GAP Restrains The Use Of GAPL

Author:Mrs Manisha Singh Nair
Profession:LEX ORBIS

An infringing use of a

registered trademark involves use of such trademark by another

as a trade name or name of his business concern or a part of

trade name, or business concern dealing in goods and services

in respect of which the trademark is registered.1

Such use would not only impinge upon the business and profits

of the registered owner of the trademark, but also take unfair

advantage or be detrimental to the distinctive character of the

mark. The instant Delhi High Court case is a good illustration

in point.2

The plaintiffs were the

registered owners of the trademark GAP, Old Navy and Banana

Republic in respect of apparels sold through their retail

stores. They alleged parallel importation of the surplus goods

manufactured by them under the above trademarks but no longer

in vogue and intended for sale in a specific country. The

defendants were importing these goods and selling them at a

lower price. They were also selling similar garments under

labels of GAPL which was the abbreviated form of the name of

their store 'Garments and Accessories Price Less'.

The plaintiffs contented that

the selling of garments bearing the label of GAP and those

bearing the label of GAPL from the same shop would be

detrimental to the distinctive character of the mark and cause

confusion in the minds of the purchasing public. Accordingly,

the plaintiffs filed an application for interim injunction

which was granted by the court on the grounds of counterfeiting

of obsolete goods of the plaintiff. The defendants however,

were able to prove that they procured the obsolete goods from a

proper channel being a store in Dubai which was purchasing them

from the plaintiffs themselves. The court hence vacated the

interim orders because no claim of counterfeiting was made out.

The court said "there is little doubt that the defendant

had properly sourced the goods by reason of the plaintiffs

having put the goods in the channel of sale and no grievance in

that behalf can be made by the plaintiffs." Again, the

defendants sold the obsolete merchandise of the plaintiff at a

discounted price with the original retail price label intact

together with the name of the importer and the year of import.

They were being sold even in the bags and hangers supplied by

the plaintiffs.

Another line of defendant's

business was sale of self manufactured apparels under the

trademark GAPL and GAPPLE. The defendants prayed for

infringement and passing off action as this was damaging the

sales and distinctive...

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