Paulsons Beauty And Fashion Private Limited v. Grand Slam Fitness

O.A. Nos.765 & 766 of 2020 in C.S. (Comm. Div.) No.411 of 2020 N.ANAND VENKATESH,J., These applications have been filed seeking for the relief of interim injunction by the applicant/plaintiff on the ground that the respondent/defendant is infringing the applicant's trademark SLAM LIFESTYLE AND FITNESS STUDIO by using the offending trademark GRAND SLAM and is passing off the applicant's trademark and trade stlye. 2.The case of the applicant is that they started the gym and lifestyle and fitness studio in they year 2015 under the name SLAM LIFESTYLE AND FITNESS STUDIO. The applicant has a registered trademark SLAM LIFESTYLE AND FITNESS STUDIO with regard to gym business and it is registered in service Class 41 to run a gym. The applicant claims that there are 32 branches that are actively in operation spread over Tamil Nadu and Banglore.

It is stated that the applicant has earned a goodwill and reputation by using this trademark and trading style. The applicant further claims that they have earned a revenue of Rs.90,88,37,895/- for the period from 2015 to 2020 and they have also spent towards advertisement and promotional expenses a sum of Rs.1,21,75,000/-.

3.The grievance of the applicant is that the respondent advertised that they are going to launch their gym business under the mark SLAM and according to the applicant, this trademark of the respondent will mislead and cause confusion to the public since it is deceptively similar and resembles the mark of the applicant phonetically and visually. 4.The applicant sent a legal notice dated 28.11.2020 to the respondent requesting them to stop using the registered trademark of the applicant with regard to gym business. A reply notice was issued by the respondent dated 04.12.2020 and the respondent justified their action on the ground that they have been running gym/fitness centre since the year 2010 onwards.

This gave raise to a cause of action to file the above suit and pending the suit, these applications have been filed seeking for an order of interim injunction. 5.The respondent has filed a common counter affidavit in both the applications.

year 2015 does not have any right or authority to stop the respondent from carrying on the gym business by using their registered mark. The further stand taken by the respondent is that they have acquired sufficient goodwill and reputation by using the trademark GRAND SLAM and their sales turnover runs to several crores of rupees. The respondent has taken a further stand that they are having their business in Delhi and the applicant who is only having business at Tamil Nadu and Banglore, is attempting to illegally stop the respondent from carrying on with their business to which they are entitled to under the trademark GRAND SLAM. The respondent has therefore sought for the dismissal of these applications. 6.Heard the learned counsel for the applicant/plaintiff and the learned counsel appearing on behalf of the respondent/defendant. 7.

The admitted case of the applicant is that they started the gym and fitness studio in the year 2015. It was launched on 12.02.2015.

Training] under Class 41 under the trademark . It is further seen from the documents filed along with the plaint that they have obtained necessary license and permission for running the fitness centres at various places. A reading of the plaint shows that the applicant has nearly 32 branches across Tamil Nadu and Banglore.

8.It is further seen from the documents that the fitness centre run by the applicant has earned sufficient reputation and goodwill. The averments in the plaint also goes to show that the applicant is earning substantial revenue and he is also spending a lot towards promotional expenses. 9.Immediately on coming to know that the respondent is planning to open a gym/fitness studio, the applicant issued a notice dated 28.11.2020 to the respondent and requested the respondent to desist from using the trademark GRAND SLAM FITNESS. On receipt of this notice, the respondent issued a reply notice dated 04.12.2020. In the said notice, the respondent claimed that they are in the business of running gym/fitness centre from the year 2010 onwards and they have every right to open gym/fitness centre in their tradename GRAND SLAM. This reply notice was the trigger for the applicant to institute the above suit.

10.There is no dispute with regard to the fact that the respondent had registered the tradename GRAND SLAM under Class 28 to carry on with the businnes of body bulding and trading apparatus, exercise bicycles, joggers, tread mills, exercisers, machines for physical exercise, apparatus for gymnastics, parts and fittings thereof for sale in the State of Delhi NCR only. It is clear from the certificate that the trademark of the respondent was confined to the goods falling under Class 28. This registration was given in favour of the respondent in the year 2005.

The specific case of the applicant is that they do not have any objection in the respondent carrying on with the business falling under Class 28 with their trade name and their only objection is that they are attempting to get into gym business which is not covered under the registration granted to them and it will unnecessarily cause confusion in the minds of the customers since the tradename is phonetically, deceptively and visually similar. In short the offending tradename 'GRAND SLAM FITNESS' is likely to mislead and cause confusion to the public.

11.This court carefully went through the documents filed on the side of the respondent. It is seen from the Memorandum of Association of the respondent company that there is not a single reference to start a gym

business/ fitness studio either in the main object or in the incidental or ancillary object or the other objects of the company. The Memorandum of Association makes it abundantly clear that the respondent wanted to carry on with the business of manufacturing/supplying fitness equipments and sports goods. The Trademark Registration Certificate given in favour of the respondent under Class 28 once again confirms this fact. The certificates issued by the Government and various other authorities in the name of the respondent clearly shows that they are supplying fitness equipments and sports goods. Even one document issued by the Service Tax Department where reference is made to health club and fitness centre is predicated by the words maintenance or repair service. This only gives an impression that the respondent has undertaken maintenance/repair service for a health club and fitness centre.

