TaxTMI 
TaxTMI 
2011 (12) TMI 689
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....mpetitors. The businesses of the plaintiff include (i) GE Appliances, which is one of the largest manufacturers of major appliances such as dehumidifiers, refrigerators and freezers, electric and gas ranges, microwave ovens, washers and dryers, dish washers, disposals and compactors, room air-conditioners, water purifying systems etc. being sold under various well-known trademarks under GENERAL ELECTRIC and GE (Monogram); (ii) GE Lighting, leading supplier of lighting products such as incandescent, fluorescent, high intensity discharge, halogen and holiday lamps along with portable lighting fixtures, lamp components and quartz products; (iii) GE Medical Systems, a world leader in medical diagnostic imaging technology with products including computed tomography (CT Scanners), X-Ray equipment, nuclear medicines cameras, ultra sound systems, mammography and radiation therapy equipment, etc.; (iv) GE Aircraft Engines, world's largest producer of large and small jet engines for commercial and military aircrafts; (v) GE Industrial Systems, industrial leaders in design and motivate or products such as industrial motors and drives, circuit breakers, switches, transformers, switch boards, s....
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.... Compressors (Machinery); pump, condensers and gearing (not included in other classes), machine tools and parts thereof, electric alternators, electric generators, electric motors, electric ignition devices for engines, electric hoists, magnetos, mining machinery, elastic fluid turbines, internal combustion engines not included in class 12, and marine engines., 10086 GE Monogram 9 Magnets 304290 GENERAL ELECTRIC GE 9 Cinematograph apparatus, radio receiving and transmitting apparatus, television apparatus, thermionic valves, cathode ray tubes, conductors, phonographs, insulated wire, loudspeakers, electric welding apparatus, electric circuit breakers, circuit closers, electric fuses, electric control apparatus, electric protective devices, electric converters, rectifiers, transformers, amplifiers, discharge tubes and parts thereof, electric relays, electric resistances, electric measuring apparatus and instruments, switches and switchboards, induction apparatus, collectors, contact devices, smoothing irons, flat irons, vacuum cleaners. 10094 GE Monogram 9 Cinematograph apparatus, radio receiving and transmitting apparatus, television ....
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.... made from these substances and not included in other classes, plastics in the form of sheets; blocks and rods; being for use in manufacture; materials for packing; stopping or insulating; asbestos; mica and their products; hose pipes (not metallic) 399689 GENERAL ELECTRIC GE 17 Dielectric or insulating oils and compounds 10090 3. The plaintiff has wide presence in India through the following subsidiaries/Joint Venture Companies: i. GE India Technology Centre Pvt. Ltd. ii. GE Plastics India Limited iii. Wipro GE Medical Systems Limited iv. GE Power Control India Pvt. Ltd. v. GE Lighting (India) Ltd. vi. GE Bayer Silicones (India) Pvt. Ltd. vii. GE Fanuc Systems Pvt. Ltd. viii. GE BE Limited ix. GE Motors (India) Ltd. x. GE Power Services (India) Ltd. xi. GE Capital International Services xii. GE Capital Services India Limited xiii. GE Countrywide Consumer Financial Services Ltd. xiv. GE Capital Transportation Financial Services Ltd. ....
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....the defendant had applied for registration of the Trademark GE in class 6 in respect of all kinds of nuts, bolts, suts, etc. The plaintiff filed an Opposition to the aforesaid registration, which is stated to be pending. It is alleged that use of the impugned mark by the defendants is bound to mislead the consumer and members of the trade, who being familiar with the reputation of the mark GE, are likely to be deceived on account of use of the aforesaid marks by the defendant. It is also alleged that adoption of the trademark GE by the defendants is mala fide and dishonest, aimed at earning illegal profits by encashing upon the tremendous reputation and goodwill which the brand of the plaintiff enjoys throughout the world. 7. The plaintiff has sought an injunction, restraining the defendants from selling, advertising or promoting any product or service under the trademark GE or any other mark deceptively similar to plaintiff's registered trademark. The plaintiff has also sought damages, amounting to Rs. 20 lakh, besides delivery up of the infringing material. 8. The defendant was proceeded ex parte vide order dated 14th March, 2007. The plaintiff has examined its constituted ....
