Back
High Court of Delhi
MANMOHAN SINGH, J.
The Royal Bank of Scotland Group Plc
Versus
Sharekhan Limited
CS(OS) No. 1023 of 2013
Decided On: 07-11-2014
In a trademark infringement and passing off case, the Delhi High Court held that the defendant's mark 'MAXTRADE' was deceptively similar to the plaintiff's registered trademark 'MAXTRAD' and was likely to cause confusion among consumers. The court also found that the plaintiff's mark was well-known and had acquired a secondary meaning, and that the defendant's use of the mark was dishonest and intended to ride on the reputation of the plaintiff's mark. The court granted an injunction restraining the defendant from using the mark 'MAXTRADE' or any other mark deceptively similar to the plaintiff's mark.
Fact of the Case:
The plaintiff, a British part-nationalized banking and insurance company, owned the trademark 'MAXTRAD' for a wide range of banking and financial services. The defendant, an Indian company, adopted the mark 'MAXTRADE' for its online trading services. The plaintiff filed a suit for permanent injunction, alleging infringement of trademark, passing off, unfair competition, and dilution and tarnishment of its mark.
Finding of the Court:
The court found that the defendant's mark 'MAXTRADE' was deceptively similar to the plaintiff's registered trademark 'MAXTRAD' and was likely to cause confusion among consumers. The court also found that the plaintiff's mark was well-known and had acquired a secondary meaning, and that the defendant's use of the mark was dishonest and intended to ride on the reputation of the plaintiff's mark.
Issues: 1. Whether the defendant's mark 'MAXTRADE' was deceptively similar to the plaintiff's registered trademark 'MAXTRAD' and was likely to cause confusion among consumers? 2. Whether the plaintiff's mark 'MAXTRAD' was well-known and had acquired a secondary meaning? 3. Whether the defendant's use of the mark 'MAXTRADE' was dishonest and intended to ride on the reputation of the plaintiff's mark?
Ratio Decidendi: The court held that the defendant's mark 'MAXTRADE' was deceptively similar to the plaintiff's registered trademark 'MAXTRAD' and was likely to cause confusion among consumers. The court also found that the plaintiff's mark was well-known and had acquired a secondary meaning, and that the defendant's use of the mark was dishonest and intended to ride on the reputation of the plaintiff's mark. The court relied on the following principles of law: 1. A registered trademark is infringed by a person who uses a mark that is identical with or deceptively similar to the registered trademark in relation to goods or services for which the trademark is registered, and in such a manner as to render the use of the mark likely to be taken as being used as a trademark. 2. A registered trademark is infringed by a person who uses a mark that is similar to the registered trademark and the goods or services covered by such registered trademark, and the registered trademark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trademark. 3. Passing off is an action that protects the goodwill of a business and prevents misrepresentation in the course of trade. An essential ingredient of passing off is goodwill, which is local in character and divisible.
Final Decision: The court granted an injunction restraining the defendant from using the mark 'MAXTRADE' or any other mark deceptively similar to the plaintiff's mark.
Manmohan Singh, J.
1. The present suit for permanent injunction restraining passing off; dilution & tarnishment; unfair competition; damages; rendition of accounts; delivery up; etc. has been filed by the plaintiff against the defendant in respect of the trademark MAXTRADE. Along with the suit, plaintiff also filed an application under Order 39 Rule 1 and 2 being I.A.No.8797/2013.
2. The suit along with said interim application was listed before Court on 24th May, 2013. After hearing, detailed ex-parte order was passed restraining the defendant, its officers, agents, servants, etc. from using the trade mark MAXTRADE or any other mark that is identical/deceptively similar to the plaintiff’s registered trade/service mark MAXTRAD in respect of the same services that are being offered by the plaintiff.
3. Upon service of interim order, the defendant filed an application under Order 39 Rule 4 CPC for vacation of an ex-parte interim order being I.A. No. 10569/2013. No written statement was filed and accordingly the right to file the written statement was closed vide order dated 24th September, 2013. However, the defendant filed a written statement along with the counter claim only recently on 22nd September, 2014. In the meanwhile, the plaintiff filed an application under Order 39 Rule 2A and 5 CPC being I.A. No. 20679/2013 By this order, I propose to decide the three pending applications.
4. Brief facts of the present case as per the plaint are that the plaintiff, is a British part-nationalized banking and insurance company formed under the laws of United Kingdom. It has been stated that the plaintiff dates back to the year 1727 and now the plaintiff along with its subsidiaries is presently one of the largest banking groups in the world with around 33 million customers and around 3700 branches globally across all brands. The plaintiff has taken pioneer initiatives such as introduction of the first over-draft facility in 1728, mobile banks in 1946, and a full-fledged system of online banking in 1997.
5. The plaintiff is engaged in offering a wide variety of banking and financial services to its customers such as transaction banking, risk management, investment banking, private banking and asset management. Additionally, the plaintiff it also provides a diverse range of products including personal loans, credit cards, savings accounts, financial planning, investment and insurance services.
6. It has been stated that one of the most popular marks of the plaintiff is the trademark/service mark “MAXTRAD”, among other well known registered marks such as THE ROYAL BANK OF SCOTLAND and RBS. The first use of the mark MAXTRAD was made in the year 1999. The mark MAXTRAD was acquired by the Plaintiff from ABN Amro North America Inc. in the year 2007. The products/services under the mark MAXTRAD are currently available in approximately 35 countries including in India, where the use of the mark dates back to the year 2004.
7. It has been explained that MAXTRAD is plaintiff’s market-leading and internet-based system that allows companies to access a wide range of services in order to manage trade finance and supply chain management transactions globally. With MAXTRAD, companies can initiate trade transactions and enquire on facilities, outstanding documentary credits and collections. The plaintiff also offers access to commercial matters of credit, guarantees, documentary collections, e-invoicing and supply chain finance among other solutions under the mark MAXTRAD.
8. Plaintiff’s services under the mark MAXTRAD include MaxTrad Enterprise which enables large multinational companies to collaborate online with their supply chain partners around the world and MaxTrad Express which supports small-to-medium sized companies that are new to global trade or gradually expanding the scope of their overseas sourcing and/or sales activities.
9. The plaintiff’s website at www.maxtrad.com provides extensive information regarding its services under th
An indispensable Tool for Legal Professionals, Endorsed by Various High Court and Judicial Officers
Please visit our Training & Support
Center or Contact Us for assistance
Scan Me!
India’s Legal research and Law Firm App, Download now!
For Daily Legal Updates, Join us on :
Back to top
