1. Khaitan India Limited v.

Khaitar Industries Private Limited, 2021 SCC OnLine Cal 468

Para 12 . In view of the discussions in Paragraph 4 and 5 herein, it cannot be said that the
cause of action of the instant suit is based solely on infringement of a registered trade mark.
The plaintiff has pleaded and sought release with regard to passing off. The plaint has
disclosed cause of action for the passing off. The plaintiff has claimed prior
user of the mark also. Therefore, the instant suit cannot be said to be maintainable. For 4th
issue for pationer

2. Dhariwal Industries Ltd. v. M.S.S. Food Products, (2005) 3 SCC 63 pationer

3. Milmet Oftho Industries v. Allergan Inc., (2004) 12 SCC 624. For 2nd issue for
respondent

4. Asian Paints Limited v. Oriental Oil & Paint Co, 2013 SCC OnLine Bom 2275
in this case respondent infringing the rights of petitioner for issue 3th

 I have gone through the averments made in the plaint and the documents
annexed to the affidavit of evidence and list of documents of the Plaintiff and also
heard the Learned Advocate for the Plaintiff. The document at Sr. No. 2 shows that
the Plaintiffs were formerly known as Asian Paints (India) Limited and now they are
known as Asian Paints Limited. The document at Sr. No. 4 shows that they are the
registered proprietor of the original artistic work of UTSAV. Further the documents at
Sr. No. 5 show that the Plaintiff is the registered
proprietor of the trade mark “GATTU” and “UTSAV” since 27th November 1963 and
26th August 1992 respectively. Further the said copyright and trademark
registrations are valid and subsisting. The documents annexed at Sr. No. 6 reveals
the Plaintiffs yearwise sales turnover and advertisement expenses incurred on its
UTSAV branded - distemper and the documents annexed at Sr. No. 7 show the
use of the Plaintiffs mark and the publicity undertaken of its UTSAV distemper.
Further the documents at Sr. No. 8 is a list of oppositions filed against third parties
seeking registration of marks being identical/deceptively similar to that of the Plaintiff
and the documents at Sr. No. 9 are orders passed by this Hon'ble Court in
favour of the Plaintiff for its trade mark UTSAV and both the said documents go on to
reveal that the Plaintiff has been vigilant and proactive at all times to protect its Well
Known trade mark and artwork of UTSAV from being usurped by infringers.

12. In assessing the similarity of the rival marks in the present case, no oral

evidence is necessary. Comparison of the Plaintiffs mark with that of the Defendant's
impugned mark shows that the Defendant's mark JAY UTSAV is phonetically,
visually and structurally deceptively similar to the Plaintiffs
registered trade mark UTSAV. Hence the use of the impugned mark JAY UTSAV by
the Defendant constitutes infringement of the famous and
registered trade mark UTSAV of the Plaintiff. The Defendant has also used a colour
scheme, get-up, lay out, style, trade dress and artwork in relation to its poly
bags/pouches which is substantially similar to the original artistic work, colour
scheme, get-up, style and trade dress as used by the Plaintiff for its famous and well
known trade mark UTSAV. Hence, the Defendant's use of the impugned mark “JAY
UTSAV” under the pirated artwork is illegal and constitutes infringement of the
Plaintiffs registered copyright in its original artistic work of UTSAV. The Plaintiff has
also established that it has acquired reputation and goodwill in its mark sufficient to
maintain successfully an action for passing off. The use of a device of a boy holding
a brush in his hand which device being closely similar to and being a copy of the
Device of GATTU (viz. Device of a boy holding a brush in his hand) of the Plaintiff
also amount to infringement of the Plaintiffs registered trade mark GATTU.

5.