TaxTMI 
TaxTMI 
2014 (2) TMI 1447
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....c. and various other electric goods. The plaintiff is also stated to be using the trade mark MEX on CFL bulbs, kitkats, fuses, distribution boxes, circuit breakers wires and cable miniature circuit breaker (MCBS), Control Panels for Meters and submersible pumps etc. 3. It has been stated by the plaintiff that the word MEX is an integral part of the corporate name of the Plaintiff Company since its incorporation in the year 1979 and that earlier to this, the Managing Director of the plaintiff i.e. Mr. Jai Krishan Saini had a partnership firm consisting of the name Mex Electro Corporation and the firm had adopted the trademark MEX in 1960. The plaintiff claims that it has an exclusive right over the word MEX both by virtue of trademark registration and presence of the word MEX in its corporate name. 4. The plaintiff has stated that it is a registered proprietor of various trademarks relating MEX under classes 7, 9 and 11 for various goods, details of which are given in Para 5 of the plaint and some of which are: trademark MEX (label) registered for electric switchgears and switches under class 9 as on 31st August 1962 bearing registration no. 211055; trademark MEX registered fo....
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....istered trademark MEX of the plaintiff, either as a trademark or trade name by the defendant is bound to cause confusion and deception amongst the purchasing public and trade which leading to think that the defendant's goods bearing the trademark MAX originate from the same source i.e. the Plaintiff. The presence of the word MAX in the corporate name of the defendant would also create deception and confusion and create an impression as if the defendant has some connection with the plaintiff. 9. The plaintiff contends that the trade mark MAX is visually, phonetically as well as structurally similar to the well known trade mark MEX of the plaintiff. The adoption of the trademark/trade name MAX by the defendant is with a dishonest motive to create mischief and to deceive the purchasing public by seeking to create an impression that its products are somehow connected with the plaintiff. 10. On the other hand, it is the case of the defendant that its directors are in the business of Heavy Electrical for the last many years and in the year 2011 the defendant took over the running business of its predecessor M/s MAX ELECTRICKS which was one of the proprietary concerns of one of ....
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....n/goodwill of the plaintiff. The details of the sales turnover of the defendant has been given in Para 23 of the written statement filed by the defendant and the sales turnover for the period 2012-13 is stated to be Rs. 6,40,99,240/-. It has been stated that the defendant has never adopted the trademark MAX for any of its goods and the product of the defendant are known for their quality and identified by its unique logo/device mark which has been invented by the defendant. 15. The following defences are raised by the defendant: i. The trade mark MAX is adopted by the defendant from the common dictionary. It was bonafide adoption as the same was adopted from the word "MAXIMUM". ii. The trade mark MAX is not similar with the trade mark of the plaintiff i.e. MEX. iii. The mark MAX is common to the trade in the industry of Switch Gears. iv. The defendant started the business in 2000 through its predecessor and later in the year 2011 the defendant was renamed and since 2007 the website of the predecessor is available bearing the name MAX. v. There is delay of acquiescence on the part of the plaintiff to file the action. vi. This ....
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....#39;s predecessor or the defendant ought not to have used the trade mark MAX in relation to same goods as well as part of their corporate name as on the date of adoption they were fully aware about the goodwill and reputation of the plaintiff. 22. It is also argued by the plaintiff that the defendant has never used the trade mark MAX from the year 2000 as alleged by the defendant. They have been using the trade mark and corporate name Max Switchgears Pvt. Ltd. In any case, since the plaintiff is holding the registration of the trade mark MEX and corporate name Mex Switchgears Pvt. Ltd., the delay, if any, is not fatal to the case of the infringement of trade mark. Therefore, the plaintiff is pressing for injunction against the defendant. 23. The rival submissions of the defendant have been dealt with by the learned counsel for the plaintiff during the course of the arguments denying all the statements made in the written statement. It is argued by the learned counsel for the plaintiff that all the pleas raised by the defendant are false and frivolous and the same are not sustainable in law. The present case is a case of infringement also where the plaintiff has been able to e....
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....larity of the goods or services covered by such registered trade mark; or (c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. (3) In any case falling under clause (c) of sub- section (2), the court shall presume that it is likely to cause confusion on the part of the public. (4) A registered trade mark 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 trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark 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 trade mark. (5) A registered trade mark is infringed by a person if he uses such register....
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....re persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those person as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor." 26. By mere reading of these provisions, it is clear that a registered trademark is infringed by a person who not being a registered proprietor, uses in the course of trade a mark which is identical or deceptively similar in relation to the goods or services which are identical or similar to that in respect of which the trademark is registered without the permission of the trademark owner. 27. So far as infringement qua different goods is concerned, separate enactment of Section 29(4) makes it clear that the strict rigors are prescribed as against the ordin....
