Bombay High Court Injunction Shields TRACKON Courier Brand From Deceptively Similar “TRACK-ON” Mark
Bombay High Court Injunction Shields TRACKON Courier Brand From Deceptively Similar “TRACK-ON” Mark
Introduction
The Bombay High Court has granted interim protection to Trackon Couriers (P) Ltd., restraining a former business associate from using the mark “TRACK-ON” and allied names, after finding the impugned mark to be virtually identical and deceptively similar to the registered trademark “TRACKON”. The Court held that unauthorised use of a dominant and essential part of a registered composite mark amounts to infringement under Section 29(9) of the Trade Marks Act, 1999.
Factual Background
Trackon Couriers (P) Ltd., the plaintiff, has been engaged in courier services, international shipping, e-commerce logistics and supply chain management since 2002. In connection with its services, it coined and adopted the mark “TRACKON” and secured multiple registrations of composite label marks in Class 39, all of which are valid and subsisting.
In 2016, the defendant was appointed as a business associate of the plaintiff for promoting its courier services in Andhra Pradesh and Telangana. During the subsistence of this arrangement, the defendant carried on business using names incorporating the word “TRACKON”.
In October 2023, the plaintiff called upon the defendant to discontinue the use of “TRACKON” and to change its business name. Correspondence exchanged between October and November 2023 showed that the defendant agreed to comply. However, in 2024, the plaintiff discovered that the defendant had applied for registration of the mark “TRACK-ON EXPRESS” on a proposed-to-be-used basis and had also constituted a new partnership firm under the name “TRACK-ON EXPRESS LOGISTICS”.
Following this discovery, the plaintiff issued a cease-and-desist notice and terminated the business association, alleging dishonest adoption of a deceptively similar mark.
Procedural Background
The plaintiff instituted a Commercial IP Suit under the Trade Marks Act, 1999, along with an Interim Application seeking restraint against the defendant’s use of the impugned mark. The matter came up before a Single Judge Bench of Justice Arif S. Doctor of the Bombay High Court.
Issues
1. Whether the impugned mark “TRACK-ON” is deceptively similar to the plaintiff’s registered trademark “TRACKON”.
2. Whether unauthorised use of “TRACKON”, being the dominant and essential part of the registered composite mark, amounts to infringement under Section 29(9) of the Trade Marks Act.
3. Whether the defendant’s adoption of the impugned mark was honest and bona fide.
Contentions of the Parties
The plaintiff contended that “TRACKON” is the dominant, essential and leading feature of its registered marks and has acquired substantial goodwill through long, continuous and extensive use since 2002. It argued that the defendant’s use of “TRACK-ON” for identical services was dishonest, intended to ride on the plaintiff’s reputation, and squarely amounted to trademark infringement.
The defendant raised objections including alleged suppression of facts and lack of jurisdiction. However, it did not seriously dispute the similarity of the marks or the identity of services and abandoned its plea of prior use during the course of arguments.
Reasoning and Analysis
The Court emphasised that the plaintiff is the registered proprietor of the TRACKON marks and that all registrations are valid and subsisting. It observed that where a word constitutes a prominent and essential part of a registered composite or label mark, unauthorised use of that word would amount to infringement under Section 29(9) of the Trade Marks Act.
In comparison, the Court found that “TRACK-ON” is virtually identical and deceptively similar to “TRACKON” and that the defendant was offering the very same services as the plaintiff. It noted that the defendant had not disputed the plaintiff’s goodwill or the similarity of marks and services.
The Court further held that the defendant’s adoption was dishonest and lacking in bona fides. This was evident from the fact that the defendant had earlier agreed to stop using “TRACKON”, yet later applied for registration of “TRACK-ON EXPRESS” on a proposed-to-be-used basis. The Court also rejected the plea of suppression, holding that the correspondence clearly showed the defendant was only a permissive user as a business associate.
Jurisdictional objections were also rejected, with the Court noting that leave under Clause XII of the Letters Patent had already been granted and such objections could only be decided at trial.
Decision
The Bombay High Court held that the plaintiff had clearly established a strong prima facie case for interim relief, both in law and equity. Accordingly, the Court restrained the defendant from using the impugned mark “TRACK-ON” or any other mark deceptively similar to “TRACKON” in relation to courier, logistics or allied services.
In this case the plaintiff was represented by Mr. Venkatesh Dhond, Sr. Adv. a/w Mr. Anand Mohan, Mr. Alhan Kayser, Ms. Varsha Vasave, i/b Mr. Avesh Kayser, Advocates. Meanwhile the defendant was represented by Mr. Veerendra Tulzapurkar, Sr. Adv. a/w Mr. Ankit Tiwari, i/b Mr. Shashipal Shankar, Advocates.
