Trade Mark : CHEMCO" and "CHEMCO PLAST" comparable periods of concurrent use and dispute regarding prior use

Bombay High Court Partially Grants Relief in Chemco Trademark Dispute Chemco Plastic Industries Pvt Ltd Secures Interim Injunction Against M/s Chemco Plast for Trademark Infringement but Faces Setback on Passing Off Claims

In a significant ruling, the Bombay High Court has delivered a nuanced judgment in the trademark infringement case between Chemco Plastic Industries Pvt Ltd and M/s Chemco Plast. The dispute centered on the alleged infringement of the "CHEMCO" trademark by M/s Chemco Plast. The court, presided over by Justice N.J. Jamadar, partially allowed the interim application filed by Chemco Plastic Industries Pvt Ltd, granting an injunction against M/s Chemco Plast from using the "CHEMCO" and "CHEMCO PLAST" as a trademark in relation to goods and services. However, the court did not extend this restraint to the use of "CHEMCO" as a trade or business name and domain name.

The plaintiff, Chemco Plastic Industries Pvt Ltd, claimed that they have been using the "CHEMCO" mark since 1973 and alleged that M/s Chemco Plast's use of the similar mark constituted trademark infringement and passing off. Chemco Plastic Industries sought interim relief to restrain the defendant from using the disputed marks.

Justice Jamadar noted that both parties claimed prior use of the "CHEMCO" mark through their respective predecessors-in-title, leading to a complex factual dispute. The court found that Chemco Plastic Industries had established a prima facie case of trademark infringement under Sections 29(1) and (2) of the Trade Marks Act, 1999, but not under Section 29(5) regarding the use of "CHEMCO" as a trade name.

The court emphasized the importance of balance of convenience, especially in cases involving comparable periods of concurrent use and serious factual disputes regarding prior use. Justice Jamadar highlighted that the defendant had been using "CHEMCO" since 1999, and there was no clear evidence of dishonest use. The court also pointed out that the plaintiff had failed to establish a strong case for passing off, as there was insufficient evidence of the plaintiff's goodwill and reputation at the time of the defendant's alleged misconduct.

The judgment underscores the complexities involved in trademark disputes where both parties claim concurrent use and prior rights. The ruling reflects a careful consideration of the evidence presented by both sides, highlighting the challenges in resolving such disputes without a full trial.

Bottom Line:

Intellectual Property Law - Interim injunction in trademark infringement and passing off cases - Balance of convenience and equity play a significant role, especially where both parties have comparable periods of concurrent use and serious factual disputes regarding prior use.

Statutory provisions: Sections 29(1), 29(2), 29(4), 29(5), 34, 35 of the Trade Marks Act, 1999

Chemco Plastic Industries Pvt Ltd. v. M/s Chemco Plast, (Bombay) : Law Finder Doc Id # 2817237