12.The sales invoices that have been relied upon by the respondent and which is found at Page Nos.56 to 90 in the typed set of papers clearly reflects the fact that the respondent has supplied equipments and in some cases, have set up a home gym.

13.The learned counsel for the respondent placed heavy reliance upon documents found at Page Nos.91 to 102. These are invoices issued in the

name of certain individuals during the year 2009 and 2010. In the column Description of Goods, it is mentioned as Gym Income. From these documents, the respondent wants this court to construe the same as if it was an income earned by running a gym/fitness centre. Apart from these invoices there is absolutely not a scrap of paper to show that the respondent is running gym business. If really the respondent is running the gym business form 2009/2010, the respondent could have filed the relevant documents like the license granted for running the gym, permission granted by the concerned authorities, etc for running a gym. None of those are available in the documents filed by the respondent.

The documents reflects the fact that the respondent supplies fitness quipment and even sets up home gym and therefore, there is a clear possibility of invoices being raised in the name of individuals while undertaking the said exercise. Prima facie these invoices do not satisfy this court that the respondent is in the gym business or running fitness centres from the year 2009 onwards. Curiously, the invoices relied upon by the respondent is of the year 2009 and 2010 and there is nothing available thereafter.

14.Even the advertisements and news reporting that has been relied upon by the respondent and which are found at Page Nos.166 to 219 pertains to gym equipments and not towards running a gym.

15.It can also be seen from the documents filed by the respondent that the respondent subsequent to the filing of the present suit, has initiated a suit before the District Judge at Saket Courts, New Delhi against the applicant on the ground of infringement of trademark and passing off. Even in this suit, the focus seems to be on the infringement of the trademark and there is nothing to indicate that the respondent is into running fitness centres and hence the applicant must be stopped/ injuncted from carrying on with their gym business.

16.On a careful scrutiny of the documents filed by the respondent, it is very clear that the respondent is involved only in the business of supply of gym equipments and sports goods. That is substantiated by the fact that the Trademark Certificate has been issued only under Class 28 which does not cover health and fitness training. Whereas, the applicant has been specifically granted trademark registration under Class 41 which covers Gymnastic Instruction; Conducting Fitness Classes; Health Club Services [Health and Fitness Training]; Personal Trainer Service [Fitness Training]. Obviously, the respondent was in the process of getting into the gym business and on noticing the same, the applicant has approached this court seeking for appropriate reliefs.

17.The next issue that has to be taken into consideration is as to whether the impugned trademark of the respondent namely "GRAND SLAM FITNESS" if adopted in the gym business will infringe upon the trademark of the applicant namely 'SLAM LIFESTYLE AND FITNESS STUDIO' and whether the respondent will be passing off the registered trademark of applicant. The essential feature of the trademark of the applicant is "SLAM". The applicant has used the trademark from the year 2015 onwards and has earned sufficient reputation and goodwill and the same is evident from the sales figures and the huge amounts that are spent on advertisement and promotional events. The registered trademark of the applicant is and the impugned trademark of the respondent is 'GRAND SLAM'. When it comes to a registered trademark, added matter doctrine will not apply.

This court cannot breakdown the mark into distinctive and non-distinctive part. It has to be necessarily considered as a whole. In the present case, the distinctive part is no doubt the word "SLAM'. If the respondent is permitted to start their gym business/fitness studio with their trademark GRAND SLAM, it will necessarily mislead and cause confusion to the customers who join in the gym. The nature of the mark is deceptively similar and the degree of resemblance between the marks is phonetically, deceptively and visually similar.

respondent confines to the business falling under Class 28. The moment the respondent gets into the gym business/fitness studio, the class of customers who frequent a gym will be necessarily mislead. The applicant has a registered trademark for a service falling under Class 41 and the respondent has registered trademark for goods falling under Class 28. Therefore, the parties will have to confine their operation in line with the class under which they have been given the registered trademark. The problem will start only when they attempt to go beyond the class for which the certificate has been issued.

18.The applicant has made out a very strong prima facie case based on the documents filed before this court. They have earned necessary goodwill and reputation and there is a clear identity among the class of customers for the trademark of the applicant when it comes to gym/fitness studio. Whereas, the materials placed by the respondent does not satisfy this court that the respondent was ever involved in the gym business. On the other hand, the overwhelming materials of the respondent shows that they are only involved in supplying fitness equipments and sports goods. 19.If the respondent is permitted to start any gym business with their trade name, it will cause irreparable loss to the applicant who has a

registered trademark for Class 41. The loss cannot be compensated in terms of damages. This court also finds that the balance of convenience is in favour of the applicant. In the result, the applicant is entitled for injunction as prayed for in the above applications, pending disposal of the suit. 20.Considering the facts and circumstances of the case, this court is not inclined to impose costs on the respondent and these applications are allowed accordingly.

01.12.2021 ssr (3/4)

N.ANAND VENKATESH,J., ssr O.A. Nos.765 & 766 of 2020 in C.S. (Comm. Div.) No.411 of 2020 01.12.2021 (3/4)