Ford Motor Company Of Canada ... vs M/S Ford Service Centre
2008 Latest Caselaw 2216 Del

     *IN THE HIGH COURT OF DELHI AT NEW DELHI

+                    IA.No.9707/2008 in CS(OS)1690/2008

%11.12.2008                               Date of decision: 11.12.2008


FORD MOTOR COMPANY OF CANADA                                      .... Plaintiffs
LIMITED & ANOTHER
                             Through: Mr. Pravin Anand, Mr. Sagar Chandra and
                                      Ms. Abhilasha Kumbhat, Advocates.



                                        Versus


M/S FORD SERVICE CENTRE                                         .... Defendant
                                 Through: Mr. Sanant Kumar, Advocate.

CORAM :-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW

1.     Whether reporters of Local papers may
       be allowed to see the judgment?   YES

2.     To be referred to the reporter or not? YES

3.     Whether the judgment should be reported
       in the Digest?                   YES

RAJIV SAHAI ENDLAW, J.

1. The plaintiffs in this suit for permanent injunction to restrain

the defendant from using the trade mark FORD of the plaintiffs and

for the reliefs of delivery, rendition of accounts etc has sought

interim relief during the pendency of the suit, so restraining the

defendant. The defendant is carrying on business in the name and

style of M/s Ford Service Centre. It is the averment in the plaint that

the defendant is engaged in the business of automobile industry and

in particular servicing of cars; that the plaintiffs learnt of the

defendant using the plaintiffs' trade mark FORD in the month of

May, 2007; that the plaintiffs addressed a notice dated 6th June, 2007

asking the defendant to discontinue such use; that the defendant

vide reply dated 24th July, 2007 refused to comply with the legal

notice, leading to the filing of the present suit. It is the case of the

plaintiffs that the plaintiff No. 1 Ford Motor Company of Canada

Limited is the registered owner of the trademark FORD relating to

various automobile components falling in class 7, enamels in nature

of paint in class 2, shock absorber fluid, hydraulic brake fluid,

lubricating oil, greases also in class 2, locks for spare tyres, ignition,

doors etc all related to vehicles or for horological instruments in

class 6, goods in class 9, other vehicle components in class 11 and

class 7, tractors etc in class 12, goods in class 11, grease retainers of

rubber, gaskets, water pump etc in class 17 and vehicles, apparatus

for locomotion by land , air or water and parts thereof falling in class

12, in India. It is further the contention of the plaintiffs that the

plaintiff No.1 has had a long association in this country and the

trademark FORD is a well recognized trademark, the reputation and

goodwill whereof travels across territories.

2. It is further the case of the plaintiffs that the use of the name

FORD by the defendant amounts to the infringement of the statutory

rights of the plaintiffs and is likely to lead to confusion and deception

in the minds of the consumers and members of the trade as they

would be misled to believe that the goods and services offered by the

defendant belong to the plaintiff or have some connection, nexus or

association, endorsement or affiliation with the plaintiffs. The

plaintiffs in para 33 of the plaint has further stated that the

defendant appears to be engaged in the servicing of the Ford Car as

well as other cars and is using the name FORD as part of its trade

name and which would lead consumers into believing that the

defendant is the authorized service agent of the plaintiffs and or that

the defendant has been authorized / licensed to service the cars of

the plaintiffs.

3. The defendant has contested the suit by filing the written

statement. It is denied that the word FORD has been invented and

conceived by the plaintiffs. It is contended that the word FORD is

not a coined name and has a dictionary meaning of "a place where a

river or other body of water is shallow enough to be crossed by

wading." The defendant claims to have bona fidely and honestly

adopted the said name in the course of trade and not with the

intention to infringe upon the goodwill and reputation of the

plaintiffs. The defendant claims to be carrying on business in the

name and style of Ford Service Centre since the year 1981 and has

filed before this court the documents in support of the same. It has

been argued that on the date of adoption of the said trade name by

the defendant, the plaintiffs had no existence in India and thus the

plaintiffs cannot allege that the defendant has copied the plaintiffs'

trade mark. The claim of the plaintiffs is also sought to be defeated

on the ground of inordinate latches and acquiescence. It is further

argued that the plaintiffs never found themselves hurt by use of the

trade mark by the defendant. The claim of the plaintiffs is further

contested by contending that the registration of the trade mark

FORD of the plaintiffs does not extend to the business of selling of

petroleum products as carried on by the defendant. It is also urged

that the trade mark FORD was adopted by M/s Ford Meter Box

company running business of water meter since 1898 having 400

distributors around the world and another company in the name of

Ford Graphics also exists since 1960. It is so pleaded that since the

plaintiffs are engaged in the business of automobiles and the

defendant is engaged in the business of running a petrol pump, there

is no similarity in the business of both the parties which can create

any confusion in the minds of the people.