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....demark occurs when a well known trademark loses its ability to be uniquely and distinctively identify and distinguish as one source and consequent change in perception which reduces the market value or selling power of the product bearing the well known mark. Dilution may also occur when the well known trademark is used in respect of goods or services of inferior quality. If a brand which is well known for the quality of the products sold or services rendered under that name or a mark similar to that mark is used in respect of the products which are not of the quality which the consumer expects in respect of the products sold and/or services provided using that mark, that may evoke uncharitable thoughts in the mind of the consumer about the trademark owner's product and he can no more be confident that the product being sold or the service being rendered under that well known brand will prove to be of expected standard or quality. The owner of a well known trademark may (i) seek cancellation or (ii) prevent registration of a trademark which is same or similar to the well known mark irrespective of whether the impugned mark is in relation to identical or similar goods or services or....
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....in a large number of countries for more than 100 years, in respect of a large number of diversified products and services. The plaintiff-company has been regularly advertising its brand names and incurring huge expenditure on such advertisement and promotion on a regular basis, almost throughout the world, including India. The plaintiff-company holds registrations in the aforesaid trademarks in a large number of countries. It has about 250 manufacturing capacities in various countries and employs more than 3 lakh personnel. The sale turnover of the plaintiff-company, using the aforesaid trademarks, was US$ 147955 million, US$ 163391 million and US$ 172738 million in the years 2005, 2006 and 2007 respectively, which is a strong indicator of the worldwide presence, the plaintiff has in a large number of products and services. The promotional expenditure of the plaintiff-company was US$ 406.3 million, US$ 439.5 million and US$ 471.6 million in the years 1997, 1998 and 1999 respectively. The plaintiff-company carries on business in India through as many as 19 subsidiaries/joint venture companies. The plaintiff-company holds a number of trademark registrations in India in class 1, 3,....
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....r persons holding registration or using the trademark GE and the reputation which the plaintiff-company enjoys throughout the world, including India, it can hardly be disputed that GENERAL ELECTRIC as well as GE, whether written in plain letters or in a stylized form such as a Monogram are well-known marks of the plaintiff, within the meaning of Section 2(ZG) of Trademarks Act. 11. The mark which the defendant used or proposed to be used is a word mark consisting of two letters of English alphabet 'G' & 'E'. The plaintiff has only one registration of the word mark GE which is in Category 12, whereas rest of its registrations are of the word mark GENERAL ELECTRIC and GE (monogram). The question which comes up for consideration is as to whether use/proposed use of the word mark GE by the defendant constitutes infringement of a well known mark of the plaintiff. In my view, not only GE (monogram) and GENERAL ELECTRIC but also the word mark GE, are the well known marks of the plaintiff. Assuming, however, that the word mark GE is not the well known mark of the plaintiff and only GENERAL ELECTRIC and GE (monogram) are its well known marks, use of the word mark GE by the defendant, in ....
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....ind, all the details of the registered trademark. What such a person notices and keeps in mind is what is called essential or distinguishing features of the mark which he has earlier seen on the goods purchased or services availed by him or which on account of quality of products sold or the services rendered under that mark has built such a reputation that he wants to buy the goods being sold or services being offered under that particular mark without having purchased such goods or availed such services in the past. The Courts need to ensure that there is no confusion in the mind of such a customer as regards source of the product or service he is buying and he needs to be assured that he is buying the same product or the same services which he intends to buy and identifies on account of the mark under which it is sold. In Saville Perfumery Ld. vs. June Perfect Ld., LVIII, reports of Patent, Design and Trademark cases - 6, the plaintiff was using the trademark "June", printed in a particular way over a bar and a word "Saville" was used in connection with that trademark. The mark was not merely the word "June", but the word "June" represented in a particular way. Underneath, th....
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....retailer ordering the goods from the wholesaler asks for the goods under the word "June", and in answer to that order, an article marked "June", which, in fact, emanates from the defendant is supplied, there will probably be deception of the customer and possibly of the retailer and therefore user of the word "June" was a case of infringement. The matter was taken by the defendants to House of Lords by way of appeal, which was dismissed. The Appellants before the House of Lords contended that the conflicting marks were different since the word "June" used by them, if compared with the plaintiff's registered trademark, was not calculated to deceive. Rejecting the contention, the House of Lords held that distinguishing feature of the plaintiff's registered mark, was the word "June" and hardly any evidence was required to enable the Court to come to this conclusion and since the Appellants had used an essential feature of the plaintiff's mark, which was registered mark, a case of infringement was made out. The House of Lords came to the conclusion that the use of the word "June" as a mark on the goods so nearly resembled the Respondents' mark as was to be likely to deceive or cause co....
