Bombay High Court: In the present case, plaintiff sought an injunction restraining defendants from infringing plaintiffs registered trade mark ‘HIRECT’ and passing of the impugned mark ‘HIRECT’ as that of plaintiffs registered trade mark. A Single Judge Bench of R.I. Chagla, J., held that till final disposal of the present suit, defendants were restrained from infringing the registered device marks in Classes 9 and 35, by use of the impugned domain name/website ‘ and/or ‘ and/or any other mark and/or domain name identical and/or deceptively similar to the registered marks of plaintiff.
Background
Plaintiff, a public limited company incorporated under the , was in collaboration with Westinghouse, Brake & Signal, U.K.D. Plaintiff’s business included but was not limited to electronics, railway transportation, power, telecommunication, steel non-ferrous metals, cement, chemicals, metal finishing, etc., and was also engaged in the business of developing, designing, manufacturing and marketing power semi-conductors, power electronic equipment, and railway transportation equipment.
Plaintiff was also engaged in the business of developing and/or selling software in relation to its business. Plaintiff stated that Indian Railways were its primary clients and 85%-90% of the Revenue generated by it was either through the supply of products directly to the Railways or to private parties who in turn supply the product to the Railways.
Plaintiff coined and adopted the mark HIRECT, around 1961, by a unique combination of its corporate name HInd RECTifiers. Plaintiff also created and adopted a logo using its distinctive ‘HIRECT’ mark for which registration in class 9 was secured under the provisions of the Trade & Merchandise Act, 1958 (now the ) (‘the 1999 Act’). Since 1961, plaintiff was the registered proprietor of the mark ‘HIRECT’ in classes 9 and 35 and in 1972, plaintiff secured registration for its mark in class 9 of the 1999 Act. In 2014, plaintiff cause slight change in the earlier logo ‘HIRECT’ and adopted a logo , the primary feature of which was ‘HIRECT’. On 30-10-2021, plaintiff filed two trade mark applications for the word mark ‘HIRECT’ in classes 9 and 35, with claim of use since 01-02-1961. On 28-09-2022, the two applications secured registration.
In July 2021, plaintiff came across Defendant 1’s domain name ‘ through which Defendant 1 was advertising, promoting, and offering its recruitment services under its impugned ‘HIRECT’ mark. On 10-07-2021, plaintiff addressed a cease-and-desist notice to Defendant 1. Defendant 1 acknowledged that use of its mark was only since 2020 i.e., 59 years after plaintiff’s use and Defendant 1 falsely claimed that it was unaware of plaintiff’s use of its ‘HIRECT’ mark.
Plaintiff submitted that defendants had mischievously and deliberately, with an ulterior motive, adopted, and used the impugned mark ‘HIRECT’ only with a view to trade upon and/or encash on the goodwill, recognition and reputation of plaintiff’s business operated under the well-known mark ‘HIRECT’.
Analysis, Law, and Decision
The Court opined that plaintiff had been able to establish that in view of plaintiff’s mark ‘HIRECT’ being identical to defendants mark ‘HIRECT’, the customers being persons of average intelligence and imperfect recollection were even otherwise, likely to believe that defendants’ offending services provided under the impugned mark were in some way associated with and/or endorsed by plaintiff whereas no such association or endorsement existed.
The Court rejected defendant’s contention that the rival mark was not identical and/or deceptively similar and/or likely to cause confusion in the minds of the public at large.
The Court opined that the prominent and essential portion of both the logos, being the mark ‘HIRECT’, the mark of defendants would prima facie infringe upon plaintiff’s prior and well-known mark. The Court also opined that the rival marks were structurally, phonetically, and visually identical and/or deceptively similar when compared as a whole. The word ‘HIRECT’ was the important, prominent, and essential feature of the registered mark.
The Court stated that while comparing two marks, the prominent, essential, and distinctive features of the two marks were required to be compared. The Court opined that the impugned mark was identical to plaintiffs’ prior and well-known trade mark ‘HIRECT’. The Court declared that the registered mark of plaintiff ‘HIRECT’ was a well-known mark under the meaning of Section of the .
The Court opined that as plaintiff’s customers had also been confused between the rival marks, thus, irreparable harm and injury would be inflicted upon plaintiff if the interim relief sought for was not granted. Thus, the Court held that till final disposal of the present suit, defendants, their servants, agents, directors, partners, employees, dealers, distributors, exporters, manufacturers, marketers claiming through defendants be restrained from infringing the registered device marks in Classes 9 and 35, by use of the impugned domain name/website ‘ and/or ‘ and/or any other mark and/or domain name identical and/or deceptively similar to the registered marks of plaintiff. Further the Court restrained defendants from passing off their goods and services as for those of plaintiff using the impugned mark/name ‘HIRECT’, the impugned domain name/website ‘ and/or ‘ and/or any other mark and/or domain name identical and/or deceptively similar to plaintiff’s mark ‘HIRECT’ and/or plaintiff’s logo marks and/or plaintiff’s domain name ‘ .
[Hind Rectifiers Ltd. v. Chrome21 India Pvt. Ltd., Interim Application (L) No. 25655 of 2021, decided on 26-11-2024]
Advocates who appeared in this case :
For the Applicant: Rashmin Khandekar, Alhan Kayser and Hitisha Patel i/b. Avesh Kayser for the Applicant/Plaintiff.
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