Trademark Infringement Case Analysis: RPG vs. Riju Ghoshal Trading 

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Introduction

Many words can be used as synonyms for a trade mark such as hallmark, brand mark, etc.  It is realistic to consider that a trademark is usually registered to determine a product or supplier through their logo, mark, or any other symbol used for identification. A trademark is considered a mark or impression that creates an image about a company or organisation.  Let us understand this with an example: many automobile industries manufacture cars and people easily identify the car by looking at the logo of the brand. But sometimes there is an infringement of the trademark and it is becoming the most serious offence like pickpocketing.  Small business owners try to use the goodwill of the established company to gain name, fame, and money without putting in any kind of hard work or effort and make the same or similar products instead of creating their goodwill. That’s why I have taken a case of trademark infringement here, through which trademark infringement can be understood better.

RPG Enterprises Limited vs. Riju Ghoshal Trading as RPG 21 March, 2022

Facts

The plaintiff, in this case, had used the term RPG since 1979 and was an Indian industrial group consisting of more than twenty companies concerning infrastructure, scale, technology, etc. The plaintiff was the original proprietor of the trademark ‘RPG’ registered under the Trademark Act. RPG was a well-known recognized mark u/s 2(1)(zg) of the Marks Act. This venture used this logo for a long time and obtained registration for RPG in 1988, after which the trademark was granted.

The defendants were proprietors of a business and were carrying on their business of buying and selling immovable property in India.  Plaintiff had found that Defendant had used the mark in the name of M/s. RPG. The plaintiff sent notice to the defendant and warned him not to use the trademark (RPG) for selling or offering the property and also executed an agreement that the defendant would not use the trademark in the future.

But the defendant did not respond, because of which the plaintiff has filed this suit for infringement of the trademark.

Issue

Is there infringement of the trademark of the plaintiff under the Section 29(4) and the Section 29(5) of the act by the defendant?

Plaintiff Contentions

  • According to Plaintiff, the Company has used a distinctive logo specific to its Company as it is an abbreviation of the Company’s founder Shri Ram Prasad Goenka.
  • To differentiate its merchandise over the years, the company has used several trademarks for its merchandise, including RPG.  Also, the company has received copyright registration for their unique work in their RPG logo.
  • The name is used on many social media platforms like Facebook, Instagram, and Twitter for promoting the company’s products.
  • Further, the plaintiff found that there was another defendant (Poulami Ghoshal) who used the company mark as RPG Pharmacy, and filed an application under section 44 for rectification which is still pending.
  • The Company after an investigation found that the defendants are a married couple running two business firms by the name of RPG Pharmacy and RPG Opticals.

Defendant contentions

  • The respondent argued that RPG Opticals and RPG Pharmacy are sole owners and their business is run only in Kolkata.
  • The defendant said that they have used particular marks such as “Opticals” and “Pharmacy” which are distinct from the plaintiff’s trademark and also used various slogans to promote their products.
  • The Respondent expressed that no infringement has been committed by them as the domain names www.rpgpharmacy.com and www.rpgopticals.com are taken up only to deliver information to the public, no service is provided by using such domain names.

Judgment

Justice S.J.  Kathawalla has submitted the judgment, where the court has read down Section 29(5) which requires two points to be proved for infringement of trademark under this section.

  •  A person must use a registered trademark for his business.
  • A person must be engaged in business in respect of the same product or service for a trademark that is already registered.

The court held that both conditions must be met to determine trademark infringement.  So in our present case, the defendant argued that they have not dealt with the same product or service for which the plaintiff has registered the trademark.  Further, the respondent argued that the second condition was not satisfied.  The Hon’ble Court was satisfied with the arguments of the respondent and held that the respondent was involved in offering a wide variety of goods and services to the public, hence there was no contravention under Section 29(5) of the Act. Further, the court has focused on the essential content of Section 29(4) of the Trademark Act.  The Court held that for infringement under Section 29(5), the product must have a reputation in India.  The Court has mentioned the two words famous and reputation.

Both of them have to show that there has been a contravention under section 29(4).  The Court observed that Section 29(4) is to be treated as an exception to the general provisions of the Act.  This is applicable only to those products which have a reputation in India.  Hence none has been made out by the respondent in our present case.

By:

Shikha Mishra

BBA LLB(4thyear)

Banasthali University