Use of a similar mark – even with respect to different business – amounts to trademark infringement
28 September 2012
Use of a trademark by anyone which is deceptively similar to that of a plaintiff – even if in relation to a business not carried on by the plaintiff – amounts to trademark infringement. This has been laid down in a 2009 judgment of the Delhi High Court in the case of General Electric Company v. H Singh & Ors 2009(39) PTC 541(Del). In this case, the issue of trademark infringement has been raised with respect to the use of deceptively similar marks in relation to different business.
In this case, the plaintiff, General Electric, a registered proprietor of the trademark General Electric and GE and the GE monogram in relation to a number of services and goods, instituted a suit against the defendants, H Singh & Ors, restraining them from using the trademark GE LITE.
Through an ex parte order, H Singh & Ors were restrained from using the trademark GE LITE or any other mark in infringement of General Electric’s registered trademark. Summons of the suit issued to H Singh & Ors could not be served due to a report that there was no such firm or person from the address of H Singh & Ors given by General Electric.
General Electric applied for substituted service by publication, and H Singh & Ors were ordered to be proceeded against ex parte, and the interim order made absolute during the pendency of the suit.
General Electric submitted that they are the registered proprietor, including in India, of the GE monogram, GENERAL ELECTRIC and GE trademarks in relation to a wide spectrum of goods and services and that GE alone is equally well-known as General Electric and is always associated with the trademarks.
The distinguishing feature of their trademark and the way it is remembered by most is as GE.
H Singh & Ors sought registration of GE LITE for manufacture of all kinds of motorcycle boxes included in Class 12, and have claimed use since 2000. The Court opined that since the evidence of General Electric having remained unchallenged by H Singh & Ors, General Electric is entitled to the relief of permanent injunction.
General Electric also claimed ancillary relief of delivery, accounts, recovery of damages and costs. The Court held that General Electric, having not even been able to furnish the address from where H Singh & Ors are selling and functioning, no useful purpose will be served in granting the relief of accounts or delivery to them.
With respect to damages, the Court held that the publication of the advertisement in the Trade Mark Journal shows at least an attempt by H Singh & Ors to copy the trademark of General Electric.
The Court averred that although H Singh & Ors had added LITE to the GE trademark, that would not make the mark of H Singh & Ors distinguishable from that of General Electric. Anyone seeing GE, even with the suffix LITE, will still associate it with General Electric and is likely to believe that the said trademark and the business being carried on and/or the goods or services being supplied thereunder are those of General Electric.
The Court observed that the mark GE LITE has nothing to do with the motorcycle boxes in relation to which H Singh & Ors has claimed to be using the same. There does not appear to be any reason for H Singh & Ors to adopt the said trademark other than to benefit from the goodwill and reputation of General Electric to their undue enrichment and to the detriment of General Electric.
The Court opined that undoubtedly the use of General Electric’s trademark by anyone else, even if in relation to a business not being carried on by General Electric, causes loss and injury to the company.
The Court decided the suit in favour of General Electric, granting a permanent injunction restraining H Singh & Ors, and their partners, servants and agents, from manufacturing, distributing, selling, offering for sale, advertising directly or indirectly or dealing in any other manner in motorcycle boxes or in any other goods or services in or under the trademark GE LITE or under any other trademark or name similar to or deceptively similar to General Electric’s GE or GE monogram trademark and having the effect of passing off their goods and services as those of General Electric.
The Court awarded damages in the sum of Rs100,000 (US$2,170) in favour of General Electric Company and against H Singh & Ors jointly and severally.
The Court also held that General Electric shall be entitled to interest at 15% per annum on damages awarded with effect from 90 days of the date of the decree, and shall also be entitled to costs of the suit.
