Protecting Trademarks as trading style under sec. 29(5): Insights from the Madras High Court's Cotton Mantra Case
Protecting Trademarks as trading style u/s. 29(5): Insights from the Madras High Court's Cotton Mantra Case
Daga & Daga is delighted to share a significant order dated 03/01/2025 from the Madras High Court, which highlights the critical importance of trademark protection u/s. 29(5) of the Trade Marks Act, 1999.
In a case involving the registered trademark COTTON MANTRA, the court granted an interim injunction in favour of M/s. Sadhana Fashion, effectively safeguarding their intellectual property against the defendants for trademark infringement and passing off.
This ruling reinforces the principles enshrined in Section 29(5) of the Trade Marks Act, 1999, which ensures robust protection for registered trademarks, even when used as a trading style.
Background of the Case
M/s. Sadhana Fashion, a renowned Chennai-based manufacturer of textiles and readymade garments, has been associated with the trademark COTTON MANTRA since 1999. Over decades, the brand has cultivated substantial goodwill, as demonstrated by its sales revenue running into crores and its significant investments in advertising.
The defendants, however, operated an outlet under the name KOTTON MANTRA, a deceptively similar trademark used for similar products. This not only caused confusion among consumers but also diluted the distinctiveness of the plaintiff's established brand.
Key Developments
1. Cease and Desist Notices
The plaintiff issued multiple cease and desist notices to the defendants, demanding that they discontinue using the deceptively similar trademark. Despite these efforts, the notices were ignored.
2. Trademark Opposition and Abandonment
The plaintiff filed an opposition against the defendants' trademark registration application for KOTTON MANTRA. Following this, the Trademark Registry declared the defendants’ application abandoned in August 2022, citing their failure to file the required counter-statement.
3. Court Proceedings
In court, the plaintiff presented compelling evidence of the distinctiveness of their trademark and the harm caused by the defendants’ actions. Recognizing the prima facie case, the balance of convenience, and the irreparable hardship to the plaintiff, the court granted an interim injunction in the plaintiff's favour, effectively restraining the defendants from using the trademark KOTTON MANTRA.
Legal Implications
This case serves as a significant precedent, reaffirming critical aspects of trademark law, including:
- Protection of Registered Trademarks as Trading Styles: The judgment validates Section 29(5) of the Trade Marks Act, 1999, which protects registered trademarks even when used in trading styles or business names.
- Safeguarding Brand Equity: It emphasizes the need for brand owners to act decisively against infringers to maintain their market identity and consumer trust.
- Consequences of Non-Compliance: The defendants’ failure to respond to trademark opposition proceedings led to the abandonment of their application, highlighting the importance of adhering to procedural requirements.
