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2024 Supreme(Online)(MAD) 27237
HIGH COURT OF MADRAS
Honourable Mr Justice P.B. BALAJI
M/s. Lego Juris A/s – Appellant
Versus
Gurumukh Singh Iqvinder Kaur Kamal Preet Kaur Tr – Respondent
OP (TM) Nos.190 & 191 of 2023
Mr. Sathish Parasaran, Senior Counsel for Mr.Rajkumar Jabak; Mr.K.Mohankumar for R1; Mr.S.Janarthanam, Senior Panel Central Government Standing Counsel for R2 in (T) OP (TM) No.190 of 2023; Mr.K.Subburangabharathi, Central Government Standing Counsel for R2 in (T) OP (TM) No.191 of 2023
The court affirmed that a well-known trademark can receive protection across different classes, and likelihood of confusion is sufficient for rectification.
Headnote:
Rectification - Trade Marks - Trade Marks Act, 1999 - Sections 2(1)(zg), 11(2), 29 - The court interpreted the provisions regarding well-known trademarks and the likelihood of confusion, ultimately ruling in favor of the petitioner for rectification of the register.
Fact of the Case:
The petitioner, a well-known toy manufacturer, sought rectification of the trademark register to cancel the 1st respondent's use of the 'LEGO' mark for confectionery products, claiming infringement and confusion due to the similarity of the marks.
Finding of the Court:
The court found that the petitioner had established prior use and global recognition of the 'LEGO' mark, and that the 1st respondent's use of a similar mark was likely to cause confusion among consumers, particularly children.
Issues: 1) Are the 1st respondent's marks liable for removal? 2) Is the petitioner entitled to claim 'well-known' status in India? 3) Is there a likelihood of confusion between the marks? 4) Was the 1st respondent's adoption of the mark honest?
Ratio Decidendi: The court held that the petitioner, despite not having declared 'well-known' status in India at the time of filing, was entitled to protection under Section 11(2) due to its established global reputation and the likelihood of confusion.
Final Decision: The Original Petitions are allowed, and the impugned trademarks are to be removed from the register.
C O M M O N O R D E R
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.
I I. Case of the 1s t 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 Class 28, whereas the 1st Respondent is totally unconnected and the impugned marks are registered under Class 30. Further, the Petitioner is engaged only in the trade relating to toys and the 1st Respondent’s business is in the food industry, totally alien to the line of business of the Petitioner.
10. The 1st Respondent also contends that the Petitioner’s
