Khadi & Village Industries Commission vs. Ms. Aparna Mallick And Anr.

Facts

The Khadi & Village Industries Commission (Plaintiff), a statutory body, filed a suit seeking permanent injunction against Ms. Aparna Mallick (Defendant No. 1) and GoDaddy.com LLC (Defendant No. 2). The Plaintiff is the registered proprietor of the wordmark ‘KHADI’ and associated devices, adopted in 1956, and declared a 'well-known mark'. The Plaintiff discovered Defendant No. 1's website, www.khadisaree.com, and social media accounts using impugned marks 'KHADISAREE'/'', offering clothing. The Plaintiff sent legal notices which went unanswered. An order for two products from Defendant No. 1's website revealed they were 100% polyester, misrepresenting them as 'Khadi Cotton Saree' or 'Khadi Saree'. The Plaintiff's suit was filed on May 30, 2024, seeking to restrain infringing activities.

Held

The Court held that Defendant No. 1's use of the mark 'KHADISAREE' and the domain name www.khadisaree.com amounted to infringement of the Plaintiff's registered 'KHADI' trademarks. The Court found that the Plaintiff had established prior user rights, multiple trademark registrations, and that its mark 'KHADI' had been declared a 'well-known mark'. The Court also held that Defendant No. 1's actions constituted passing off, as the deceptive similarity of the marks and domain name, combined with the misrepresentation of the product material (100% polyester being sold as Khadi cotton), was designed to mislead consumers. The Court noted that Defendant No. 1 failed to appear and contest the suit, indicating no defence on merits. Consequently, a decree of permanent injunction was passed against Defendant No. 1, restraining them from using the impugned marks and domain name. Defendant No. 2 was directed to transfer the domain name to the Plaintiff. Defendant No. 1 was also directed to cancel specific email addresses. The Court awarded damages and costs of INR 5,00,000/- to the Plaintiff against Defendant No. 1.

Key Issues

1. Whether Defendant No. 1's use of the mark 'KHADISAREE' and the domain name www.khadisaree.com amounts to infringement of the Plaintiff's registered 'KHADI' trademarks, considering the Plaintiff's prior adoption, registration, and declaration as a 'well-known mark' under the Trademarks Act, 1999? 2. Whether Defendant No. 1's actions constitute passing off, given the deceptive similarity of the marks and domain name, and the misrepresentation of product material, thereby misleading consumers into believing the goods are associated with the Plaintiff's established reputation and goodwill? Plaintiff's arguments: The Plaintiff contended that Defendant No. 1's use of 'KHADISAREE' and the domain name is identical or deceptively similar to its well-known 'KHADI' trademarks, leading to infringement. They argued that the misrepresentation of polyester as Khadi cotton, coupled with the use of the impugned marks and domain, constitutes passing off, exploiting the Plaintiff's goodwill. The Plaintiff relied on its trademark registrations, the 'well-known mark' declaration, and the Khadi and Village Industries Commission Act, 1956, defining 'Khadi'. Revenue/State's arguments: Not recorded in the judgment.