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1999 Supreme(Cal) 499
High Court Of Calcutta
Sen Gupta
HONDA MOTOR COMPANY LIMITED - Appellant
Versus
KEWAL BROTHERS - Respondent
G. A. 1637 Of 1999 And C. S. No. 236 Of 1999
Decided On : 09/09/1999
Aniruddha Bose, Biswarup Gupta, GOUTAM CHAKRABORTY
The classification of goods in the Trade and Merchandise Marks Act is exhaustive and that the defendants were entitled to the protection of their registration.
Headnote:
HONDA - TRADEMARK INFRINGEMENT - PASSING OFF - CLASSIFICATION OF GOODS - BONA FIDE USER - DELAY AND ACQUIESCENCE - INTERIM INJUNCTION - [HONDA] - [TRADEMARK INFRINGEMENT, PASSING OFF, CLASSIFICATION OF GOODS, BONA FIDE USER, DELAY AND ACQUIESCENCE, INTERIM INJUNCTION]
Fact of the Case:
Honda, a renowned manufacturer of automobiles, filed a suit against the defendants for infringement of trademark and passing off. Honda claimed that the defendants were using the 'honda' trademark for auto lamps and auto bulbs, which was an infringement of their registered trademark. The defendants argued that their use of the mark was bona fide and that they had been using it since 1970, prior to Honda's entry into the Indian market. They also argued that the goods were different and there was no likelihood of confusion.
Finding of the Court:
The court held that there was no infringement of trademark as the defendants' product was registered in class 11 for automobile bulbs and lamps, whereas Honda's registration was in class 12 for motor cycles/motor scooters etc. including parts and fittings thereof. The court also held that there was no passing off as the defendants had been using the mark bona fide since 1970 and Honda had not established any reputation or goodwill in India prior to that date. The court further held that the delay and acquiescence on the part of Honda in taking action against the defendants for over 28 years was a significant factor in favor of the defendants.
Issues: 1. Whether the defendants' use of the 'honda' trademark for auto lamps and auto bulbs constituted infringement of Honda's registered trademark. 2. Whether the defendants' use of the 'honda' trademark constituted passing off. 3. Whether the defendants' use of the mark was bona fide. 4. Whether Honda had established any reputation or goodwill in India prior to the defendants' adoption of the mark. 5. Whether the delay and acquiescence on the part of Honda in taking action against the defendants was a significant factor in favor of the defendants.
Ratio Decidendi: 1. The court held that there was no infringement of trademark as the defendants' product was registered in class 11 for automobile bulbs and lamps, whereas Honda's registration was in class 12 for motor cycles/motor scooters etc. including parts and fittings thereof. The court relied on the principle that the classification of goods in the Trade and Merchandise Marks Act is exhaustive and that the defendants were entitled to the protection of their registration. 2. The court held that there was no passing off as the defendants had been using the mark bona fide since 1970 and Honda had not established any reputation or goodwill in India prior to that date. The court relied on the principle that in order to succeed in a passing off action, the plaintiff must establish that it had a reputation or goodwill in the mark prior to the defendant's adoption of the mark. 3. The court held that the defendants' use of the mark was bona fide as they had adopted it in 1970 and had been using it openly and to the notice and knowledge of all persons concerned since then. The court also relied on the defendants' explanation that they had adopted the mark as a token of gratitude to a Japanese manufacturer who had helped them procure machinery for manufacturing lamps and bulbs. 4. The court held that Honda had not established any reputation or goodwill in India prior to the defendants' adoption of the mark. The court relied on the fact that Honda had not advertised or sold its products in India prior to 1970 and that the only evidence of its reputation was a solitary advertisement in a National Geographic magazine in 1971. 5. The court held that the delay and acquiescence on the part of Honda in taking action against the defendants for over 28 years was a significant factor in favor of the defendants. The court relied on the principle that delay and acquiescence can amount to consent and that in this case, Honda's inaction for such a long period of time suggested that it had consented to the defendants' use of the mark.
Final Decision: The court vacated the interim injunction that had been granted against the defendants, but ordered them to keep an account of their monthly sales and to forward copies of such statements to the plaintiff's advocate on record. The court also expedited the hearing of the suit and directed the defendants to file their written statements within four weeks from the date of the order.
( 1 ) IN this Motion question is whether ad interim order of injunction already granted in favour of the plaintiff is to be confirmed or vacated or otherwise be modified or not. This Motion is opposed by the defendants.
( 2 ) THE motion is arising out of a suit which is an action against infringement of trademark coupled with passing off against the defendants. Plaintiff/petitioner claims to be a renowned reputed manufacturer and seller of automobiles under the trade name 'honda'. This Honda mark was registered in Japan in 1948. By reason of the excellence of its products, advertisements and media expositions the reputation of this trademark travelled beyond its Japan border and to all places over the world including India. In substances this mark of the plaintiff has transborder reputation. This mark 'honda' was got registered by the plaintiff in various countries in the world. It is claimed in the petition that since 1957 mark 'honda' has been present in India and thereafter from time to time they have also entered into various collaboration agreements such as Hero Honda for motor cycles and Honda Siel Power Products Ltd. for manufacturing generators. The products of Honda were imported in India as early as 1950s and 1960s. In India in 1961 the 'honda' trademark has been registered in class 12 (for motor cycles/motor scooters etc. including parts and fittings thereof ). It also registered its mark 'honda' for internal combustion engines not meant for land vehicles in 1964. There are two other registrations in favour of the plaintiff which have also been granted in the same name in 1982 and 1984 respectively for generators/pumps etc. in class 7 and for vehicles, apparatus for locomotion. It is claimed in the petition that the plaintiff on or about August 1998 for the first time came to know that the defendants were selling autolamps and autobulbs using the aforesaid trademark 'honda'. Immediately thereafter a notice was served upon the defendants calling upon them to desist from using such mark. Upon enquiry and investigation it revealed that the aforesaid mark 'honda' got to be registered by the defendants in class 11 in respect of lamps and bulbs. Such registration of the mark 'honda' in favour of the defendants is wrongful and illegal. The use of the mark 'honda' by the defendants is deceitful and infringing of the mark of the plaintiff. The defendants, use of the mark 'honda' is also wrongful passing off.
( 3 ) MR. Biswarup Gupta, learned Senior Counsel with Mr. Aniruddha Bose, learned Counsel, elaborating and highlighting the factual aspect of the petition submits that the present action is founded on the principles of passing off and infringement of the plaintiffs trademark 'honda'. The registration of the plaintiff covers motorcycles, motor scooters, trucks, motor cars, motor tricycles, bicycles and parts thereof and fittings therefor. The Fourth Schedule to the Trade and Merchandise Marks Act, which contains the classification list specifically provides - "parts of an article or apparatus are, in general, classified with the actual article or apparatus, except where such parts constitute article included in other classes. " The defendants, however, are using the mark 'honda' in respect of auto lamps and describing their product as such.
( 4 ) HE submits further that Lamps and autolamps are to be treated as different items, autolamps constitute parts of a car which has no other independent use. In support of his submission he relies on a decision reported in JT 1999 (3) page 404 (Nirula 's Corner House Pvt. Ltd. v. Collector of Customs, Bombay ). Applying the test in Nirula's case he argues auto lamps and auto bulbs are parts of cars.
( 5 ) HE also draws my attention to the Visual Dictionary which according to him shows auto lamps are part and parcel of the car. Therefore, he argues the use of the mark 'honda' by the defendants in respect of auto lamps constitute infringement of plaintiffs registered
