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IN THE HIGH COURT OF DELHI
Prathiba M. Singh, J.
Deere and Company - Appellant
Versus
Jitender Kumar Gaur - Respondent
CS (COMM) 498 of 2021 & I.A. 9047 of 2022
Decided On : 23-11-2022
Trademark Infringement - Agricultural Equipment - Trade Marks Act, 1999 - Section 2(1)(zg), Section 29, Section 34 - The court discussed the protection of trademarks 'TORQ-GARD', 'JOHN DEERE' and the 'green and yellow' colour combination marks under the Trade Marks Act, 1999. The court emphasized the well-known status of the 'JOHN DEERE' trademark and trade dress, and the plaintiffs' rights in these marks. The court found the defendants guilty of trademark infringement and passed a decree for permanent injunction, delivery-up of infringing materials, rendition of accounts of profits, damages, and costs in favor of the plaintiffs.
Fact of the Case:
The suit was filed by Deere & Company and its Indian subsidiary against two defendants for trademark infringement related to the marks 'TORQ-GARD' and 'JOHN DEERE'. The plaintiffs, a USA-based Fortune 500 company, claimed to be the global owners of these marks and sought protection of their common law and statutory rights.
Finding of the Court:
The court found the defendants guilty of trademark infringement based on evidence of sales of counterfeit products using the plaintiffs' marks. Defendant No.1 was proceeded ex-parte, and Defendant No.2 gave an undertaking not to sell the impugned products. The court granted a decree for permanent injunction, delivery-up of infringing materials, rendition of accounts of profits, damages, and costs in favor of the plaintiffs.
Issues: The issues involved trademark infringement, passing off, dilution, and unfair competition by the defendants in relation to the plaintiffs' well-known marks and unique product packaging.
Ratio Decidendi: The court relied on the well-established reputation of the plaintiffs' marks, the discrepancies between the plaintiffs' original products and the defendants' products, and the safety concerns for customers using counterfeit products to decide in favor of the plaintiffs.
Final Decision: The suit was decreed against Defendant No.1 and Defendant No.2, with a permanent injunction, delivery-up of infringing materials, rendition of accounts of profits, damages, and costs awarded in favor of the plaintiffs.
JUDGMENT
Prathiba M. Singh, J. (Oral)--This hearing has been done through hybrid mode.
2. The present suit has been filed by the Plaintiffs i.e., Plaintiff No.1 - Deere & Company, USA based company and its Indian subsidiary - John Deere India Pvt. Ltd., Plaintiff No.2, against Defendant No.1 - Mr. Jitender Kumar Gaur, proprietor of M/s. Ansh Enterprises and Defendant No.2 - Mr. Vinay Bansal, proprietor of M/s. Global Sales.
3. The suit relates to the trademarks `TORQ-GARD', `JOHN DEERE' and the `green and yellow' colour combination marks, details of which are as under:
| Mark | Trademark Nos. | Date of Application | Class |
| TORQ-GARD | 3409103 | 11th November, 2016 | 4 |
| JOHN DEERE | 950561 | 28th August, 2000 | 7 |
| JOHN DEERE | 271466 | 21st April, 1971 | 7 |
| JOHN DEERE | 1673730 | 8th April, 2008 | 4 |
 | 950570 | 28th August, 2000 | 7 |
 | 1675422 | 11th April, 2008 | 4 |
 | 1551761 | 20th April, 2007 | 7 |
4. The Plaintiffs are in the business of manufacturing and selling of Agricultural Equipment, Commercial & Consumer Equipment, Turf Construction & Forestry and Finance and also deals in various other products of consumers such as Engines and Drive Train Components, Electronic Solutions, Government and Military Sales, Rental Sales, Parts and Services (Coolants, Lubricants, Engine Oil, Transmission Oil and Greases), Lubrication Equipment Accessories, Engine Parts and Support Services. Plaintiff No.1 is a USA-based Fortune 500 company and was at 88th position in the Fortune 500 ranking in 2021. The brand value of the Plaintiff is stated to be at USD 5,367 million.
5. The `JOHN DEERE' series of marks are sought to be protected in the present suit. The mark `JOHN DEERE' was adopted in 1837, along with the `leaping deer' logo. The products of the Plaintiffs sold under these brands include consumer goods and accessories, indoor and outdoor home equipment, apart from agricultural equipment. As per the plaint, the Plaintiffs are the global owners of all the `JOHN DEERE' and `TORQ- GARD' marks across the world including in India. The Indian subsidiary i.e. Plaintiff No.2 also deals with agricultural equipment and has more than 22 offices in India with 1200 dealers, exporting to more than 110 countries. The Plaintiffs also claim to be associated with farmers across the country, involved in frugal innovation at farms. Further, the Plaintiffs claim to be one of the leaders in the Indian tractor market and have partnered with the Government of Gujarat to benefit various marginalized farmers. The websites of the Plaintiffs operating through domain names www.deere.com, www.johndeereclassic.com and www.deere.co.in, also publicize and give details of the Plaintiffs' business across the world. The advertisement and promotional expenses of the Plaintiffs are stated to the tune of Rs.2802 million in the year 2018-19 and the sales in India are to the tune of Rs.63140 million Indian rupees in the same year.
6. In so far as the mark `TORQ-GARD' is concerned, the said mark was launched by the Plaintiffs in respect of engine oil internationally since 1969 and in India since 2012. The same is marketed with a unique green-yellow colour combination along with the `JOHN DEERE' leaping deer logo in the following manner:
7. The salient features of the said packaging, such as the use of a white font with a green background and a leaping deer mark on the top right corner, etc. have been highlighted in the plaint. The `TORQ-GARD' branded products along with the leaping deer mark are stated to have achieved sales of over Rs.100 crores in the financial year 2020.
8. The Plaintiffs have over 1000 trademark registrations globally and in India for the `TORQ-GARD' mark as also the `JOHN DEERE' word mark and the leaping deer mark. The Plaintiffs also claim to have taken various actions to protect their rights in these marks including in CS (OS) 3760/2014 titled Deere & Co. & Anr. v. S. Harcharan Singh & Ors., where the `JOHN DEERE' marks, including its 
colour and the 
logo have been held to be well-known marks under Section 2(1)(zg) o
Trademark infringement and protection of well-known marks under the Trade Marks Act, 1999.
The judgment establishes the application of summary judgment in cases where a party lacks substantive defense and the evidence supports the claim of infringement.
The court affirmed that summary judgment can be granted when a defendant lacks a real prospect of successfully defending against claims of trademark infringement.
Where a trade mark contains generic or common-to-trade terms, the proprietor cannot claim exclusive rights over those specific words. Comparison of marks for infringement must be done as a whole; if ....
Court emphasizes that prior use and goodwill in trade names give rise to rights that protect against passing off and copyright infringement.
Merely riding on strength of his trade mark registration, is indulging in conduct which is not transparent.
Trademark owners are entitled to seek injunctions against unauthorized use of deceptively similar marks, particularly when defendants fail to contest the claims.
The impugned marks are deceptively similar to Plaintiff's registered marks, leading to public deception, and the Court passes a summary judgment in favor of the Plaintiff.
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