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October 13, 2020

Madras High Court Injuncts Use Of O2 Trademark

Author: Sneha Tandon

In Shyam Investments and Ors. Vs. Masti Health and Beauty Pvt. Ltd. [C.S. No. 345 of 2011], the Madras High Court vide its order dated September 11, 2020, granted a permanent injunction restraining the Defendant from infringing Plaintiffs’ registered trademarks and tradename O2 ; from passing off its business under the name  O2 SPA AND SALON as that of Plaintiff’s; and for damages of Rs. 1,00,000 and costs.

It was claimed that Plaintiff 1 had been carrying on business in the field of gymnastics, aerobics, fitness centers and other related fields under the trade name O2 since 2001 and had registrations for the O2 Logo marks. It was asserted that Plaintiff 1 had issued various notices to the Defendant before instituting the instant suit in 2011 wherein the single judge vide interim injunction (order dated 10.07.2012) restrained the Defendant from infringing the trademark of Plaintiff 1. It was also placed on record that by virtue of assignment deed dated 27.02.2017, Plaintiff 1 assigned its aforesaid trademarks to Plaintiff 2 who was part of the same group of companies as Plaintiff 1. Accordingly, Plaintiff 2 was impleaded in the suit by court order dated 02.02.2018.

The Defendant argued inter alia, that the relief sought in the plaint was with respect to Trade mark No. 1574694 which had been registered for classes 28, 42 and 5 which does not cover Spas and Salons and that Trade mark No. 1903167 in the name of Plaintiff 2 was not the subject matter of the suit and therefore there is no infringement.

The court while ordering in favour of the Plaintiffs held that “However, in the order permitting the second Plaintiff to be joined as a party to the lis, it had been noted that the second Plaintiff has a registration O2 for Spas and Salons and thereafter the application was allowed. When the Defendant themselves have not filed any additional written statement, questioning this fact, it will not lie in their mouth to assert that the Plaintiffs’ cannot lay their suit on those registration certificates… In this case, it was very essential for the Defendant to have filed an additional written statement…There can be no doubt the Trade mark O2 can be pronounced in only one way. Both the marks of the Plaintiffs and the Defendant are phonetically exactly the same.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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