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2015 Supreme(Del) 4639
IN THE HIGH COURT OF DELHI
HIMA KOHLI, J
Deere And Co. And Others - Appellant
Versus
S. Harcharan Singh And Others - Respondent
CS(OS) 3760 of 2014 and I.A. 24477 of 2014 (U/O. XXXIX R. 1 and 2 CPC), I.A. 376 of 2015 (U/O. XXIII R. 3 CPC)
Decided on : 05-03-2015
For the Appellant : Pravin Anand, Vaishali Mittal, Neha Reddy and Sidhant Chamola
For the Respondent:Aman Bhalla, Advocates
The main legal point established in the judgment is the recognition and protection of well-known trademarks under the Trademarks Act, 1999, and the acknowledgment of exclusive proprietary rights by the defendants.
Headnote:
Trade Marks - Infringement - Trademarks Act, 1999 - Section 29(4), Section 2(1)(zg), Section 135 - The court found that the plaintiffs' 'John Deere' trademarks including the colour marks and logo are extremely well known marks amongst the members of the trade and the public at large. The defendants acknowledged the plaintiffs' exclusive proprietary rights and agreed to cease making use of the trade dress in relation to their agricultural equipments. The suit was decreed in favor of the plaintiffs and against the defendants.
Fact of the Case:
The plaintiffs filed a suit for permanent injunction against the defendants for infringement of trade marks, passing off trade dress, unfair competition, rendition of accounts, delivery up, and damages. The plaintiffs claimed to be one of the largest agricultural and construction equipment manufacturers in the world and had established a well-known reputation in India for their 'John Deere' trademarks and the unique green and yellow colour scheme and logo.
Finding of the Court:
The court found that the plaintiffs' trademarks, including the colour marks and logo, were extremely well known among the members of the trade and the public at large. The defendants acknowledged the plaintiffs' exclusive proprietary rights and agreed to cease making use of the trade dress in relation to their agricultural equipments. The suit was decreed in favor of the plaintiffs and against the defendants.
Issues: The issues involved infringement of trade marks, passing off trade dress, unfair competition, rendition of accounts, delivery up, and damages by the defendants against the plaintiffs' well-known 'John Deere' trademarks and the unique green and yellow colour scheme and logo.
Ratio Decidendi: The court relied on the provisions of the Trademarks Act, 1999, particularly Section 29(4), Section 2(1)(zg), and Section 135, to establish the well-known status of the plaintiffs' trademarks and the defendants' acknowledgment of the plaintiffs' exclusive proprietary rights. The court also considered the settlement reached between the parties, where the defendants agreed to cease using the trade dress in relation to their agricultural equipments.
Final Decision: The suit was decreed in favor of the plaintiffs and against the defendants in terms of clauses (i) and (ii) of para 35 of the plaint, while leaving the parties to bear their own costs. The suit was disposed of, along with the pending application.
JUDGMENT :
Hima Kohli, J.
The plaintiffs have filed the present suit for permanent injunction for restraining infringement of trade marks, passing off trade dress, unfair competition, rendition of accounts, delivery up and damages etc. against the defendants. Mr. Pravin Anand, learned counsel for the plaintiff submits that the plaintiff No. 1 is a company organized and existing under the Law of the State of Delaware, USA. The plaintiff No. 2 is a company existing under the law of India, having its principal place of business at Pune. The Deere Group is commonly referred to as the 'John Deere' after its founder and Chairman, Mr. John Deere. The plaintiff No. 1 was established in the year 1837 and it traces its origin to a blacksmith shop in Grand Detour, Illinois, U.S.A. where Mr. John Deere had invented the first commercially successful steel plow, allowing pioneer farmers to cut clean furrows through the sticky Midwest prairie soil.
2. 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.' 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.
3. The plaintiffs had first adopted the trademark 'John Deere' in the year 1837 and ever since had used the said trademark continuously and extensively. The plaintiffs' logo essentially comprises of a leaping deer' in conjunction with the trade mark 'John Deere'. The earliest illustration of the plaintiffs' goods with the arbitrary green and yellow scheme (hereinafter referred to as the John Deere Trademark/Trade Dress) is of a plow in the 1905 Deere and Weber catalog.
4. In the year 1910, the plaintiffs had 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. It is stated that the manner of use of this combination of colours was such that it included the body of the vehicle being substantially painted 'Green' with the seat and the wheels of the vehicle being substantially painted 'Yellow' in the manner depicted herein below:
5. It is further submitted that in the year 1956, the colours "Green" and "Yellow" were also defined in the internal standards, laid down by the plaintiffs 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 green and yellow colour scheme for its products by the plaintiffs, the consumers and members of the trade alike associate the above mentioned colour scheme solely with the products of the plaintiffs.
6. Learned counsel states that the plaintiffs have been investing huge amounts of money and energy in promoting their John Deere trademarks including the colour marks and logo and have put in unparalleled efforts to advertise and promote the said trademarks including trade dress in order to ensure that their trademarks secure and maintain the vast goodwill and reputation that is vested in them through the decades, until the present day.
7. The plaintiffs have built a reputation in India of its well known John Deere trademarks and the unique green and yellow colour scheme and logo. This is evidenced from the fact that its agricultural equipment especial
