Karnataka High Court Upholds Order Restraining MI Marbo Italia From Using 'MI Marbo Italia' Trade Name

The Karnataka High Court on 11 June dismissed an appeal filed by MI Marbo Italia and upheld a 2015 order of a Sessions Judge restraining it from using the trade name “MI Marbo Italia”, finding it deceptively similar to the registered trademark “M Marble Italia.”

A Bench of Justice Hanchate Sanjeevkumar observed that “there is no perversity and there is no need to cause interference with the findings given by the trial Court in allowing the application.”

M Marble Italia (Tile Italia Mosaics Pvt Ltd) had instituted a suit seeking a permanent injunction, contending that it had been using the trademark “M Marble Italia” since 15 May 2010 and held a registered trademark for the same. It alleged that the defendant's trade name, “MI Marbo Italia”, was deceptively similar and likely to cause confusion in the marble trade.

The defendant argued that the words “Marble” and “Italia” were generic and geographical terms over which no party could claim a monopoly. It contended that the plaintiff had “not acquired any distinctiveness in the alleged trademark, which is merely a combination of the words 'Marble and Italia'” and that the two trade names were "entirely different and distinct" and not deceptively similar.

In response, the plaintiff relied on its trademark registration and documentary evidence, including its incorporation certificate, to establish continuous use of the mark since May 2010. It also submitted that the defendant had failed to produce any material to support its claim of using the trade name since 1985.

The Court noted that the plaintiff's documents “prima facie show the fact that the plaintiff has been using the said trade name from the month of May 2010.” It further observed that “the defendant has not produced any documents to support his claim that he has been using the trade name as 'MI Marbo Italia' from the year 1985.”

Affirming the Trial Court's findings, the Bench held that the plaintiff had established a prima facie case and that the balance of convenience lay in its favour. Finding no perversity or legal infirmity in the order granting the injunction, it held that no interference was warranted.

Accordingly, the High Court dismissed the appeal and affirmed the interim injunction restraining the defendant from using the trade name “MI Marbo Italia.”