4. The counsel for the defendant on the commencement of the

hearing also stated that the defendant was willing to give an

undertaking to this court that the defendant is not and will not carry

on business in the name and style of Ford Service Centre of servicing

of vehicles and will carry on business under the said name and style

only of vending of petrol and diesel and for which the defendant has

an agreement with IBP. In this regard it may be stated that no ex

parte interim relief was granted to the plaintiffs upon institution of

the suit even though it was felt that the plaintiffs have made out a

case for grant of the same, owing to it being borne out from the

documents filed by the plaintiffs that the defendant is retailing

petrol/diesel of IBP under the name and style Ford Service Centre

and it being felt that if the defendant is restrained ex parte, the same

may interfere with the agreement/arrangement in the name of Ford

Service Centre of the defendant with IBP and may lead to closure of

the outlet of petrol/diesel causing inconvenience to the ultimate

consumers.

5. The proposal aforesaid of the counsel for the defendant is not

acceptable to the counsel for the plaintiffs. The counsel for the

plaintiffs, besides the pleadings in the plaint as to the aforesaid trade

mark, has also relied upon an order dated 9th July, 2008 of the

Deputy Registrar of Trade Marks in an opposition proceedings

between the plaintiffs and another party in which it has, inter alia,

been held that the trade mark FORD is a well known trade mark

within the meaning of Sections 2(1) (z) (g) and 11(6) of the Trade

Marks Act, 1999. Besides the classes mentioned in the plaint in

which the said trade mark is registered, during the course of

hearing, it was argued that the said trade mark is also registered in

class 37 with respect to the repair, maintenance and service of

vehicles. Reliance is also placed upon the philanthropic activities

being carried on in the name and style of the Ford Foundation which

was established in India as far back as in 1952. Reference was made

to dictionaries of English language wherein also FORD has been

recognized as a brand. From the documents it was shown that the

plaintiffs have 96 service outlets and 45 dealers in India and most of

which have the word FORD attached to their trade names vis Capital

Ford, Ganges Ford, Bhagat Ford, Harpreet Ford etc. It was argued

that the defendant has not offered any explanation as to why it had

adopted the mark FORD and the dictionary meaning of the word

FORD relied upon by the defendant was stated to be having no

connection /relevance to the business for which the impugned trade

name was being used by the defendant. It was argued that the two

instances of others using the word FORD were not of this country

but of USA and were cases of people whose name/surname was

FORD; FORD is not a surname or name in India. It was also urged

that the defendant cannot rely on 3rd party's using the said name.