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....oncern or trade is in the same goods or services in respect of which the trade mark is registered. (b) This is in the nature of a per se or a 'no-fault' provision which offers a higher degree of protection where both the above elements are shown to exist. If the owner/proprietor of the registered trade mark is able to show that both the above elements exist then an injunction order restraining order the infringer should straightway follow. For the purpose of Section 29(5) of the TM Act 1999 there is no requirement to show that the mark has a distinctive character or that any confusion is likely to result from the use by the infringer of the registered mark as part of its trade name or name of the business concern. (c) However, in a situation where the first element is present and not the second then obviously the requirement of Section 29(5) is not fulfilled. Where the registered trade mark is used as part of the corporate name but the business of the infringer is in goods or services other than those for which the mark is registered, the owner or proprietor of the registered trade mark is not precluded from seeking a remedy under Section 29(4) of TM Act 1....
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....ve similarity. The Supreme Court, dismissed the appeal, and held that there was a striking similarity and affinity of sound between the word "Andal" and "Ambal" and held that there was a real danger of confusion between the two marks. 34. The following are the judgments are relevant to be referred to for the purpose of grant of relief in the cases of infringement of the trade marks: i. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980, it was held in Para 28 that: "28. The other ground of objection that the findings are inconsistent really proceeds on an error in appreciating the basic differences between the causes of action and right to relief in suits for passing off and for infringement of a registered trade mark and in equating the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trade mark. We have already pointed out that the suit by the respondent complained both of an invasion of a statutory right under s. 21 in respect of a registered trade mark and also of a passing off by the use of the same make. The finding in favour of the appellant to whic....
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....d in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the make would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff" ii. In the case of American Home Products v. Mac Laboratories AIR 1986 SC 137 in Para 36 it was held as under: "When a person gets his trade mark registered, he acquires valuable rights by reason of such registration. Registration of his trade mark give him the exclusive right to the use of the trade mark in connection with the goods in respect of which it is registered and if there is any invasion of this right by any other person using a mark which is the same or deceptively similar to his trade mark, he can protect his trade mark by an action for infringement in which he can obtain injunction .... " ....
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....rial, no other rights come into existence. In my view, it is very convenient, if the defendants are so minded, to adopt any other label that establishes a connection in the course of trade with respect to the footwear manufactured by them." In view of the above said facts and circumstances, it is held that two marks MEX and MAX visually, phonetically and structurally are deceptively similar. The use of the trade mark MAX by the defendant in relation to same/similar goods as well as dominant part of its corporate name amounts to infringement of trade mark of the plaintiff. In case the defendant is allowed to use the deceptively similar trade mark, there would be confusion and deception. PASSING OFF 35. The following are the essential characteristics of an action of passing off :- (A) In Erven Warnink B.V. v. J. Townend & Sons (Hull) Ltd., 1980 RPC 31, Lord Diplock stated the essential characteristics of a passing off action as under: "(1) misrepresentation, (2) made by a person in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him (4) which is calculated to injure the business or goodwill of ....
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....ir play are and ought to be the basic policy in the world of business and when a person adopts or intends to adopt a name which already belongs to someone else, it results in confusion, has the propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury. It was held that the principles which apply to trade mark are applicable to trade name also. Relevant para 10 of the aforesaid judgment reads as under :- "The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that his goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury." In this case, t....
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....fendant that it has bonafide adopted the trade mark MAX from the common word MAXIMUM is also without any substance because of the reason that the defendant has been using the trade mark MAX in relation to similar goods and not the mark MAXIMUM. The defendant is also using the trade mark MAX as dominant part of its corporate name which amounts to infringement under Section 29(5) of the Act. Therefore, the adoption and use of the name MAX is not bonafide. It is also pertinent to mention that on the date of adoption of the trade mark MAX either by the defendant's predecessor or by the defendant in the year 2011, they were fully aware about the trade mark and trading style of the plaintiff as the said name was extensively advertised in the area of Tamil Nadu. Thus, prima facie the plaintiff has been able to establish strong case for passing off. Trade Name 39. The defendant's contention has no force that since the name was registered under the Companies Act and under various provisions the defendant is entitled to use the name of the company, therefore, this Court should not pass the injunction order in view of settled law laid down by various High Courts in India. It is ....
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....ar of Trade Marks." Sub-section (2) (ii) of the said provision was incorporated with effect from September 15, 2003 when the Trade Mark Act, 1999 came also into operation from the said date. The said provision mandates that the companies not to be registered if a name is identical with or too nearly resembles the name which has been previously registered or a registered trade mark or a trade mark which is a subject of an application for registration under the Trade Marks Act, 1999. 41. It appears that the said provision of sub-section (2) of Section 20 was incorporated in order to avoid the civil litigation before the Court and duty was cast upon the Registrar of Companies to apply its mind at the time of granting the registration of the name of the company. In the present case, it is undisputed fact that when the defendant company was incorporated in the year 2007, the plaintiff was registered proprietor of two trade marks. The trade marks and trade names used by both the parties are almost identical, thus, it is evident that the Registrar of Companies granted the registration contrary to Section 20 of the Indian Companies Act. The Registrar of Company by complying the provi....
