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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.”

Click here to read the Judgment

Judgment reviewed by – Shristi Suman