RPG Enterprises Limited vs. Riju Ghoshal Trading as RPG

Introduction

The complainant used the “RPG” word mark since 1979 and was an Indian industrial conglomerate with over twenty enterprises involved in infrastructure, tyres, technology, and specialty. According to the Trade Marks Act of 1999, the plaintiff was the owner of the registered trade mark “RPG” in Classes 5, 9, 12, 16, and 30. (Act).

RPG Enterprises Ltd v. Riju Ghoshal, 2022 SCC OnLine Bom 626 acknowledged that the plaintiff’s “RPG” marks have grown to be recognised trademarks under Section 2(1)(zg) of the Act. The plaintiff had been utilising the RPG Enterprises Logo (Label) since 1987 and was the registered copyright owner of that logo in India. In 1988, registration for the “RPG Enterprises” label was granted. The plaintiff also owned the domain names www.rpggroup.com and www.rpg.in.

[Image Sources : Shutterstock]

The defendant was a business that dealt in the buying, selling, and leasing of real estate throughout India. The plaintiff discovered in 2017 that the defendants had adopted the “RPG” mark and were purposefully using the trade name “M/s RPG Developers” with the intent to deceive the public into believing that the defendants were affiliated with the plaintiff as an associate, joint venture, or group company.

The plaintiff sent warnings to the defendants requesting that they cease selling or offering for sale their projects under the mark “RPG” and sign an agreement promising not to infringe on the plaintiff’s trademarks in the future. Yet, the accused did not respond. Therefore, the plaintiff filed the present suit to restrain the defendants from carrying on their infringing activities.

Contentions of Plaintiff

1. According to the claimant, they adopted the distinctive trademark RPG, which is an abbreviation for the company’s founder and well-known industrialist Mr. Rama Prasad Goenka.
2. To distinguish their diverse goods and services over the years, RPG and the firms in its group have adopted a number of stylized/descriptive trademarks including the mark RPG. They have obtained copyright registration for the creative work in their RPG Logo as well as registration for a number of RPG/RPG formative marks in numerous classes.
3. They have domain names, use the RPG trademark, and participate on well-known social media platforms like Facebook, YouTube, Twitter, and LinkedIn.The RPG/RPG marks have acquired distinctiveness owing to the continuous, extensive, and uninterrupted use and promotion of the said trademarks in India and abroad.
4. They learned about the trademark application in Class 35 made by “Riju Ghoshal trading as RPG Opticals” in October 2017. The application was contested, and the legal action is still continuing. After that, they discovered that “Poulami Ghoshal dealing as RPG Pharmacy,” who is the 2nd Defendant against their mark, is the owner of a trademark registration in Class 44 for which a rectification is pending.
5. Further research revealed that the defendants are a married couple who run “RPG Pharmacy” and “RPG Opticals” together. Also, they have registered the domain names www.rpgpharmacy.com and www.rpgopticals.com, both of which contain the RPG trademark. ‘RPG Opticals’ and ‘RPG Pharmacy’ are deceptively similar to the prior registered and used RPG Marks. The distinctive element in the Defendants’ marks, namely- ‘RPG Opticals’/’Perfect Look. Perfect Vision’ and ‘RPG Pharmacy’/’Your health is our world’ are RPG, and the other elements are descriptive of the concerned services covered thereunder and non-distinctive.
6. Defendants’ services of optical products rendered under the mark/name ‘RPG Opticals’ and pharmacy and dispensary services rendered under the mark/name ‘RPG Pharmacy’ are cognate and related to the goods and services in respect of which the Plaintiff uses the prior adopted, registered and famous RPG Marks.

Contentions of defendant

1. The RPG Opticals and RPG Pharmacy sole proprietors, Riju and Poulami Ghosal, are the defendants. Their business is only conducted in Kolkata.
2. Their marks distinguish themselves from the Plaintiff’s mark/name by using the terms “Opticals” and “Pharmacy” as well as the slogans “Perfect Look Perfect Vision” and “Your Health is our World,” respectively.
3. In contrast to the Plaintiff, who produces items using the RPG marks, they are using the names “RPG Opticals” for advertising, wholesale and retail of optical lenses, and “RPG Pharmacy” for pharmacy and dispensary services. There is no shared field of endeavour as a result.Adoption of the mark/name ‘RPG Opticals’ and ‘RPG Pharmacy’ is honest as RPG comes from the first letter of Riju and Poulami and first letter of the surname Ghoshal. They are using the marks’ RPG Opticals’ and ‘RPG Pharmacy’ only as a trading name and not selling goods under the mark RPG.
4. The domain names www.rpgpharmacy.com and www.rpgopticals.com are only used to provide information concerning their establishments, and they do not provide any service through such domain names. Thus, no infringement is made out.

Findings

The only provision in the Act that addresses situations involving the infringement of a trade mark in the form of a trade name is section 29(5). Reading Section 29(5) indicates that two requirements must be met in order to prove infringement under that section. First, the individual must be using a registered trademark as his or her business name, and second, the individual must be engaged in business with respect to products or services for which the trademark has been registered. To demonstrate infringement, both of the elements must be met due to the use of the conjunctive ‘and’ in the provision. The defendants in the current case argued that they did not deal in the same goods or services for which the plaintiff had registered the trademark, disobeying the second criteria of the provision. The Hon’ble Court agreed with this argument and determined that as the defendants are engaged in the business of providing different goods and services, there has been no trademark infringement by their use of the registered trade mark as their business name.

Conclusion

As a result, the Court made it abundantly plain that in order to show infringement under Section 29(4), the mark only needed to have a reputation in India rather than be well-known as per Section 2(1)(zg). Although courts have frequently utilised the terms “well-known” and “mark with a reputation” synonymously to show infringement under Section 29(4) of the Act, the distinction noted by the Hon’ble Court deserves to be commended. It is crucial to realise that Section 29(4) is an exception to the general provisions of the Act and that it only applies to trademarks with a reputation in India.

Author: Tanya Saraswat, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or   IP & Legal Filing.

References

• Editor _4, Delhi High Court grants permanent injunction to RPG Enterprises Ltd. for its mark ‘RPG’ in a trade mark infringement suit; awards rs. 3 Lakhs as damages SCC Blog (2023), https://www.scconline.com/blog/post/2022/12/29/delhi-high-court-grants-permanent-injunction-to-rpg-enterprises-ltd-for-its-mark-rpg-in-a-trade-mark-infringement-suit-awards-rs-3-lakhs-as-damages/ (last visited Feb 28, 2023).
• SpicyIP, RPG Enterprises v. Riju Ghoshal: Bombay High Court looks at sections 29(4) and 29(5) of trade marks act SpicyIP (2022), https://spicyip.com/2022/04/rpg-enterprises-v-riju-ghoshal-bombay-high-court-looks-at-sections-294-and-295-of-the-trade-marks-act.html (last visited Feb 28, 2023).