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2014 Supreme(Del) 2566
High Court of Delhi
MANMOHAN SINGH, J.
Deere & Co. & Another
Versus
S. Harcharan Singh & Another
CS(OS). No. 3760 of 2014
Decided on: 05-12-2014
For the Plaintiffs:Pravin Anand, with Vaishali Mittal, D. Neha Reddy, Siddhant Chamola, Advocates.
The judgment established the exclusive rights of the plaintiffs to their trademarks and trade dress under the Trade Marks Act, 1999, and emphasized the protection of color combinations as trademarks.
Headnote:
Trademark Infringement - Agricultural Equipment - Trade Marks Act, 1999 - Section 2(m), Section (zb) - Section 28, Section 29, Section 135
Fact of the Case:
The plaintiffs filed a suit for permanent injunction against infringement, dilution of trade marks, passing off trade dress, unfair competition, rendition of accounts, delivery up and damages. The plaintiffs claimed that the defendants were manufacturing and selling lookalikes of the plaintiffs’ farm equipment under their trading name 'SURINDERA', infringing the plaintiffs’ registered trademarks and trade dress.
Finding of the Court:
The court found that the plaintiffs had a strong prima facie case in their favor and that the balance of convenience lay in favor of the plaintiffs. The court granted an interim injunction restraining the defendants from manufacturing, selling, or advertising agricultural products using the plaintiffs’ trademarks and trade dress.
Issues: The issues involved trademark infringement, passing off, and dilution of trade marks, as well as the registration and protection of color combinations as trademarks under the Trade Marks Act, 1999.
Ratio Decidendi: The court relied on the Trade Marks Act, 1999, particularly Section 2(m), Section (zb), Section 28, Section 29, and Section 135, to establish the plaintiffs’ exclusive rights to their trademarks and trade dress. The court also cited precedents to support the finding of likelihood of confusion and passing off.
Final Decision: The court granted an interim injunction in favor of the plaintiffs, restraining the defendants from using the plaintiffs’ trademarks and trade dress in relation to agricultural equipment and vehicles.
Manmohan Singh, J.
I.A. No.24478/2014
This is an application filed by the plaintiffs under Order 13 Rule 1 read with Section 151 CPC seeking exemption from filing the originals of the documents.
For the reasons stated in the application, the same is allowed, subject to originals being produced at the time of admission/denial of the documents. The application is disposed of.
I.A. No.24479/2014 (U/s 149 CPC)
Learned counsel for the plaintiffs states that he would be filing the court fee within one week. In view of the statement made by the learned counsel, the application is disposed of.
CS(OS) No.3760/2014
Let the plaint be registered as a suit.
Issue summons to the defendants through all modes of service including e-mail in addition, returnable on 15th January, 2015.
I.A. No.24477/2014 (u/o XXXIX R.1 & 2 CPC)
1. Issue notice to the defendants, returnable on 15th January, 2015.
2. The plaintiffs have filed this suit for permanent injunction for restraining infringement, dilution of trade marks, passing off trade dress, unfair competition, rendition of accounts, delivery up and damages etc.
3. The case of the plaintiffs as per the plaint is that:
(i) The Deere Group is commonly referred to as the ‘John Deere’ after its founder and Chairman Mr. John Deere. The plaintiffs were established in the year 1837 and traces its origin to a blacksmith shop in Grand Detour, Illinois, U.S.A when Mr. John Deere invented the first commercially successful steel plow allowing pioneer farmers to cut clean furrows through sticky Midwest prairie soil.
(ii) The plaintiff No.1 claims to be one of the largest and leading agricultural and construction equipment manufacturer in the world including India primarily having four business segments namely ‘Agricultural Equipment’; ‘Commercial & Consumer Equipment’; ‘Construction & Forestry’ and ‘Finance.’
(iii) The plaintiffs are listed as a Fortune 500 company and ranked amongst the top 100 companies therein, employing over fifty five thousand staff members in twenty seven countries worldwide, including the United States, Australia, Turkey, Canada, United Kingdom, China, France, Germany, Spain, Italy, India, Poland, Mexico, Morocco and South Africa.
(iv) The plaintiffs first adopted its trademark ‘John Deere’ in the year 1837 and has used the said trademark continuously and extensively ever since.
(v) The plaintiffs’ “IMAGE” logo essentially comprises of a ‘leaping deer’ in conjunction with the trade mark ‘John Deere’. The plaintiffs’ logo of the animated version of the leaping deer has even been recognised by the United States Court of Appeals as a well-known mark.
The Unique Green and Yellow Colour Scheme:
(vi) The earliest illustration of the plaintiffs’ goods with the arbitrary green and yellow scheme (hereinafter referred to as the John Deere Trade Dress-Colour Combination) is of a plow in the 1905 Deere and Weber catalog.
(vii) In the year 1910, the plaintiffs started making use of a particular combination of the colours Green and Yellow in relation to its agricultural implements in a unique and distinct manner which was further adopted for tractors in the year 1918. The manner of use of this combination of colours was such that it included the body of the vehicle being substantially painted ‘Green’ while the seat and the wheels of the vehicle being substantially painted ‘Yellow’ “IMAGE” in the manner depicted herein below:
“IMAGE”
(viii) It is further submitted that in the year 1956 the colours “Green” and “Yellow” were also defined in its internal standards which clearly depicted the colours and the scope of their application on the agricultural equipment. Further, the plaintiffs make use of “sample plates” which are maintained under defined conditions in order to compare the original colours used by the plaintiffs with the use of colours on agricultural equipment in the present day. It is submitted that by virtue of continuous and extensive use of the “IMAGE” (green and yellow) colour scheme for its products by t
