitted that the
petitioner through its predecessor-in-title who has substantially devised and
coined the above mark which has become synonymous with the products of
the petitioner alone. The petitioner is also the owner of the artistic work in
the mark CAPTAIN GOGO.
It is contended that the mark CAPTAIN GOGO is inherently distinctive
and has acquired immense goodwill and reputation amongst the public. The
goods of the petitioner are also being exported to various countries abroad.
It is further submitted that the petitioner is the exclusive owner of the mark
CAPTAIN GOGO and in order to protect its intellectual property rights has
been granted registration thereof both in respect of the word and the label
marks. The registrations granted in favour of the petitioner are valid and
subsisting. Accordingly, the petitioner claims protection both under inter-
alia the Trade Marks Act, 1999 and the Copyright Act, 1957.
Sometime in April 2024, the petitioner came to know that some of the
other respondents have been using the mark CAPTAIN GOGO and the mark
GO GO alongwith other marks wherein the marks “GO GO” formed their
dominant and prominent features of the products. In such circumstances,
the petitioner was compelled to file a First Information Report with the
concerned Police Authorities. Pursuant to the filing of the criminal
complaint, the Enforcement branch, Kolkata had conducted raids on shop
rooms of the respondent nos. 5 and 6 and found the infringing, spurious
and counterfeit products bearing the names CAPTAIN GOGO and GOGO
respectively. There have been other raids conducted wherein other products
in the form of GO N GO have been also seized by the Enforcement
Directorate.
In this background, the petitioner complains that the respondents
have been infringing their products and selling identical and/or deceptively
similar products as that of the petitioner with the obvious intent to infringe
and violate the intellectual property rights of the petitioner. It is further
alleged that impugned action on the part of the respondents in selling
counterfeit and infringing materials is fraudulent and deceptive in nature.
Accordingly, the petitioner has been compelled to file the instant suit
seeking recourse to the John Doe remedy.
On an examination of the products of the petitioner and the impugned
products being sold, marketed and distributed by the respondents, it would
be evident that the impugned product is a fraudulent and dishonest
imitation of the petitioner’s product and deceptively similar. There is every
possibility of confusion and deception of the public.
A perusal of the products being sold by the petitioner and the
counterfeit products being sold by the respondents would demonstrate that
there is a strong prima facie case for infringement of trademark and
copyright as well as of passing off. There is every likelihood of the public
being confused, deceived and defrauded. The impugned products being sold
by the respondents will invariably cause serious injury and damage to the
goodwill and reputation of the petitioner’s products.
In view of the strong prima facie case, balance of convenience and
irreparable injury in favour of petitioner, there shall at this stage, be an
order in terms of prayer (c) of the Notice of Motion. The petitioner is directed
to serve all the respondents and file an Affidavit of Service on the returnable
date.
Liberty is granted to the respondents to apply for variation,
modification and vacating of the above order if so advised.
Let this matter appear on the 14th of January, 2025.
(Ravi Krishan Kapur, J.)
SK.