2023 Supreme(Del) 2527

IN THE HIGH COURT OF DELHI AT NEW DELHI
Navin Chawla, J.
Sona Blw Precision Forgings Limited & Anr. – Appellants
Versus
Sona Mandhira Pvt. Ltd. & Ors. – Respondents
CS(COMM) 277 of 2020
Decided On : 22-02-2023

The adoption of a registered trademark as part of a corporate name can infringe the trademark and amount to passing off if it is likely to cause confusion or deception among the public.

Headnote:

TRADEMARK - INFRINGEMENT AND PASSING OFF - SUIT FOR INJUNCTION - AD-INTERIM INJUNCTION - CHANGE OF CORPORATE NAME - ADOPTION OF THE WORD 'SONA' AS PART OF CORPORATE NAME - WHETHER INFRINGES REGISTERED TRADEMARK OF THE PLAINTIFF - WHETHER AMOUNTS TO PASSING OFF - EFFECT OF DISCLAIMER IN THE REGISTRATION OF TRADEMARK - WHETHER THE PLAINTIFFS ARE GUILTY OF SUPPRESSION OF MATERIAL FACTS - WHETHER THE PLAINTIFFS ARE ENTITLED TO INTERIM INJUNCTION.

Fact of the Case:

The plaintiffs, a group of companies engaged in the manufacturing and sale of precision-forged gears and differential assemblies, filed a suit for infringement of their registered trademark 'SONA' and passing off against the defendants, who had changed their corporate name to 'Sona Mandhira Pvt. Ltd.' and were also engaged in the same line of business. The plaintiffs claimed that the defendants' adoption of the word 'SONA' as part of their corporate name was mala fide and intended to deceive the public into believing that the defendants were associated with the plaintiffs. The defendants contended that the word 'SONA' was a generic and common word and that they had been using it for many years, even before the plaintiffs had adopted it as their trademark. They also argued that the plaintiffs were guilty of suppression of material facts by not disclosing the disclaimer in the registration of their trademark, which stated that they did not have exclusive rights to the word 'SONA'.

Finding of the Court:

The court held that the plaintiffs had a prima facie case for infringement of their registered trademark and passing off. It found that the defendants' adoption of the word 'SONA' as part of their corporate name was mala fide and intended to deceive the public into believing that the defendants were associated with the plaintiffs. The court also held that the disclaimer in the registration of the plaintiffs' trademark did not affect their right to claim infringement or passing off. However, the court found that the plaintiffs were guilty of suppression of material facts by not disclosing the disclaimer in the registration of their trademark. As a result, the court imposed exemplary costs on the plaintiffs.

Issues: 1. Whether the defendants' adoption of the word 'SONA' as part of their corporate name infringed the plaintiffs' registered trademark 'SONA'? 2. Whether the defendants' adoption of the word 'SONA' as part of their corporate name amounted to passing off? 3. Whether the disclaimer in the registration of the plaintiffs' trademark affected their right to claim infringement or passing off? 4. Whether the plaintiffs were guilty of suppression of material facts by not disclosing the disclaimer in the registration of their trademark?

Ratio Decidendi: 1. The court held that the defendants' adoption of the word 'SONA' as part of their corporate name infringed the plaintiffs' registered trademark 'SONA' because it was likely to cause confusion and deception among the public. The court found that the defendants had adopted the word 'SONA' with the intention of deceiving the public into believing that they were associated with the plaintiffs, and that this was mala fide. 2. The court held that the defendants' adoption of the word 'SONA' as part of their corporate name amounted to passing off because it was likely to mislead the public into believing that the defendants' goods and services were those of the plaintiffs. The court found that the defendants had adopted the word 'SONA' with the intention of deceiving the public into believing that they were associated with the plaintiffs, and that this was mala fide. 3. The court held that the disclaimer in the registration of the plaintiffs' trademark did not affect their right to claim infringement or passing off. The court found that the disclaimer only meant that the plaintiffs did not have exclusive rights to the word 'SONA', but it did not mean that they could not claim infringement or passing off if someone else used the word 'SONA' in a way that was likely to cause confusion or deception. 4. The court held that the plaintiffs were guilty of suppression of material facts by not disclosing the disclaimer in the registration of their trademark. The court found that the plaintiffs had a duty to disclose all material facts to the court, and that their failure to disclose the disclaimer was a breach of this duty.

Final Decision: The court granted an ad-interim injunction restraining the defendants from using the word 'SONA' as part of their corporate name or trademark. The court also imposed exemplary costs on the plaintiffs for their suppression of material facts.