To establish infringement and passing off, there should be a likelihood of confusion in consumers for the impugned marks: High Court of Delhi
Dishonest user cannot take shelter under Section 17(2) of the Trade Marks Act, 1999 to contend that the statute permits it to commit passing off. To establish a case of infringement and passing off there should be a likelihood of confusion being caused in the mind of a consumer taking into account the overall similarity between the impugned marks and the same was upheld by High Court of Delhi through the learned bench led by Justice Amit Bansal in the case of HAVELLS INDIA LIMITED vs. L RAMESH [CS(COMM) 20/2020] on 24.02.2022. The facts of the case are that Plaintiff’s company and its predecessors have been using the trademark/logo ‘STANDARD’ in relation to electrical products. Due to extensive and long usage, the trademark/trade name ‘STANDARD’ has gained immense popularity and reputation in relation to the electrical products among the plaintiff’s consumers and the general public. It is alleged that the defendant has not only copied the trademark of plaintiff but also copied the font thereof and has adopted the device of the triangle in the impugned trademark in which the letter ‘S’ is contained, so as to look deceptively similar to the logo of the plaintiff. The plaintiff has filed the present suit seeking permanent injunction against the defendant from infringing/passing off, inter alia, the trademark, copyright, logo, trade dress of the plaintiff and other ancillary reliefs. The plaintiff’s counsel submitted that due to extensive and long use of its products under the mark ‘STANDARD’, the plaintiff’s electrical products have gained immense popularity. It was further submitted that plaintiff has placed on record various sample invoices of the plaintiff selling its products under the mark ‘STANDARD’ as well as certificate of the Chartered Accountant certifying the gross turnover of the plaintiff in respect of products with the ‘STANDARD’ brand as well as the certificate of the Chartered Accountant showing the advertisement and selling promotion carried out by the plaintiff for the ‘STANDARD’ brand. The respondent’s counsel submitted that plaintiff did not disclose to the Court that while being granted registration, a condition was imposed on the plaintiff that it would not have any exclusive right to use either the word ‘STANDARD’ or ‘S’. In view of the facts and circumstances, the Court held that plaintiff is a prior user of the word mark ‘STANDARD’ as well as device marks and the defendant has adopted a deceptively similar mark wherein a dominant part of the defendant’s registered mark/label is being used. The Court observed that “to establish a case of infringement and passing off there should be a likelihood of confusion being caused in the mind of a consumer taking into account the overall similarity between the impugned marks. Dishonest user cannot take shelter under Section 17(2) of the Trade Marks Act, 1999 to contend that the statute permits it to commit passing off.”
 IN THE HIGH COURT OF DELHI AT NEW DELHI Judgment Reserved on : 04th February 2022 Judgment Delivered on : 24th February 2022 CS(COMM) 20 2020 HAVELLS INDIA LIMITED Plaintiff Through Mr. Tejveer Singh Bhatia Mr.Sudeep Chatterjee Mr. Kiratraj Sadana Ms.Ipshita Datta and Ms. Aamna Ahmad Advocates L RAMESH Through Ms. Shilpi M. Jain Advocate Defendant HON BLE MR. JUSTICE AMIT BANSAL AMIT BANSAL J. I.A.12276 2021For the reasons stated in the application the same is allowed. I.A.578 2020I.A.2481 2020By way of the present judgment I propose to decide the application filed on behalf of the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure 1908for grant of interim injunction pending the disposal of the suit and the application filed on behalf of the defendant CS(COMM) 20 2020 under Order XXXIX Rule 4 of the CPC seeking vacation of the ex parte ad interim injunction granted on 17th January 2020 in favour of the plaintiff. The plaintiff has filed the present suit seeking permanent injunction against the defendant from infringing passing off inter alia the trademark copyright logo trade dress of the plaintiff and other ancillary reliefs. In the suit it has been pleaded that: Plaintiff’s company and its predecessors have been using the trademark logo ‘STANDARD’ in relation to electrical products including switch gears fuse gears cables insulation wires miniature circuit breakers since the year 1958. ii) Plaintiff has obtained a number of trademark registrations in its favour for the mark ‘STANDARD’ in India as well as foreign jurisdictions such as Kuwait Africa Nigeria Saudi Arabia etc. iii) Due to extensive and long usage trademark trade name ‘STANDARD’ has gained immense popularity and reputation in relation to the electrical products among the plaintiff’s consumers and the general public. In support of this the plaintiff has given its gross annual turnover as well as the amount spent on advertising and sales promotion for the years 201819. iv) Plaintiff’s trademark ‘STANDARD’ has been declared a well known mark under Section 11(6) of the Trade Marks Act 1999 by this Court in the order dated 8th March 2016 in CS(OS) 2966 2015. v) Plaintiff’s trademark brand name and trading style ‘STANDARD’ has acquired distinctiveness and secondary meaning. CS(COMM) 20 2020 vi) Defendant has dishonestly adopted the impugned marks and has also copied the mark ‘STANDARD’ and has