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IN THE HIGH COURT OF JUDICATURE AT MADRAS
P.B.BALAJI, J.
LEGO Juris A/S – Appellant
Versus
Gurumukh Singh – Respondent
(T) OP ™ Nos.190 & 191 of 2023
Decided on : 13-09-2024
Advocate Appeared:
For the Appellant : Mr. Sathish Parasaran, Senior Counsel for Mr.Rajkumar Jabak in both OPs
For the Respondents: Mr.K.Mohankumar for R1 in both OPs Mr.S.Janarthanam, Mr.K.Subburangabharathi,
A well-known trademark can be protected across different classes of goods, and its prior use entitles the owner to seek rectification against similar marks likely to cause confusion.
Headnote:(A) Trade Marks Act, 1999 - Sections 2(zg), 11(2), 29 - Rectification of trademarks - Petitioner sought removal of Respondent's marks LEGO CUTEHEART and LEGO COFFYBOND, claiming infringement of its well-known mark LEGO - Court found Petitioner entitled to protection as a well-known mark, despite Respondent's claims of honest adoption - Respondent's marks were found likely to cause confusion among consumers, particularly children - Petitioner established prior use and global reputation, warranting rectification of the register. (Paras 21, 22, 26, 39)
(B) Well-known trademarks - Definition and protection across classes - The court emphasized that a well-known mark can be protected even if the goods are not similar, provided there is a likelihood of confusion. (Paras 23, 24, 26)
ORDER :
Common Prayer: These Petitions came to be numbered by transfer of O.R.A.Nos.278 & 287/2015/TM/CHN, from the file of the Intellectual Property Appellate Board, Chennai, the mark LEGO CUTEHEART (label) under Registration No.1073754 in Class 30 and the mark LEGO COFFYBOND (label) under Registration No.999049 in Class 30 be removed/cancelled from the Register of Trade Marks.
These Rectification Petitions have been filed under Section 57 of the Trade Marks Act, 1999 (in short 'Act'), seeking rectification in the register of the 2nd Respondent, by cancelling the registered mark of the 1st Respondent.
I. Case of the Petitioner:
2. The Petitioner is a world-renowned leader in manufacture and sale of toys, games etc. The Petitioner was founded way back in the 1930s’ and the LEGO mark was adopted for the first time in 1934. According to the Petitioner, LEGO is coined from two Danish words ‘leg’ and ‘godt’ which literally means play well.
3. The Petitioner employs around 27000 employees globally and has presence in more than 40 countries across the globe. The LEGO mark has been used in India ever since 1987 and in 1994, the manufacturing and selling division of the Petitioner entered into association with a Company for sale of their products in Mumbai and Delhi. Subsequently, the Petitioner has expanded its sale in various other parts of the country and their products are available in many premium toy stores as well as online platforms like Amazon, Flipkart etc.
4. The Petitioner also claims to have been a recipient of several accolades and recognitions and enjoys enormous goodwill and reputation in India as well as abroad. Their sales is also very high and in India alone, as of March 2023, it was to the tune of about 61.7 crores of rupees.
5. The Petitioner has also been declared as well-known trade mark in Taiwan, South Korea, Portugal, England, Germany, France etc. and has also been recognised as the #1 reputable company in the world as per the report of RepTrak. The Petitioner has secured registration of its mark even as early as in 1967 in India in Registration No.240430 and in other parts of the world, they have secured registrations for LEGO mark, dating back to 1954.
6. The grievance of the Petitioner is that the 1st Respondent started using the very same LEGO mark for its confectionary products, LEGO CUTEHEART and LEGO COFFYBOND, clearly infringing the Petitioner’s mark. The Petitioner has already filed a suit in O.S.No.105 of 2003 before the City Civil Court at Secunderabad and the Court held that the Petitioner enjoys a transborder reputation and the LEGO mark is a well known mark. The 1st Respondent has preferred an Appeal before the Telangana High Court and the same is pending. Hence, the Rectification Petitions have been filed.
II. Case of the 1st Respondent:
7. The 1st Respondent states that it is dealing with manufacturing and marketing confectionary goods under their trade name, LEO FOODS and in the course of their business, they have adopted LEGO as their trademark on 31.12.2000. According to the 1st Respondent, LEGO has been coined and invented by them by combining the expression LE which means take in Hindi and GO meaning ‘to leave’. It is the specific case of the 1st Respondent that they have not copied the mark of the Petitioner and that they even conducted a search/survey including the database of the Trade Marks Registry and did not find any person, manufacturer or trader using LEGO in respect of confectionaries.
8. The further case of the 1st Respondent is that they have adopted LEGO as their flagship brand in various adaptations and they are honest and bona fide adopters of the mark LEGO. They further contend that the injunction granted by the Civil Court has been suspended in appeal and that the suit was only laid in respect of the word, LEGO and not the mark impugned in the present proceedings, which are composite label marks.
9. The 1st Respondent further states that the Petitioner enjoys a registration only in C
