TaxTMI 
TaxTMI 
TaxTMI 
2011 (12) TMI 689
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....aintiff 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, switchgears, meters, relays, program....
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....rts 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 apparatus, thermionic valves, cathode ray tubes, conductors, phonographs, insulated wire, loudspeakers, electric welding apparatus, electric c....
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....(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. xv. GE Capital Business Process Management Services Pvt. Ltd. xvi. BHEL GE Gas Turbine Services Ltd. xvii. Satyam GE Software Services Pvt. Ltd. xviii. Godrej GE Appliances Ltd. xix. GE Medical Systems X-Ray (South Asia) Ltd. xx. IGE (India) Limited. 4. It is alleged that during last more than 100 years, the plaintiff has built up an unparalleled reputation and goodwill in its trade name/trademark GENERAL ELECTRIC and GE and it was rat....
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....E 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 ₹ 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 attorney Mr Mrigank Sharma by way of ex parte evidence. In his affidavits by way of evidence, Mr Sharma has supported on oath the case set out in the plaint and has proved various document relied upon by the plaintiff. 9. In Tata Sons Ltd. vs. Manoj Dodia & Ors 2011 (46) PTC 244 (Delhi), I had an opportunity to examine as to what in India would constitute a well-known mark within the meaning of Section 2(ZG) of Trademarks Act, 1999. This Court, inter alia, observed as under: "The doctrine of dilution, which has recently gain....
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....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 in relation to other categories of goods or services. He may also prevent others from incorporating the well known trademark as a part of their corporate name/business name. Even if a well known trademark is not registered in India, its owner may avail these rights in respect of the trademark registered/used or sought to be registered/used in India, provided that the well known mark is otherwise known to or recognized by the relevant section of public in India. The existence of actual confusion or a risk of confusion is, however, necessary....
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.... 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, 6, 7, 9, 10, 11, 12, 17, 41 and 42. The registrations in class 1, 3, 6, 7, 9, 10, 11 & 17 are GE (Monogram - the letter GE in a circle, in a stylized form). The registrations in class 2, 9, 10, 11 & 17 are trademark registrations of GENERAL ELECTRIC GE, whereas, the registration in class 12 is of the GE trademark. The plaintiff-company has been zealously protecting its aforesaid trademarks and filed CS(OS) No. 1880 of 2000, CS(OS) No. 1180 of 2001, CS(OS) No. 1634 of 2003, CS(OS) No. 239 of 2005, CS(OS) No. 241 of 2005, CS(OS) No. 242 of 2005, C....
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.... 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 my view, would still constitute infringement of the well known mark GE (monogram) of the plaintiff. It is by now settled proposition of law that in order to constitute infringement of a registered trademark, the impugned mark need not be its absolute replica and it is sufficient to constitute infringement if the impugned mark is visually, phonetically or otherwise so close to the registered trademark of the plaintiff that it would be considered to be a imitation of the registered trademark. In fact, the infringer is not likely to use a mark which is ....
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....re 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, the word "June" was a garland of flowers and roses and the plaintiff had no right to the exclusive use of the flower devices. The defendants were selling goods which had upon them the word "June". The case of the plaintiff, both as regards, infringement as well as passing off, rested upon the use of the word "June" on lotion, lipstick and the shampoo powder. The case of the plaintiff was that the word "June" had become so identified with the toilet preparations manufactured by it that use of the word "June" inevitably led to the goods being sold as the goo....
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....d 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 confusion in the minds of the purchasers with a normally imperfect recollection of the precise picture representing or containing the registered mark. A person who has seen or come across the mark GE or GE (monogram) of the plaintiff is likely to notice the letters G & E and neither the stylized form, in which these letters are written nor the circle in which these letters enclosed. What he is likely to notice and retain in his mind are the letters GE and if he comes across any goods bearing the mark GE, whether it is a word mark, or the letters GE writte....
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....iff. 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 two trademarks, one consisting of a label containing a device of goddess Sri Ambal in the centre with the legend 'Sri Ambal parimala snuff' at the top of the label and the name 'Sri Ambal & Co. Madras' at the bottom and the other consisting of the expression 'Sri Ambal'. The appellants were seeking registration of a label containing three panels. The first and the third panels contained in Tamil, Devanagri, Telugu and Kannada the equivalents of the words "Sri Andal Madras Snuff". The centre panel contained the picture of goddess Sri Andal ....
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.... 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 registered & what is the main feature or the main idea underlying that trademark, & if it is found that the trade mark whose registration is sought contains the same distinguishing or essential feature or conveys the same idea, then ordinarily the Registrar would be right if he came to the conclusion that the trade mark should not be registered. The real question is as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would re-act to a particular trade mark, what association he would form b....
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....sing 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 who may be paying a higher price in the belief that he was purchasing a product of high quality but may end up getting a product of inferior quality. Since the trademark GE is a well-known trademark, use of the aforesaid mark by the defendant on the product sold/proposed to be sold by them constitutes infringement within the meaning of Section 29(4) of Trademarks Act since by using the trademark GE, they are trying to take an unfair advantage by encashing upon brand equity and goodwill which the mark GE enjoys in the market. S....
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....t 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 or confusingly similar name without immediate intention to start its business. Whether or not the plaintiff whose name is sought to be infringed has a remedy to forestall the defendant from adopting its name or from opening up of the business under the plaintiff's trade name. the answer in any eventuality is in affirmative. The plaintiff has the same degree of right to protect its trade name from infringement as it has against infringement of registered name or in an action of passing off in respect of manufacturing or selling or offer....