M/S GOMZI ACTIVE versus M/S REEBOK INDIA CO. & ANR.

Citation: [2007] 2 S.C.R. 256 · Decided: 02-02-2007 · Supreme Court of India · Bench: ARIJIT PASAYAT · Disposal: Disposed off

Judgment (excerpt)

I. + 
A 
M/S GOMZI ACTIVE 
v. 
M/S REEBOK INDIA CO. & ANR,. 
FEBRUARY 2, 2007 
B 
[DR. ARIJIT PASA YAT AND S.H. KAPADIA, JJ.] 
Trade Mark-Infringement of-Suit for permanent injunction and 
rendition of accounts-Trial court observing that slogan claimed by plaintiff 
( 
C not registered-However, temporary injunction granted-High Court vacating 
temporary injunction and directing trial court to dispose of the suit 
expeditiously-Held, in view of the principles regarding passing off action 
and infringement action, grant of interim protection would not be proper-
Trial court would dispose of the suit as early as practicable-Defendant 
would maintain sepC1rate accounts in respect of impugned transactions. 
D 
Appi!llant filed a suit for permanent injunction and rendition of accounts 
against the respondent claiming that defendant-respondent be restrained from 
using product logo/trade mark "I am what I am". The trial court held that 
trade mark of the plaintiff under which it carried on business was "Gomzi" 
E and not "I am what I am"; and that the plaintiff did not file any application to 
get the said slogan registered until May, 2005; as such, the said slogan could 
not be considered as a logo or trade mark of the plaintiff. However, later a 
temporary injunction in favour of the plaintiff was granted. The defendant 
filed appeal against the order granting temporary injunction whereas the 
F plaintiff filed a cross-objection with regard to finding in respect of slogan "I 
am what I am". The High Court allowed the appeal of the defendant, vacated 
the interim injunction and directed the trial court to dispose of the suit 
expeditiously. Aggrieved, the plaintiff filed the present appeal. 
G 
H 
Disposing of the appeal, the Court 
HELD: I.I. The facts of the instant case, when tested on the principles 
regarding passing off action and infringement action, set out in the judgments 
of this Court, make the position clear that granrof any interim protection in 
this case would not be proper. It is stated that issues have already been framed 
256 
GOMZI ACTIVE v. REEBOK INDIA CO. [PASA YAT, J.] 
257 
and the High Court has directed disposal of the suit within a period of six A 
) 
months from the date of its order. That being so, the proper course would be 
to direct the court concerned to dispose of the matter as early as practicable. 
~ 
Ordered accordingly. [Para nos. 10-12) [259-G-H; 260-A[ 
.) 
Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical B 
labortories, AIR (1965) SC 980 and S.M. Dyechem Ltd. v. Cadbury (India) 
ltd., [2000] 5 sec 573, relied on. 
1.2. The defendant shall maintain separate accounts in respect of the 
impugned transactions. Leaving open all questions for adjudication, it is made 
clear that whatever view has been taken by the trial court or the High Court C 
would be a tentative view, and not the final view. [Para-12) [259-H; 260-A-B] 
CIVIL APPELLATE JURJSDICTION : Civil Appeal No. 440 of 2007. 
From the Judgment and final Order dated 22.6.2006 of the High Court D 
ofKamataka at Bangalore in M.F.A. No. 11626/2005 along with C.0. No. 19/ 
2006. 
Anant Alba!, Raja Chatterjee and G.S. Chatterjee for the Appellant. 
S.K. Satpal, Nitin Bhardwaj and Praveen Chaturvedi forthe Respondents. E 
The Judgment of the Court was delivered by 
DR. ARIJIT PASAYAT, J. I. Leave granted. 
2. Challenge in this appeal is to the judgment rendered by a learned p 
Single Judge of the Karnataka High Court partially allowing the appeal filed 
by the respondent and directing the trial court to dispose of the suit early, 
preferably within six months from the date of order i.e. 22.6.2006. 
3. Background facts in a nutshell are as follows: 
Appellant filed the suit i.e. O.S. No. 16861 of2005 seeking permanent 
injunction against the respondents by restraining them from using their product 
logo/trade mark "I am what I am" and for payment of damages and for 
rendition of accounts. The controversy involved was pertaining to the use 
G 
of the trade slogan "I am what I am". Respondents had filed the appeal H 
258 
SUPREME COURT REPORTS 
[2007] 2 S.C.R. 
A challenging the grant of temporary injunction restraining them from using the 
logo "I am what I am" along with their trade mark. 
4. Case of the plaintiff was that the trade slogan "I am what I am" is 
its distinctive style and design at least since 1998, used on garments which 
B were stolen/pirated by the defendant thus infringing their proprietary right 
including

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