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.... capture the distinctiveness of the earlier trademark NATREL which was likely to cause confusion. In the case before this Court, the mark of the plaintiff GE (monogram) irrespective of the form in which it is written and the circle in which the letters are enclosed, will be pronounced as GE. The mark used/proposed to be used by the defendant being GE, there is absolute phonetically similarity between the two marks. It can therefore hardly be disputed that the mark GE used/proposed to be used by the defendants is similar to the mark GE (monogram) of the plaintiff. If a person goes to the mark seeking to buy a product of the plaintiff company he would ask for the product of GE and if a product bearing the trademark GE, in plain letters of English alphabets is offered to him, he is likely to take it as a product of the plaintiff company irrespective of the fact that neither the letters GE are written in a stylized form in which the letters in the trademark GE (monogram) of the plaintiff nor are they enclosed in a circle. To him what matters are the letters GE. In K. R. Chinna Krishna Chettiar vs Sri Ambal & Co., Madras & Anr AIR 1970 SC 146, the respondents were proprietors of t....
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....navite Goddess and a Shivaite deity." In James Chadwick & Bros. Ltd. vs. The National Sewing Thread Co. Ltd. AIR 1951 (Bom) 147, the appellants were using the two trademarks which they had also got registered. One of the trademarks was bearing the legend 'Eagley Sewing Machine Thread', whereas the other trademark was merely a representation of an eagle, without any writing. The respondents were using the picture of a bird of prey and the mark also bore a legend 'Peerless Quality Vulture Brand Reel Thread'. Initially, they were using the name of the brand as eagle which at the time of registration they changed to a vulture. The marks of the appellants were known as eagle. Holding that the mark of the respondent was likely to deceive or cause confusion, the High Court inter alia observed as under: "Now in deciding whether a particular trade mark is likely to deceive or cause confusion, it is not sufficient merely to compare it with the trade mark which is already registered & whose proprietor is offering opposition to the registration of the former trade mark. What is important is to find out what is the distinguishing or essential feature of the trade mark already regist....
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....nd the goods or services which are sold under the trademark GE. Use of the trademark GE by the defendant is likely to give an impression to the customer that the product has been manufactured or is being sold in association with the plaintiff-company or its subsidiary/associated company and an unwary customer is likely to purchase the product of the defendant, only on account of the use of the mark GE on it, in the belief that the product in some manner or the other connected with the plaintiff-company. A customer, while purchasing goods of the defendant, is likely to attach considerable importance to use of the mark GE on the product and since the aforesaid mark has come to be identified exclusively with the plaintiff-company, he may also believe that the product was likely to be of superior quality which he expects in respect of the products being sold and services being offered by the plaintiff-company. If the customer later finds that the quality of the goods purchased by him is not as he expected from a GE product, this may considerably damage the goodwill and brand equity which the mark GE enjoys throughout the world, besides adversely affecting the interest of the purchaser ....
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....on before this Court was as to whether a person who has not suffered any damage in respect of trade either due to competition or due to deceptive or confusing similarities of the trademark adopted by the defendant has any right to challenge the act of the defendant in seeking to incorporate a company under a name which included the name of the registered trademark of the plaintiff company. The defendant in that case had been incorporated as a company but had not commenced operations by manufacture of sale of goods. Upholding the right of the plaintiff to maintain cause of action on account of apprehension of infringement of its trademark, this Court inter alia observed as under:- To expect the aggrieved party to wait and watch for the opening of business or manufacturing or sale of goods under the apprehended infringement of trade mark is too much. A stitch in time always saves nine and that is what is the essence of Quia Timet Action... ...Let us assume that infringer has no past history of either squatting or hoarding the domain name, trade name and comes out with advertisement for the first time for registering its Corporate name by adopting the similar name or deceptively....