replaced the letter ‘D’ occurring at the end of the word STANDARD with the letter ‘O’ to form the impugned trademark ‘SS vii) It is alleged that the defendant has not only copied the trademark of plaintiff but also copied the font thereof and has adopted the device of the triangle in the impugned trademark in which the letter ‘S’ is contained so as to look deceptively similar to the logo of the plaintiff. viii) In June 2019 the plaintiff came across the defendant’s impugned mark which was published in the trademark journal in February 2019 and filed an opposition against the same. In August 2019 counter statement with respect to the defendant’s trademark application was filed by the defendant. x) Pursuant to an investigation conducted on behalf of the plaintiff the plaintiff came to know that defendant has not only copied trademarks but has also copied the packaging and other elements of the trade dress of the plaintiff’s products to deceive the consumers into believing that the impugned products are those of the plaintiff. xi) Defendant is using the impugned trademarks in relation to electrical goods such as MCB switch gears etc. which are identical to the goods being sold by the plaintiff. xii) In view of the fact that the plaintiff is the registered proprietor and prior adopter of the trademark ‘STANDARD’ it is entitled to protect its registered trademark as also its goodwill and reputation. CS(COMM) 20 2020 The suit came up for hearing before the Court on 17th January 2020 when finding a prima facie case in favour of the plaintiff this Court was pleased to pass an ex parte ad interim injunction order restraining the defendant from using the trademark ‘STANDARD’ ‘SS STANDARO’ or the logo device of and or any other logo device trade dress deceptively similar to the plaintiff’s registered The defendant in his written statement has inter alia pleaded that: The defendant is a registered proprietor for under Class 9 and has been using the said trademarks since 1st November 2003. The letters ‘SS’ in the defendant’s trademark initially stood for ‘Shree’ and ‘STANDARO’ but later ‘Shree’ was deleted by the iii) The goods of the defendants using the logo device are defendant. sold only in Tamil Nadu. iv) The defendant has never used any trademark in the name of ‘STANDARD’ or ‘SS STANDARD’ or v) The claim of the plaintiff is barred due to delay and laches as the plaintiff was aware of the user by the defendant since 2003 but chose to file the present suit in January 2020. vi) The plaintiff has not filed any rectification proceeding in respect of the registered trademark of the defendant. CS(COMM) 20 2020 vii) The word ‘STANDARD’ is common to trade and no one can claim exclusivity in respect to the word ‘STANDARD’. As per the Trademark Public Search Report more than 159 trademarks exist with the trademark ‘STANDARD’ as suffix or prefix or stand alone out of which almost 46 trademarks are still registered. viii) The defendant’s trademark logo different from that of the plaintiff’s trademark logo. ix) The order dated 8th March 2016 in CS(OS) 2966 2015 passed by this Court whereby the trademark of the plaintiff was held to be well known was in terms of compromise decree under Order XXIII Rule 3 of the CPC wherein the defendant had given no objection for the Counsel for the plaintiff made the following submissions: i) Various registrations granted in favour of the plaintiff in respect of the trademark ‘STANDARD’ as well as the logo in classes 7 9 and 11 demonstrate that the word ‘STANDARD’ has been part of all the trademark applications filed on behalf of the plaintiff. ii) Due to extensive and long use of its products under the mark ‘STANDARD’ the plaintiff’s electrical products have gained immense popularity. In this regard plaintiff has placed on record various sample invoices of the plaintiff selling its products under the mark ‘STANDARD’ as well as certificate of the Chartered Accountant certifying the gross turnover of the plaintiff in respect of products with the ‘STANDARD’ brand as well as the certificate of the Chartered Accountant showing the advertisement and selling CS(COMM) 20 2020 promotion carried out by the plaintiff for the ‘STANDARD’ brand from 201112 to 201819. iii) A comparison between the trademarks and packaging of the plaintiff’s products and the defendant’s products show that the defendant has adopted trademarks logos as well as packaging trade dress which is deceptively similar to that of the plaintiff. iv) Reliance is placed on the judgment by the Coordinate Bench of this Court in Telecare Network India Pt. Ltd. v. Asus Technology Pvt. Ltd. 2019 SCC OnLine Del 8739 to contend that the trademark ‘STANDARD’ is a suggestive mark and not a descriptive mark. Reliance is also placed on the judgment of this Court in Living Media India Ltd. v. Jitender V. Jain & Ors. 98 DLT 430. Per contra the defendant has advanced the following submissions: The plaintiff obtained the ex parte order dated 17th January 2020 on the basis of gross concealment. The plaintiff did not disclose to the Court that while being granted registration a condition was imposed on the plaintiff that it would not have any exclusive right to use either the word ‘STANDARD’ or ‘S’ or ii) For the last many years the plaintiff is using the trademark ‘STANDARD’ but are using the logo device and This information is available from the website of the CS(COMM) 20 2020 plaintiff. As on date it is contended