The legal battle between Poomex Clothing Company, a long-time user and registered proprietor of the trademark ‘Poomex’ for inner garments since 2003, and S. Thirumurugan before the Madras High Court revolves around allegations of trademark infringement, passing off, and damages. The plaintiff asserts that the defendant’s use of the trademark ‘Poomak’ closely resembles ‘Poomex,’ thereby causing confusion in the market and violating their intellectual property rights. This note discusses the contentions raised by the parties and the judgement passed by the Court (C.S. (Comm. Div.) No. 137 of 2022)

Plaintiff’s Claims

Poomex Clothing Company, having registered its trademark under Classes 24 and 25, relied on its extensive sales turnover, amounting to several crores, and substantial advertising expenditure promoting the ‘Poomex’ brand. They became aware that the defendant was marketing undergarments under the name ‘Poomak,’ which they contend bore a striking resemblance to ‘Poomex.’

In March 2022, the plaintiff issued a cease and desist notice to the defendant, demanding that they discontinue using ‘Poomak.’ Despite receiving a response, the defendant continued to market products under the disputed trademark. This led the plaintiff to file a suit seeking relief for trademark infringement, passing off, and damages.

Defendant’s Defence

The defendant, in their written statement, put forth the following arguments:

  1. The suit should be dismissed on the ground of lack of jurisdiction, claiming that no part of the cause of action arose within the Court’s territorial limits.
  2. The trademarks ‘Poomak’ and ‘Poomex’ were not deceptively similar, particularly from a phonetic standpoint.
  3. The existence of another brand, ‘Poomer,’ in the market invalidated the plaintiff’s claim to exclusive rights over ‘Poomex.’

Issues Framed by the Court

  1. Whether the Court had territorial jurisdiction to hear the case?
  2. Whether the plaintiff was the registered proprietor of the ‘Poomex’ trademark under Class 25?
  3. Whether the plaintiff was entitled to statutory and common law rights over the ‘Poomex’ trademark?
  4. Whether the trademarks ‘Poomex’ and ‘Poomak’ were deceptively similar?
  5. Whether the plaintiff was entitled to relief, including damages?

The Plaintiff examined its sales Manager to prove their case, whereas the defendant did not adduce any oral evidence.

Court’s Analysis and Findings

Territorial Challenge- The Court first addressed the jurisdictional issue and ruled in favour of the plaintiff. The defendant's territorial challenge lacked merit because the plaintiff operates in Chennai and the defendant's products were sold within the Court's jurisdiction.

Similarity of marks- On the question of similarity of marks, the Court noted that both marks dealt with undergarments and carried phonetic resemblance. Documentary evidence submitted by the plaintiff confirmed that they had previously opposed the defendant’s trademark application for ‘Poomak,’ which had been abandoned for non-prosecution.

Third party use of Similar mark- Regarding the ‘Poomer’ trademark cited by the defendant, the Court accepted the plaintiff’s argument that ‘Poomer’ was used by a family member with their consent under a family arrangement. As a result, the defendant’s argument that ‘Poomex’ lacked exclusivity was dismissed.

Deceptive Similarity-The Court further held that ‘Poomex’ was an arbitrary and distinctive mark, granting the plaintiff absolute and unconditional protection. Since the defendant’s use of ‘Poomak’ was found to be phonetically similar and deceptive, it amounted to infringement and passing off.

Judgment

Based on the pleadings, oral testimony, and documentary evidence, the Court ruled in favour of the plaintiff, concluding that the defendant had infringed upon the ‘Poomex’ trademark and engaged in passing off. However, as the plaintiff failed to provide sufficient evidence for their claim of damages, the Court did not award any compensation beyond costs. The Court ordered the defendant to pay Rs.1,00,000/- (approx. US$ 1150) as costs to the plaintiff.

Comment

The Court’s rejection of damages due to lack of evidence (oral and documentary) illustrates the necessity of providing sufficient evidence to support claims for damages in the legal proceedings.