The court affirmed that deceptive similarity exists between competing trademarks in cases of passing off, even among different product classes, when substantial goodwill is established.

JUDGMENT

Jyoti Singh, J.

I.A. 1134/2022 (under Order 39 Rules 1 and 2 CPC, by Plaintiffs) and I.A. 6456/2022 (under Order 39 Rule 4 CPC, by Defendants)

1. This judgment shall dispose of an application filed on behalf of the Plaintiffs under Order 39 Rules 1 and 2 CPC and an application preferred on behalf of the Defendants, for vacation of ex parte ad-interim injunction granted vide order dated 20.01.2022, under Order 39 Rule 4 CPC.

2. Present suit has been filed by the Plaintiffs seeking a decree of permanent injunction restraining the Defendants and/or all others acting on their behalf from infringing the trademarks of the Plaintiffs as well as the copyright in the labels/artistic works and passing off, along with other reliefs of damages, delivery up, etc.

3. On 20.01.2022, this Court granted ex parte ad-interim injunction in favour of the Plaintiffs and against the Defendants, as sought for. Upon being served the Defendants challenged the said order before the Division Bench in FAO(OS)(COMM) 68/2022. The appeal was disposed of vide order dated 23.03.2022, giving liberty to the Defendants to file an application for vacation/modification of the interim injunction order, leaving the rights and contentions of all parties open and clarifying that the Court had not commented on the merits of the controversy. Pursuant to the liberty granted by the Division Bench, Defendants preferred the aforementioned application, which is being disposed of by the present judgment.

4. Case of the Plaintiffs is that they are part of the well-known and reputed `Minda Group of Companies' which have wide-spread and enviable presence in the automobile and spare parts sector. Plaintiffs are leading manufacturers of automotive components including but not limited to industrial oils, lubricants, engine oils, etc. and transact business under the house mark/trade name MINDA and its variants and derivatives such as /SPARK MINDA and //UNO MINDA. Plaintiffs group was founded in the year 1958 by Late Shri Shadi Lal Minda under the flagship name MINDA as a proprietorship. With passing years, business was organised by different companies under the trademark MINDA and its formatives, adopted in the year 2011. Thus the continuous, extensive and uninterrupted use of the mark MINDA as the Group's trade name dates back to the year 1958 and forms an inseparable and essential part of its trade name.

5. It is pleaded that the word mark MINDA and its derivatives are registered in various classes including device marks UNO MINDA and SPARK MINDA, which are the trademarks relevant to the present suit. The registrations are valid and subsisting and Plaintiffs have diligently protected their Intellectual Property Rights by initiating opposition proceedings against any infringing mark. Plaintiff No. 1 has filed applications for inclusion of trademarks MINDA and UNO MINDA in the list of well-known trademarks while Plaintiff No. 3 has filed applications for inclusion of mark SPARK MINDA and the applications are pending before the Trade Marks Registry. Plaintiffs' Group of Companies has also obtained trademarks registrations in other countries such as Malaysia, Indonesia, Philippines, etc. There are pending applications for registration of certain MINDA formative marks in various classes.

6. It is further pleaded that Minda Group is one of the leading manufacturers of automotive components such as alternate fuel systems, air-brakes, fuel caps, wheel covers, air ducts and washer bottle, etc., which are the products of UNO MINDA Group and Electronic and Mechanical Security Systems, brake shoes, clutch plates, wiper blades, sensors, industrial oils, lubricants, engine oils etc. which are the products manufactured and sold by the SPARK MINDA Group, catering to major vehicle manufactures in India and overseas, such as BMW, Honda, Ford, Escorts, TATA, Mahindra, etc.

7. It is stated that as on 31.03.2021 the annual turnover of Plaintiffs' Group of Companies was Rs.8,741 c