that there is no in the It is denied that the defendant has ever used the flash device symbol plaintiff’s current logo. as a part of its trademark. iv) The word ‘STANDARD’ is a word occuring in the English language and no person can monopolise the use of the word ‘STANDARD’. In any case the defendant has never used the word ‘STANDARD’ but has been using the word ‘STANDARO’. I have considered the pleadings and contentions of the counsels for the parties. Plaintiff has been able to establish that it is the registered owner and has been using the trademark ‘STANDARD’ since the year 1958 in respect of electrical goods such as miniature circuit breaker switch gear isolator etc. Plaintiff is also the registered owner of the device mark which it has been using since 1969 as also the registered logo The plaintiff has given its annual sale figure of Rs.538.93 crores for the year 201819 and also advertisement expenses of Rs16.57 crores for the year 201819 which shows that plaintiff has spent large amount of money for the promotions of its products under the mark ‘STANDARD’. On account of the long usage and immense popularity of the electrical products of the plaintiff the word mark ‘STANDARD’ has attained a secondary meaning so as to identify the goods of the plaintiff. CS(COMM) 20 2020 It is an admitted position that the user of the plaintiff has been prior in time to that of the defendant. Though it is contended on behalf of the defendant that the plaintiff is no longer using the aforesaid trademarks the fact of the matter is that the aforesaid marks are still registered in favour of the plaintiff and the plaintiff is free to use the aforesaid trademarks whenever it desires. In an action for infringement where the defendant’s trademark is identical or deceptively similar with the plaintiff’s mark the test has to be likelihood of confusion or deception arising from the similarity of marks. 11. At the outset it would be apposite to reproduce a comparative table in respect of the trademarks being used by the plaintiff and the defendant: CS(COMM) 20 2020 Before 2015) After 2015) CS(COMM) 20 2020 12. From a comparison in the table above it is clear that the logo used by the defendant is deceptively similar to that of the plaintiff’s logo. Even the triangle device above the word ‘STANDARO’ with the letters ‘SS’ inside make the defendant’s logo deceptively similar to that of the plaintiff. Even though the defendant uses the word ‘STANDARO ’ as opposed to ‘STANDARD’ used by the plaintiff the fact of the matter is that both are written in the same font the same colour and in uppercase and consequently a reader may end up reading the word ‘STANDARO’ as ‘STANDARD’. 13. The mark of the defendantis also deceptively similar to that of the plaintiff’s mark which also uses the flash sign superimposed on the letter ‘N’. Though the defendant denies ever having used the flash device the plaintiff has placed reliance on the invoices filed along with the report of the Local Commissioner to contend that the defendant was using the flash device on its logo. 14. A comparison of the defendant’s packaging with that of the plaintiff’s packaging and the trade dress where also the aforesaid marks logos and blue and white colour scheme have been used show a great degree of similarity. It emerges from the above that the adoption of the marks by the defendant in the packaging on its product being deceptively similar to that of the plaintiff’s was not bona fide. Clearly the attempt of the defendant has been to ride on the goodwill of the plaintiff. In my view there is a likelihood of confusion being caused in the mind of a consumer taking into account the overall similarity between the impugned marks of the defendant and those of CS(COMM) 20 2020 the plaintiff and the plaintiff has been able to prima facie establish a case of infringement and passing off. It is the defendant’s own case that it does not use the word mark ‘STANDARD’ and nor does it intend to do so. The plaintiff has placed reliance on the judgment of this Court in Telecare India Networkin respect of its contention that the word ‘STANDARD’ is a suggestive mark and is therefore entitled to registration. In my prima facie view the word ‘STANDARD’ is a suggestive mark and not a descriptive mark. It was contended on behalf of the defendant that there was a condition attached at the time of granting registration to the plaintiff that the plaintiff would have no right for the exclusive use of the word ‘STANDARD’ or of or of the letter ‘S’ and this was concealed at the time of grant of ex parte injunction on 17th January 2020. I do not agree with the said contention of the defendant. The registration certificates were duly filed by the plaintiff and therefore there can be no question of concealment. In any case the said disclaimer cannot come in the way of the claim of the plaintiff with regard to passing off nor would it come in the way of comparison of the label device marks of the plaintiff and the defendant which have to be seen as a whole for purpose of grant of relief of infringement on account of the long usage of the word mark ‘STANDARD’ which has attained a secondary meaning so as to identify the goods of the plaintiff. In this regard reference may be made to Shree Nath Heritage Liquor Pvt. Ltd. V. M s. Allied Blender & Distillers Pvt. Ltd. 63 PTC 551 Delhi). The relevant portions of this judgment are set out below: CS(COMM) 20 2020 “15. We first