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2023 Supreme(Del) 4764
IN THE HIGH COURT OF DELHI AT NEW DELHI
Sanjeev Narula, J.
Paragon Cable India & Anr. – Appellants
Versus
Essee Networks Private Limited & Ors. – Respondents
CS(COMM) 112 of 2023
Decided On : 03-07-2023
Mr. Chander M. Lall, Senior Advocate with Mr. Kapil Midha, Mr. Garv Singh, Ms. Samiksha Gupta and Ms. Ananya Chugh, Advocates, for the Plaintiff.
Ms. Priyanka Sethia, Ms. Rajni Kant, Ms. Shreya B., Ms. Charu Roy and Mr. Pallav Palit, Advocates, for the Defendant.
The main legal point established in the judgment is the determination of prior use and the likelihood of confusion in trademark infringement and passing off cases.
Headnote:
ELEKTRON - Trademark Dispute - Code of Civil Procedure, 1908 - Section 151 - Trademarks Act, 1999 - Section 29(2)(a) or (b) - Raman Kwatra and Anr. v. KEI Industries Limited, 2023 SCC OnLine Del 38; Vishnudas trading as Vishnudas Kishendas v. Vazir Sultan Tobacco Co. Ltd., Hyderabad and Anr., (1997) 4 SCC 201; and Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Limited, (2018) 9 SCC 183 - The judgment discusses the intricate trademark dispute concerning the term 'ELEKTRON' and the clash between two registered owners of the trademark for use in relation to electric wires and cables. The court analyzed critical issues including prior use, validity of registrations, infringement, delay and laches, balance of convenience, reputation and goodwill, and passing off. The court found that the Defendants are the prior adopters of the term 'ELEKTRON' and that the Plaintiffs are prima facie prior users of the term 'ELEKTRON' for wires and cables. The court also held that the Defendants' use of 'ELEKTRON' for wires and cables is likely to cause confusion and granted an injunction restraining the Defendants from using the trademarks 'ELEKTRON' and '[IMG]' in respect of electric wires and cables, with a prospective application and directions for filing an affidavit on existing stock.
Fact of the Case:
The case involved a trademark dispute between two registered owners of the trademark 'ELEKTRON' for use in relation to electric wires and cables. The Plaintiffs alleged infringement and passing off, while the Defendants claimed prior adoption of the mark.
Finding of the Court:
The court found that the Defendants are the prior adopters of the term 'ELEKTRON' and that the Plaintiffs are prima facie prior users of the term 'ELEKTRON' for wires and cables. The court also held that the Defendants' use of 'ELEKTRON' for wires and cables is likely to cause confusion and granted an injunction restraining the Defendants from using the trademarks 'ELEKTRON' and '[IMG]' in respect of electric wires and cables, with a prospective application and directions for filing an affidavit on existing stock.
Issues: The critical issues included prior use, validity of registrations, infringement, delay and laches, balance of convenience, reputation and goodwill, and passing off.
Ratio Decidendi: The court's decision was based on the finding that the Defendants are the prior adopters of the term 'ELEKTRON' and that the Plaintiffs are prima facie prior users of the term 'ELEKTRON' for wires and cables. The court also held that the Defendants' use of 'ELEKTRON' for wires and cables is likely to cause confusion, leading to the grant of an injunction.
Final Decision: The court granted an injunction restraining the Defendants from using the trademarks 'ELEKTRON' and '[IMG]' in respect of electric wires and cables, with a prospective application and directions for filing an affidavit on existing stock.
JUDGMENT
Sanjeev Narula, J.
I.A. No. 4175/2023 (u/Order XXXIX Rules 1 & 2 r/w Section 151 of the Code of Civil Procedure, 1908)
Clash between two registered owners of the trademark `ELEKTRON' for use in relation to electric wires and cables
1. The present case brings to the fore an intricate trademark dispute concerning the term `ELEKTRON'. When the commercial journey of the parties commenced, this term was embodied in two different devices being used concurrently, which were subsequently also registered independently under the umbrella of the two litigating parties, each confined to its exclusive product classification. This peaceful co-existence, however, has been breached due to an emerging overlap in the use of `ELEKTRON' for products - electric wires and cables. Defendants have a prior registration in the category/class in which the above products fall, which is vehemently contested by Plaintiffs on the basis of their prior use. Plaintiffs, while pressing for an injunction alleging infringement and passing off, raise doubts on Defendants' statutory rights. It therefore now falls to the judgement of this Court to unravel these complex intertwining claims and counter-claims.
THE PLAINTIFFS' VERSION
2. Mr. Chander M. Lall, Senior Counsel, along with Mr. Kapil Midha, presented the Plaintiffs' case as follows:
2.1. The first Plaintiff, a partnership firm known as Paragon Cable India, has been registered since 1991. They are a renowned entity in the manufacture and supply of wires and cables, operating under the `ELEKTRON'/`[IMG]' trademark.
2.2. Mr. Vikas Nagpal [Plaintiff No. 2] coined and adopted the `ELEKTRON' trademark in 1998, which has been in consistent and extensive use ever since, either through Plaintiff No. 1 or through other entities detailed in the plaint. He has been accorded registration of the mark '[IMG] in class 07 under trademark No. 1306921, with user claim since 01st January, 1998. Besides the aforesaid registration, Plaintiff ' trademark in No. 2 has also applied for registration of `[IMG] classes 09 and 11, which are currently facing opposition.1[Under applications No. 1306922 and 1306923, respectively.]
2.3. Plaintiffs had also applied for registration of the trademark `ELECTRON' under application No. 800487 in class 09 on 29th April, 1998, with user claim dating back to 01st January, 1998. The application was however, abandoned on a technical ground for want of prosecution. This conclusively establishes Plaintiff No. 2's bona fide in coinage, adoption as well as user claim of 01st January, 1998.
2.4. Extensive promotion and advertisement of the `ELEKTRON' trademark by Plaintiffs has resulted in accrual of formidable reputation in their favour in India and abroad, particularly in relation to electric wires and cables. Their sale revenue for products under the said mark tallies up to Rs.3,24,15,64,315/- for the period between 01st April, 2010 to 31st March, 2022. The Chartered Accountant's certificate accompanying the plaint, verifies the above figures.
2.5. Defendants have copied the Plaintiffs' registered `ELEKTRON' trademark in a stark and unabashed manner, presumably to leverage the goodwill and reputation that Plaintiffs have built over the years. A comparative analysis of the two trademarks `[IMG]' and '[IMG]' indicates that the Defendants have duplicated Plaintiffs' entire mark, thereby infringing on their statutory and common law rights. Given the identity of the competing marks, public confusion qua the products' source is inevitable, thus warranting an injunction.
2.6. Defendants have gained registrations under trademarks No. 4818097 in class 07, 4818098 and 4818101 in class 09, and 4818099 and 4818102 in class 11, for the marks `[IMG]' and `ELEKTRON', by falsely claiming usage since 1992, without providing substantial supporting documentation. Their user claim since 01st October, 1992 is uncorroborated. No user affidavit was filed along with the applications, in compliance with Rule 25 of the T