6. Per contra, the counsel for the defendant has argued that the

entire case of the plaintiff was based on the premise that the

defendant was engaged in the business of servicing of vehicles and

there was no averment in the plaint in relation to the business of

vending of petrol / diesel. It was thus urged that upon the defendant

being willing to give an undertaking that it shall not carry on the

business of servicing of vehicles in the said trade name/style and will

only carry on the business of vending of petrol/diesel thereunder, the

basis of the case of the plaintiff falls and the plaintiff cannot be

entitled to any interim relief. It was also argued that not only

because of the difference in the businesses being carried on by the

plaintiffs and the defendant but also because of the nature of the

business activities of the defendant, there is no likelihood of the

plaintiffs suffering any prejudice if the defendant was permitted to

carry on the business of vending of petrol/diesel in the name and

style of Ford Service Centre. It was urged that buyers of

petrol/diesel are not attracted to the filling stations by its name but

only by location. It was further argued that the trade name FORD of

the plaintiffs was always associated with Oval Logo of the plaintiffs

and which the defendant was not using and for which reason also

there is no likelihood of any confusion. It was lastly urged that the

use by the defendant of the trademark of the plaintiffs was not as a

trade mark but as a trade name and to which situation only Section

29(5) of the Act was attracted and which covers only the goods or

services in which the trade mark is registered and not the other

goods and services. On the plea in the written statement of latches

and acquiescence reliance was placed on Intel Corporation v Anil

Hada 2006 VIII AD (Delhi) 841 where a Single Judge of this court

denied interim relief on such ground. The counsel for the defendant

relying upon observations in para 13 of Ajanta Manufacturing

Limited v Ajanta India Limited 2008 (38) PTC 83 (Delhi) (DB) also

offered that it was open to the court to circumscribe the user of a

trade mark by the other party in a manner which ensures that the

trade name is not used by the other party with the objective of

causing confusion. The defendant offered that it was willing to be

bound by any such restrictions as may be placed by this court. On

inquiry as to what prejudice would be caused to the defendant if the

defendant was restrained from using the name Ford Service Centre

in connection with its business of vending of petrol/diesel, since it

was the case of the defendant itself that its customers were not

attracted to it by its name, it was stated that the defendant will have

to seek change in a large number of government departments with

which it was registered and or from which it had permission for

carrying on its business aforesaid and all of which will be at a huge

cost.

7. In the face of the registration of the trademark FORD of the

plaintiffs in the class relating to motor vehicle repair and

maintenance service falling in class 37, it cannot be disputed that the

trade name Ford Service Centre being used by the defendant

infringes the trade mark of the plaintiffs in the said class. Even

though the defendant has stated that it is not and shall not carry on

the business of motor repairing and servicing but the same is not to

be known to the others. Any passerby motorist reading the board of

Ford Service Centre prominently displayed by the defendant at its

filling station on NH-8 and as is evident from the photograph filed by

the plaintiffs is likely to form an opinion that the said premises of the

defendant are a motor repair/service centre of the plaintiffs and or

under the patronage of the plaintiffs. The trade name of the

defendant does not suggest that it is a filling station only for the

public at large to form an opinion that the plaintiffs are not in the

business of filling station and thus the business of the defendant

could not have any association with the plaintiffs. In the light of the

offer aforesaid made by the counsel for the defendant, I had, during

the hearing, put to the counsel that even if the court was to give a

direction to the defendant to change its name from Ford Service

Centre to some other name showing that the business of the

defendant was of a filling station only, the same would still involve

the inconvenience and expenses claimed by the defendant involved

in the process of change of name. The counsel for the defendant

fairly agreed that the only option available was to write the word

FORD or the word Service Centre in a manner less conspicuous as

at present. However, in my view, same would not be apposite in the

facts of the present case.

8. Moreover in the present day times, the filling station or petrol

pump is not merely vending petrol but there is a host of other

activities generally carried on therein. The petrol pumps/filling

stations compete with each other offering various services to their

patrons of pressurized air, cleaning/polishing of cars, wind screen,

sale of lubricants, grease and other automobile and over the counter

components as well as of convenience stores.

9. In my view, the services of cleaning/polishing of wind

screen/automobile or sale of lubricants, grease or other components

at the filling station of the defendant under the name and style of

Ford Service Centre would clearly be infringement of the trade mark

of the plaintiff irrespective of whether the said components,

lubricants, greases etc themselves do not bear the mark FORD or

bear some other mark. The consumers of the said services/goods

would be attracted to the filling station of the defendant thinking

that the polishing, cleaning services and the lubricants, greases and

components etc available therein would be of the plaintiffs and is

likely to be less suspect to watch out that what has been ultimately

delivered is of someone else. The carrying on of such activities

would thus undoubtedly be an infringement of the registered trade

mark of the plaintiffs.

