Proprietorship over the trademark lies on the exporter/ manufacturer of the goods and not on the distributor/ importer

Calcutta High Court: In a question raised before the Court as to whether an importer/ distributor of the goods which is manufactured/ exported from some other country can claim the proprietorship over the trademark which is used by the manufacturer/ exporter of that goods, the bench of I.P. Mukerji J., refused to pass an interim order to restrain the defendant from using the said mark and directed the defendant to maintain accounts of their sale from the date of filing of this application till the suit is decreed.

In the instant case, both the plaintiff and the defendant are engaged in business relating to import of sewing machines, cutting machines etc. from China and selling them in the Indian market under the trademark “LIPU”. The Counsel for the plaintiff Pratap Chatterjee, claimed for a passing off injunction order to restrain defendant from using the same mark on the ground that they are using this mark from 1994 and the same is printed on the packaging of their goods as well as the invoices, challans, bills, etc. The Counsel for the defendant Jishnu Saha, relied on Registered Trade Marks of the Apollinaris Company Ltd, 1891 Vol 8 RPC 137 and contended that an importer cannot normally claim proprietorship over the mark of an exporter or manufacturer unless and until he proves that the mark has become inextricably connected with him in the eyes of the public.

The Court rejected the contention of the plaintiff that the machines were manufactured in China and the mark “LIPU” was imprinted on the machines on the instructions of the plaintiff. Court observed that the plaintiff’s as well as the defendant’s application for registration of the mark is still pending. The Court noted that “LIPU” is a region in China; the invoices were raised by the Chinese manufacturers; the manufacturing activity took place in China; the plaintiff as well as the defendants are only the retailers/ distributors of the goods manufactured in China. The Court concluded that this is a case of “reverse passing off” and therefore the brand “LIPU” belongs to the Chinese exporter and manufacturer and not to the plaintiff or the defendant.

The Court disposed of the application by refusing to pass an interim order to restrain the defendant from using the mark, as the proprietorship over the mark remains only with the manufacturer/ exporter of the goods. Sunny Sales v. Binod Khanna, 2014 SCC OnLine Cal 18505, decided on November 10, 2014