2013 Supreme(Del) 662

High Court of Delhi
J.R. MIDHA, J.
The Timken Company
Versus
Timken Services Private Ltd.
CS(OS) No. 3 of 2010 & I.A. No. 21 of 2010
Decided on : 30-05-2013.

The adoption of a trade mark or copyright that is identical or deceptively similar to an existing registered trade mark or copyright, with the intention of riding on the reputation and goodwill of the existing mark or copyright, amounts to infringement and passing off.

Headnote:

In a suit for permanent injunction for restraining the defendant from infringing the plaintiff’s registered trade mark ‘Timken’, copyright, passing off, rendition of accounts, delivery, etc., the court held that the plaintiff has made out a strong prima facie case for infringement of trade mark, copyright, and passing off. The court observed that the defendant’s adoption of the plaintiff’s trade mark and copyright was dishonest and fraudulent from the very inception and that the defendant wanted to ride on the reputation and goodwill of the plaintiff. The court further observed that the balance of convenience lies in favor of the plaintiff and against the defendant and that the plaintiff would suffer irreparable loss and injury in case the defendant is not restrained from using the plaintiff’s registered trade mark.

Fact of the Case:

The plaintiff, a company incorporated in the USA, is the registered proprietor of the trade mark ‘Timken’ in classes 4, 6, 7, 9, 12, 16 and 37. The plaintiff adopted the trade mark ‘Timken’ more than 100 years ago in 1899. The plaintiff’s products have been available in India under the trade mark ‘Timken’ since 1922. The plaintiff set up a joint venture company in India under the name Tata Timken Limited in 1987 which was changed to Timken India Ltd. on 2nd July 1989. The defendant is using the plaintiff’s trade mark ‘Timken’ as trade name and trade mark in similar style, format and colour as that of the plaintiff as well as use of domain name www.timkenservice.com.

Finding of the Court:

The court found that the plaintiff has been able to make out a strong prima facie case for infringement of trade mark as the plaintiff's mark ‘Timken’ has acquired reputation and goodwill, the adoption of the word ‘Timken’ is ex facie fraudulent and mala fide from the very inception, permitting the defendant to carry on his business with the mark ‘Timken’ would in fact be putting a seal of approval of the Court on the dishonest, illegal and clandestine conduct of the defendant, permitting the defendant to sell his product with the mark ‘Timken’ would definitely create confusion in the minds of the consumers, permitting the defendant to sell its product with the mark ‘Timken’ would amount to encouraging the defendant to practice fraud on the consumers, permitting the defendant to carry on his business in the name of ‘Timken’ would lead to eroding the reputation and goodwill acquired by the plaintiff over a passage of time, the defendant's deliberate misrepresentation has the potentiality of creating serious confusion and deception for the public at large and the consumers have to be saved from such fraudulent and deceitful conduct of the defendant, permitting the defendant to sell its products with the mark ‘Timken’ would be encroaching on the reputation and goodwill of the plaintiff and this would constitute invasion of proprietary rights vested in the plaintiff, and honesty and fair play ought to be the basis of the policies in the world of trade and business plaintiff is likely to ultimately succeed in the suit and in that view of the matter, it is in the interest of justice that the relief of temporary injunction should be given at this stage because the onus and burden is on the defendant to show that the user and adoption at the initial stage was honest. Honesty of adoption at the initial stage has to be established by the defendant which appears to be a very heavy burden to discharge. Since the adoption of the mark itself is dishonest and fraudulent, mere delay in bringing action for infringement of trade mark cannot be ground to deny the injunction to the plaintiff.

Issues: Whether the defendant has infringed the plaintiff’s registered trade mark ‘Timken’, copyright, and passing off.

Ratio Decidendi: The court held that the plaintiff has made out a strong prima facie case for infringement of trade mark, copyright, and passing off. The court observed that the defendant’s adoption of the plaintiff’s trade mark and copyright was dishonest and fraudulent from the very inception and that the defendant wanted to ride on the reputation and goodwill of the plaintiff. The court further observed that the balance of convenience lies in favor of the plaintiff and against the defendant and that the plaintiff would suffer irreparable loss and injury in case the defendant is not restrained from using the plaintiff’s registered trade mark.

Final Decision: The court granted an injunction restraining the defendant from using the plaintiff’s registered trade mark ‘Timken’, passing off its goods/services/business as and for the goods/services/business of the plaintiff, infringing the plaintiff’s copyright in the artistic work/representation/ logo employed by the plaintiff, and using the domain name/website address www.timkenservices.com or any other website with the name ‘Timken’, till the disposal of the suit.