need to discuss the effect of the disclaimer on the word ‘Choice’ in two of the respondent’s trademark registrations. In the decision reported as AIR 1955 SC 558 Registrar of Trademarks v. Ashok Chandra Rakhit regarding passing off the Supreme Court held that statutory disclaimer will have no bearing if the respondent’s trademark has acquired secondary meaning. In the facts of the present case our prima facie view is in favour of the secondary meaning of the respondent’s mark ‘Officer’s Choice’ in light of the respondent’s long use and sales under the said trademark. Hence the question of disclaimer is not relevant to the question of passing off in the present case. 16. Turning to the effect of disclaimer with respect to trademark infringement it is pertinent to note at this point that only two registrations of the respondent i.e. registrations No. 489582 and 538927 have the word ‘Choice’ disclaimed. The respondent has several trademark registrations albeit some of which are labels for alcoholic beverages and a host of other goods for ‘Officer’s Choice’ without any disclaimer. 17. A disclaimer in a trademark does not travel to the market place. Hence for the purpose of comparison of two marks the disclaimed portion can also be considered. Therefore the marks in the two registrations of the respondent with a disclaimer can be considered as a whole even for infringement.” It has also been held in the said judgment that a subsequent dishonest user cannot take shelter under Section 17(2) of the Trade Marks Act 1999 to contend that the statute permits it to commit passing off. Admittedly the plaintiff is a prior user of the word mark ‘STANDARD’ as well as device marks and the defendant has adopted a deceptively similar mark wherein a dominant part of the defendant’s registered mark label is being used. 19. The plaintiff has made out a prima facie case in its favour for grant of interim injunction. The balance of convenience also is in favour of the CS(COMM) 20 2020 plaintiff and against the defendant in as much as use by the plaintiff of the marks logos according to the plaintiff is prior to that by the defendant. 20. During the course of the submissions the counsel for the defendant made the submission that the defendant is prepared to give up the colour scheme of blue and white being used by the defendant so that there is no similarity with the orange white and blue colour scheme used by the plaintiff and also that the defendant is willing to amend the word mark ‘STANDARO’ to being used in lowercase and in a different font in the script so that there is no visual similarity with the mark ‘STANDARD’ being used by the plaintiff. 21. The aforesaid changes suggested by the defendant were not acceptable to the plaintiff. 22. The ex parte injunction granted by this Court on 17th January 2020 was on the basis of the impugned marks being used by the defendant at that point of time. The said injunction order covered trademarks ‘STANDARD’ ‘SS STANDARO’ and the logo device and 23. This injunction order would cover all that are identical deceptively similar to the trademarks logos and packaging of the plaintiff. Therefore it is not for the Court at this stage to determine whether the proposed changes in the trademark by the defendant would be covered within the ambit of the injunction order passed by this Court on 17th January 2020. In any case the said marks have not been placed before this Court. The defendant may if so advised use the amended label logo subject to the right of the plaintiff to challenge the same in appropriate proceedings. CS(COMM) 20 2020 25. The counsel for the defendant further submitted that the defendant is a small time trader and should be allowed to sell the goods seized by the Local Commissioner since they are of immense value for a trader like the defendant. The defendant accordingly sought modification of the order dated 17th January 2020 to the extent that he may be permitted to sell the goods seized by the Local Commissioner. 26. The goods have been duly described by the Local Commissioner in the report dated 07th February 2020. The goods were given on superdari to the defendant with the undertaking to produce the seized goods as and when 27. Taking into account that the defendant is a small time trader the defendant is permitted to sell the aforesaid goods subject to the following called by this Court. The defendant shall only put the aforesaid goods for sale after erasing the impugned marks logos from the products as well as the packaging. The defendant shall file an affidavit to the effect that other than goods which were seized by the Local Commissioner and handed over on superdari basis the defendant or his agents stockiest distributors shall not in any manner sell advertise or in any manner deal with the goods bearing the impugned trademarks and logos. III. The defendant shall also undertake to give detailed and correct accounts of the sale of the said goods done pursuant to orders of this Court. 28. Accordingly the order dated 17th January 2020 is confirmed subject to the aforesaid modification till the disposal of the suit. I.A. No. 578 2020 CS(COMM) 20 2020 of the plaintiff under Order XXXIX Rules 1 and 2 CPC and I.A. No. 2481 2020 of the defendant under Order XXXIX Rule 4 CPC stand disposed of in above terms. CS(COMM) 20 2020 & I.A.5063 202129. List before the Joint Registrar on 14th April 2022. AMIT BANSAL J. FEBRUARY 24 2022 CS(COMM) 20 2020 