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IN THE HIGH COURT OF DELHI
Manmohan Singh, J.
MEX SWITCHGEARS PVT. LTD. — Appellant
Vs.
MAX SWITCHGEARS PVT. LTD. — Respondent
I.A. No. 10442 of 2013, C.S. (OS) No. 1299 of 2013
Decided On : 25-02-2014
In a suit for permanent injunction restraining infringement of trade mark, corporate name, copyright, passing off, rendition of accounts, delivery up etc., the court held that the defendant's use of the mark MAX, which is identical/deceptively similar to the registered trademark MEX of the plaintiff, either as a trademark or trade name, is bound to cause confusion and deception amongst the purchasing public and trade which leading to think that the defendant's goods bearing the trademark MAX originate from the same source i.e. the Plaintiff. The presence of the word MAX in the corporate name of the defendant would also create deception and confusion and create an impression as if the defendant has some connection with the plaintiff.
Fact of the Case:
Plaintiff, the registered proprietor of the trademark MEX, filed a suit for permanent injunction restraining infringement of trademark, corporate name, copyright, passing off, rendition of accounts, delivery up etc. against the defendant, who had adopted an identical trademark and corporate name. The defendant contended that its mark MAX was adopted from the common dictionary word MAXIMUM and there are number of business houses in the electrical line in the country that use the trade name "MAX" as a part of their business name.
Finding of the Court:
The court held that the defendant's use of the mark MAX, which is identical/deceptively similar to the registered trademark MEX of the plaintiff, either as a trademark or trade name, is bound to cause confusion and deception amongst the purchasing public and trade which leading to think that the defendant's goods bearing the trademark MAX originate from the same source i.e. the Plaintiff. The presence of the word MAX in the corporate name of the defendant would also create deception and confusion and create an impression as if the defendant has some connection with the plaintiff.
Issues: 1. Whether the defendant's use of the mark MAX infringes the plaintiff's registered trademark MEX? 2. Whether the defendant's use of the corporate name MAX is likely to cause confusion and deception? 3. Whether the defendant's actions constitute passing off?
Ratio Decidendi: 1. The court held that the defendant's use of the mark MAX, which is identical/deceptively similar to the registered trademark MEX of the plaintiff, either as a trademark or trade name, is bound to cause confusion and deception amongst the purchasing public and trade which leading to think that the defendant's goods bearing the trademark MAX originate from the same source i.e. the Plaintiff. 2. The court held that the presence of the word MAX in the corporate name of the defendant would also create deception and confusion and create an impression as if the defendant has some connection with the plaintiff. 3. The court held that the defendant's actions constitute passing off.
Final Decision: The court granted an interim injunction restraining the defendant from manufacturing, selling, offering for sale and directly or indirectly dealing with electrical goods under the trade mark MAX as well as from using the same as dominant part of its corporate name. The defendant was also restrained from using any deceptively similar trade mark which may amount to infringement of plaintiff's registered trade mark No. 211055 in class 9 as well as passing of its goods as that of the plaintiff and from doing any other thing which is likely to create confusion and deception.
JUDGMENT :
Manmohan Singh, J.
1. By this order, I propose to decide the pending interim application being I.A. No. 10442/2013 filed by the plaintiff under Order XXXIX, Rules 1 and 2 of CPC 1908 (hereinafter referred to as "CPC") in a suit for permanent injunction restraining infringement of trade mark, corporate name, copyright, passing off, rendition of accounts, delivery up etc. The case of the plaintiff is that plaintiff i.e. Mex Switchgears Private Limited through its predecessor is the first adopter and user of the trade mark MEX since the year 1960 for electric switchgears, switches, ignition switches, electric capacitors, electric meters, starting devices for electric motors etc. and various other electric goods. The plaintiff is also stated to be using the trade mark MEX on CFL bulbs, kit kats, fuses, distribution boxes, circuit breakers wires and cable miniature circuit breaker (MCBS), Control Panels for Meters and submersible pumps etc.
2. It has been stated by the plaintiff that the word MEX is an integral part of the corporate name of the Plaintiff Company since its incorporation in the year 1979 and that earlier to this, the Managing Director of the plaintiff i.e. Mr. Jai Krishan Saini had a partnership firm consisting of the name Mex Electro Corporation and the firm had adopted the trademark MEX in 1960. The plaintiff claims that it has an exclusive right over the word MEX both by virtue of trademark registration and presence of the word MEX in its corporate name.
3. The plaintiff has stated that it is a registered proprietor of various trademarks relating MEX under classes 7, 9 and 11 for various goods, details of which are given in Para 5 of the plaint and some of which are: trademark MEX (label) registered for electric switchgears and switches under class 9 as on 31st August 1962 bearing registration no. 211055; trademark MEX registered for ignition switches, electric capacitors, electric plugs, electric distribution boards, electric meters and electric circuit breakers included in class 9 as on 28th July 1979 bearing registration no. 351897; trademark MEX registered for electric motor (not for land vehicles) and parts thereof included in class 7 as on 4th August 1988, used since 1st April 1960, bearing registration no. 495452; trademark MEX registered for gas stoves and parts thereof under class 11 as on 20th June 1983 bearing registration no. 406916.
4. The plaintiff is also stated to have obtained registrations of its trade mark MEX in Nepal under classes 7 and 11. The plaintiff also holds a copyright registration of the artistic work titled MEX. The plaintiff has a huge sales turnover details of which are given in Para 12 of the plaint and the sales turnover for the year 2011-12 is stated to be Rs. 20,81,50,303/-. The plaintiff has widely advertised the trade mark MEX and the details of the advertisement and publicity expenses have been given in Para 13 of the plaint and the said expenses for the year 2011-2012 have been stated to be Rs. 42,46,105/-.
5. It has been stated that the plaintiff has attained enviable reputation and goodwill for its trademark MEX and has successfully contested several oppositions in the trade mark registry from time to time on the basis of its prior adoption and use. Also in a suit preferred by the plaintiff against one Mr. Gopal Krishan using the trademark MAX standard as well as the corporate name MAX STANDARD SWITCHGEARS PVT. LTD., the plaintiff vide an order dated 22nd February, 1992 had got an injunction against the said defendant. The plaintiff states to have been always vigilant about protection of its trademark MEX.
6. It is the case of the plaintiff that its attention was drawn to the defendant company which has been incorporated only in the year 2011. The defendant had, according to the plaintiff, adopted an identical trade mark and also an identical corporate name. On the receipt of the said information the plaintiff addressed two notices dated 31st October, 2012 and 27th No
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