RPG Enterprises Ltd. v. RPG Developers (P) Ltd.

RPG Enterprises Ltd. v. RPG Developers (P) Ltd.

SCC Online Del 4623

Decided on 21-12-2022

Facts of the Case

An Indian industrial conglomerate comprising of over twenty companies in infrastructure, tyres, technology, and specialty, has been using the 'RPG' word mark since 1979. The company owns the registered trade mark 'RPG' in Classes 5, 9, 12, 16 and 30 of the Trade Marks Act, 1999 (Act). The 'RPG' mark is well-known and has acquired the status of a well-known trademark within the meaning of Section 2(1)(zg) of the Act, as recognized in RPG Enterprises Limited v. Riju Ghoshal, 2022 SCC OnLine Bom 626. The company is also the registered copyright owner of the 'RPG Enterprises' Logo (Label) in India and has been using it since 1987. The 'RPG Enterprises' label was granted registration in 1988. The company also owns the domain names www.rpggroup.com and www.rpg.in.

Another company, which was engaged in selling and renting properties in various parts of India, was found to have adopted the 'RPG' mark in 2017. They were deliberately using the trade name 'M/s RPG Developers' with the intention of misleading the public and making them believe that they were associated with the plaintiff as an associate/joint venture/group company. The plaintiff issued notices to the defendants, calling upon them to stop selling/offering for sale their projects under the mark 'RPG' and to take an undertaking that they would not infringe the plaintiff's marks in the future. However, no reply was received from the defendants. Therefore, the plaintiff filed the present suit to restrain the defendants from carrying on their infringing activities.

Plaintiff Argument:

The plaintiff is an Indian industrial conglomerate that comprises over twenty companies, involved in infrastructure, technology, specialty, and tyres. They have been using the word mark 'RPG' since 1979, and they are the proprietor of the registered trademark 'RPG' in Classes 5, 9, 12, 16, and 30 of the Trade Marks Act, 1999 (Act). The plaintiff's 'RPG' marks have acquired the status of well-known trade marks, as recognized in RPG Enterprises Limited v. Riju Ghoshal, 2022 SCC OnLine Bom 626. They are also the registered copyright owner of the 'RPG Enterprises' Logo (Label) in India and have been using it since 1987. The 'RPG Enterprises' label was granted registration in 1988. Additionally, the plaintiff owns the domain names www.rpggroup.com and www.rpg.in.

Defendant Argument

In a legal case, the accused party was a company that was involved in the business of selling and renting properties in different regions of India. In the year 2017, the plaintiff discovered that the defendants were making use of the 'RPG' trademark and were intentionally using the trade name 'M/s RPG Developers' to deceive the public and create a false impression that the defendants were linked to the plaintiff as an associate, joint venture, or group company.

Court Decision

In the case of RPG Enterprises Ltd. v. RPG Developers (P) Ltd., the Court granted an ex parte ad interim injunction in favour of the plaintiff. The defendants were restrained from using the ‘RPG’ mark as it was found to be an attempt to ride on the goodwill and reputation of the plaintiff’s well-known trademarks. The defendants prominently used the mark ‘RPG’ on their website www.rpgdevelopers.in. The Court held that this was a case for granting relief of permanent injunction. Therefore, the defendants were restrained from offering or rendering any services using the impugned trade mark ‘RPG’ and/or ‘RPG Developers’ and/or artistic work, which was a colourable imitation of the plaintiff’s artistic work, or any other trade mark/artistic work deceptively similar to the ‘RPG’ marks of the plaintiff. The Court, after considering the dishonest conduct of the defendants, awarded Rs. 3 lakhs as damages to the plaintiff. The defendants were to pay this amount within eight weeks; failing which, the plaintiff was permitted to commence execution proceedings against the defendants.

Court Analysis

The recent decision in RPG Enterprises Ltd. v. RPG Developers (P) Ltd. is a significant victory for RPG Enterprises in protecting its well-known trademarks and intellectual property rights. The court recognized the extensive use and registration of the 'RPG' mark by RPG Enterprises since 1979, along with its well-known status. The deliberate adoption of the same mark by RPG Developers with the intent to mislead the public was considered an infringement on RPG Enterprises' goodwill and reputation. The court has granted an ex parte ad interim injunction restraining RPG Developers from using the 'RPG' mark or any deceptive imitation of RPG Enterprises' trademarks. Additionally, the defendants have been ordered to pay Rs. 3 lakhs in damages. This decision sets a precedent for the protection of well-known trademarks in India and emphasizes the importance of respecting intellectual property rights.