TM Infringement| Competing Marks Not Identical In All Aspects But Similar In Phonetic Representation Can Be Interpreted As ‘Deceptively Similar’: Delhi HC
|Recently, the Delhi High Court restrained the Defendants and anyone acting on their behalf, directly or indirectly, from using the trademark ‘ELEKTRON’ in respect of electric wires and cables.
However, the High Court appreciated that an outright injunction may inadvertently cause undue hardship to the Defendants, especially in relation to goods that have already been manufactured and bear the disputed mark.
Therefore, recognizing the need for a balanced approach, the High Court stated that the injunction granted herein shall apply prospectively and shall not encompass products that have already been manufactured as on the date of this order.
A Single Judge Bench of Justice Sanjeev Narula observed that “While it is true that trademark law requires vigilance on the part of a rights holder, it is also well-established that mere delay in initiating legal proceedings does not necessarily negate a party’s rights. In matters of trademark infringement, where the key objective is to prevent confusion in the marketplace and protect the goodwill of businesses, a delay is not always of substantial importance. Mere delay or acquiescence cannot defeat the claim for passing off when the Plaintiffs can establish continual and concurrent use of the trademark”.
The Bench highlighted that even though ‘ELEKTRON’ is part of the Defendants’ first registered device, the use thereof for wires and cables subsequent to the Plaintiffs’ adoption would amount to taking unfair advantage of the Plaintiffs’ reputation in the trademark ‘ELEKTRON’.
“Defendants’ use would be detrimental to Plaintiff’s’ distinctive character and reputation associated with wires and cables. The phonetic similarities between the marks, identity of the goods, Plaintiffs’ prior use of the ‘ELEKTRON’ mark for electric wires and cables, their reputation in the market and other factors, lead the Court to hold that use of ‘ELEKTRON’ by Defendants in connection with wires and cables is likely to confuse general public having imperfect recollection”, added the Bench.
Senior Advocate Chander M Lall appeared for the Plaintiff, whereas Advocate Priyanka Sethia appeared for the Defendant.
The brief facts bring to the fore an intricate trademark dispute concerning the term 'ELEKTRON'. When the commercial journey of the parties commenced, this term was embodied in two different devices being used concurrently, which were subsequently also registered independently under the umbrella of the two litigating parties, each confined to its exclusive product classification. This peaceful co-existence, however, has been breached due to an emerging overlap in the use of 'ELEKTRON' for products - electric wires and cables. Defendants have a prior registration in the category/class in which the above products fall, which is vehemently contested by Plaintiffs based on their prior use. Plaintiffs, while pressing for an injunction alleging infringement and passing off, raise doubts on Defendants' statutory rights.
The first Plaintiff, a partnership firm known as Paragon Cable India, are a renowned entity in the manufacture and supply of wires and cables, operating under the 'ELEKTRON'/ ' trademark. The second Plaintiff coined and adopted the 'ELEKTRON' trademark in 1998, which has been in consistent and extensive use ever since, either through the first Plaintiff or through other entities detailed in the plaint. He has been accorded registration of the mark “ELEKTRON" in class 07. The Defendants have copied the Plaintiffs' registered 'ELEKTRON' trademark in a stark and unabashed manner, presumably to leverage the goodwill and reputation that the Plaintiffs have built over the years.
After considering the submission, the Bench observed that the conspicuous similarity between the competing marks is the term 'ELEKTRON'.
Although a comparison of the devices adopted by both parties reveals structural dissimilarities, their phonetic identity cannot be overlooked, as the core term in the marks is 'ELEKTRON', the Bench highlighted that trademarks serve to identify the source of goods or services and facilitate their distinguishment from other related products in the marketplace.
“In the given scenario, the trademarks are visually distinct, but phonetically identical due to the shared term 'ELEKTRON'. Thus, despite the ocular differences, the phonetic similarity could easily lead to confusion, particularly in the contexts where the product's name is spoken rather than written, such as in verbal recommendations or requests”, added the Bench.
Referring to the matter of Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Limited. [(2018) 9 SCC 183] decided by the Supreme Court, the High Court held that the proprietor of a registered trademark cannot enjoy a monopoly over the entire class of goods.
Lastly, the High Court directed the Defendants to file an affidavit providing a detailed account of all existing stock, including but not limited to, the number of units, batch numbers, and product descriptions for wires and cables bearing the ‘ELEKTRON’ mark, within two weeks.
This will ensure that Defendants are not unjustly penalized for goods produced prior to the issuance of the injunction, while still safeguarding the Plaintiffs’ rights and the public’s interest against any further potential confusion or misrepresentation, added the Court.
Cause Title: PARAGON CABLE INDIA and Anr. v. ESSEE NETWORKS PVT LTD and Ors.
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