Injunction restrains use of well known mark

By Neha Kochhar, Lall Lahiri & Salhotra
0
979

The Trade Marks Act, 1999, seeks to protect bona fide prior use and to protect lawfully acquired trademarks from being infringed. When a well known mark that has a good reputation is used even with regard to dissimilar goods, it triggers confusion. This proposition has been reiterated in a number of judgments.

Neha Kochhar,Lawyer,Lall Lahiri & Salhotra
Neha Kochhar
Lawyer
Lall Lahiri & Salhotra

The relevant provision of the act, which is section 29(4), reads: “A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which (a) is identical with or similar to the registered trademark; and (b) is used in relation to goods or services which are not similar to those for which the trademark is registered; and (c) the registered trademark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trademark.”

The specifics

The recent case of Eicher Goodearth Pvt Ltd v Laxman Marketing Pvt Ltd & Ors, centred on the infringement of a registered trademark that had become well known after long and extensive use. In it the court granted a permanent injunction in favour of the plaintiff, holding that even if the marks are meant for dissimilar goods when the justification for its use is not convincing, then the injunction cannot be lifted.

The facts of the case are as follows. Eicher Goodearth, the plaintiff, is a pioneer in the tractor industry with their trademarks and logos registered in several countries. The trademark Eicher was registered in the name of the plaintiff in 1969 – under class 12 for automotive goods. From 1990 the plaintiffs are the registered proprietor of the trademark in respect of class 10 goods. The plaintiff claimed that the trademark was a well known mark within the meaning of the act and that it is exclusively associated with the products of the Eicher group.

The plaintiff alleged that the defendant, Laxman Marketing, was using the mark Laxman Eicher for their products, which are primarily bulbs. It was also alleged that the defendant’s application for registration of the mark Laxman Eicher has been pending since 1999.

The court granted an ex parte injunction favouring the plaintiff and restraining the defendants from using Eicher or any mark deceptively similar to that.

The defence

While attempting to vacate the stay the defendants argued that their mark was published in the Trademark Journal in 2002 and that the plaintiff had opposed that application. This meant that at least since 2002 the plaintiff had been aware that the defendant had been using the mark. As such, the defendant argued there was considerable delay and acquiescence on the part of the plaintiff.

Origins of the mark

The defendant said their use of Laxman Eicher was bona fide and that they had borrowed Eicher from a German company. The defendant explained that Eicher was in fact an acronym made from the initial letters of the words efficiency, industrial, commercial, household, energy and resources, which had significance with respect to the bulbs and other products that they sold.

In addition, Laxman Marketing argued that while the Eicher group produced automobile and automotive products, their goods were bulbs and other goods for electrical installations.

Precedent

The plaintiff relied on Midas Hygiene Industries Pvt Ltd v Sudhir Bhatta & Ors, 2004, where the Supreme Court held that where a trademark registration is obtained, then at the interim stage injunctive relief can be granted. In that case it was also held that the delay cannot defeat the protection of a registered trademark.

The decision

In Eicher Goodearth there was no dispute on the fact that Eicher is the registered trademark of the plaintiff. In addition the defence of using the mark for dissimilar goods, did not hold good because of section 29(4). The section states that a registered mark is infringed if an identical or similar mark is put to use by a person not permitted to do so and its use even with respect to goods or services which are not similar to those of the registered mark can take unfair advantage of or be detrimental to the distinctive character or repute of the registered trademark.

A single judge of Delhi High Court confirmed the permanent injunction granted in favour of the plaintiff. In doing so the court considered the steady rise in the plaintiff’s turnover that established the possibility of confusion about the marks, which could be detrimental to the plaintiff, and an unfair advantage to the defendant group.

Abhai Pandey is a lawyer with Lex Orbis IP Practice, a New Delhi-based firm.

Lex_Orbis_logo-CMYK

709/710 Tolstoy House, 15-17 Tolstoy Marg

New Delhi – 110 001

India

Tel: +91 11 2371 6565

Fax: +91 11 2371 6556

Email: mail@lexorbis.com

www.lexorbis.com