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....C 688, the Supreme Court has held that when an objection to jurisdiction is raised, the Court can proceed on the basis that the facts as pleaded by the initiator of the impugned proceedings are correct. 45. In Shri Rajmoti Industries v. Rajmoti Oil Mill Pvt. Ltd., 2005 (3) PTC 38 (Del.), where the plaintiff had averred in its plaint that it carried on business in Delhi and had referred to its two distributors for the purpose, it was taken as a sufficient compliance of the provisions of Section 134(2) of the Trade Marks Act, 1999. 46. Sub-section (2) of Section 134 has thus been construed to be much wider than normal grounds as laid down under Section 20 the CPC. The permissive provision allowing the person to file the suit or other proceedings where he carries on business or works for gain would not be limited to the carrying on of business in respect of the goods involved. After all, no such limitation is attached to these words. 47. It is not denied by the defendant during the course of hearing that the plaintiff's goods are available in every nook and corner of India including in the State of Tamil Nadu from where the defendant is carrying on its business. Thus, the....
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....me Court and various High Courts in the following cases: a) In Corn Products Refining Co. v. Shangrila Food Products Ltd., 1960 SC 142 it has been held as under: "15. The series of marks containing the common element or elements therefore only assist the applicant when those marks are in extensive use in the market. The onus of proving such user is of course on the applicant, who wants to rely on those marks. Now in the present case the applicant, the respondent before us, led no evidence as to the user of marks with the common element. What had happened was that Deputy Registrar looked into his register and found there a large number of marks which had either 'Gluco' or 'Vita' as prefix or suffix in it. Now of course the presence of a mark in the register does not prove its user all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the marks on the register. If any authority on this question is considered necessary, reference may be made of Kerly p. 507 & Willesden Varnish Co. Ltd. v. Young & Marten Ltd., (1922) 39 RPC 285 at p. 389. It also appear....
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.... c) In Express Bottlers Services Pvt. Ltd. v. Pepsi Inc. and Ors., 1989 (9) PTC 14 it has been held as under. "50. .... To establish the plea of common use, the use by other persons should be shown to be substantial. In the present case, there is no evidence regarding the extent of the trade carried on by the alleged infringers or their respective position in the trade. If the proprietor of the mark is expected to pursue each and every insignificant infringer to save his mark, the business will come to a standstill. Because there may be occasion when the malicious persons, just to harass the proprietor may use his mark by way of pinpricks .... The mere use of the name is irrelevant because a registered proprietor is not expected to go on filing suits or proceedings against infringers who are of no consequence ... Mere delay in taking action against the infringers is not sufficient to hold that the registered proprietor has lost the mark intentionally unless it is positively proved that delay was due to intentional abandonment of the right over the registered mark. This court is inclined to accept the submissions of the respondent No.1 on this point ... The respondent ....
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....d the defendant is entitled to use the same. Delay and Acquiescence 52. In the written statement, the defendant has made the statement that the defendant started business in 2000 through its predecessor and later in the year 2011 the defendant was renamed as Max Switchgears Pvt. Ltd. It is also alleged that since 2007 the website of the predecessor is available bearing the name MAX. In support of his submissions, the defendant has filed certain documents by list of dates dated 23rd September, 2013. First document is certificate dated 21st May, 2013 issued by the Chartered Accountant in which the statement of sales turnover and net profit is shown from the year 2007-2008. The defendant has also filed few invoices from the pear 2007 to 2013 with regard to the sale of Transformer Switch Board and other related material. No other document has been filed by the defendant to show the user of the predecessor earlier to the year 2007. Even the defendant has also not filed the advertisement figures or any newspaper or cogent and clear evidence in order to show that the defendant and its predecessor have been using the trade mark/trade name MAX since the year 2000 as alleged by the def....
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....hts can be lost by delay. The effect of a registered mark is so clearly defined in the statute as to be not capable of being misunderstood. Even if there is some delay, the exclusive right cannot be lost. The registered mark cannot be reduced to a nullity ..... " c) In the case of Hindustan Pencils Pvt. Ltd. Vs. M/s India Stationery Products Co., AIR 1990 DELHI 19 it was held as under : " ............ It was observed by Romer, J. in the matter of an application brought by J.R. Parkingnon and Co. Ltd., (1946) 63 RPC 171 at page 181 that "in my judgment, the circumstances which attend the adoption of a trade mark in the first instance are of considerable importance when one comes to consider whether the use of that mark has or has not been a honest user. If the user in its inception was tainted it would be difficult in most cases to purify it subsequently". It was further noted by the learned Judge in that case that he could not regard the discreditable origin of the user as cleansed by the subsequent history." d) In the case of M/s. Bengal Waterproof Lim. Vs. M/s. Bombay Waterproof Manufacturing Co. AIR 1997 SC 1398 it was held as under : "20 ........