10. Not only so I also find that even sale of petrol/diesel by the

defendant under the name and style of Ford Service Centre would

also amount to infringement of the plaintiffs' registered trade mark

within the meaning of Section 29(2)(a) of the Act. I find similarity in

the goods i.e., petrol and diesel being sold by the defendant to the

goods and services covered by the registered trade mark. The

registrations aforesaid of the plaintiffs cover nearly the entire gamut

of motor vehicle components and services. The fuel for the said

motor vehicles is closely associated with the motor vehicle itself and

the public at large is unlikely to know that the plaintiffs are not in

the business of vending motor fuels. If the mark FORD has goodwill

and reputation and which is not challenged by the counsel for the

defendant, then the possibility of a passerby motorist getting

attracted to the filling station of the defendant for the reason of it

being associated with the plaintiffs is imminent. A passerby is not to

know that the defendant is not running a service station there, as the

trade name of the defendant unequivocally suggests. The documents

filed by plaintiffs show that the dealers and service outlets of plaintiff

are using the mark FORD. The defendant who otherwise has no

association with plaintiffs by use of the mark FORD in its trade name

is likely to be considered one such dealer or service centre of

plaintiffs. A passerby even if not requiring the services of a service

centre of the plaintiffs is likely to believe that the petrol/diesel being

sold at the service centre of the defendant is the business of the

plaintiffs.

11. The counsel for the plaintiff has relied upon SIA Gems and

Jewellery Pvt Ltd v SIA Fashion 2003(27) PTC 227 (Bombay),

Apple Computer Inc v Apple Leasing and Industries PTC

(Suppl) (2) 45 (Delhi) and Alfred Dunhill Limited v Kartar Singh

Makkar 1999 PTC (19) 294 Delhi. But to my mind, in view of the

aforesaid factual position, there is no need to discuss the said

judgments.

12. I do not find any merit in the contention of the counsel for the

defendant that in the facts aforesaid only Section 29(5) is attracted

or that even if that were to be so, it would apply only to use of trade

name for dealing in goods and services in respect of which the trade

mark is registered. The counsel for the plaintiffs has argued that

under Section 9 of the 1958 Act as under Section 2(m) of the 1999

Act, mark includes a heading and name. It was contended by

reference to the objects and reasons of the 1999 Act that the reason

for new enactment was, inter alia, to prohibit use of someone else's

trade mark as part of corporate name or name of business concern

and for protection of well known trade marks. It was rightly argued

that Section 29(5) did not have an equivalent provision under the old

Act and it could not be read as restricting infringement of a

registered trade mark as a trade name in relation to only those

goods with respect to which the said mark was registered and such

an interpretation would be contrary to the objects and reasons of the

new enactment. I also find that Section 2(z)(b) of the new enactment

defines a trade mark as a mark capable of distinguishing the goods

or services of one person from those of the other. In view of the said

position of law the submission of the defendant that a use of the

trade mark in a trade name dealing with goods or services other than

that in which the trade mark is registered does not amount to

infringement of the trade mark or that such infringement is confined

to Section 29(5) only, is not correct.

13. I also do not find any other reason/basis whatsoever for the

plaintiff to have commenced using the name/mark FORD in relation

to its automobile related business which now is stated to be

restricted to vending of petrol/diesel only, but for its association with

plaintiff, a worldwide giant in automobile industry. Even though the

plaintiff may not have had any automobile business in India at that

time owing to the then prevailing governmental policy but the

plaintiff undoubtedly had a reputation/name/goodwill in India even

then. The reliance by the defendant on the dictionary meaning of

FORD and which in any case is not used in common

vocabulary/parlance, cannot be perceived as a reason for the

defendant to have commenced its automobile related business in the

name of FORD. It is common knowledge that prior to enforcement of

pollution control norms and insistence of effluent treatment facilities

for automobile service centres, nearly each filling station/petrol

pump had attached to it a motor repair/servicing work shop. The

defendant, which earlier had its works at old Gurgaon Road and now

at NH-8, also in all likelihood, besides in the business of vending

petrol/diesel was also carrying on business of servicing/repairing

automobiles. There could be no other reason for the name FORD

SERVICE CENTRE. A shallow point in the river or other water body

has no connection whatsoever with the said business and the

adoption of the mark/name of the plaintiff by the defendant was

clearly to take advantage of the recognition and association of the

plaintiff in automobile and automobile servicing industry. Till the

time the plaintiff did not recommence business in India or was not

manufacturing automobiles in India and was consequently not having

its dealers and service centres in India, it may have been argued that

the territories of the two were different; but after the plaintiff has its

own dealers/service centres with the same name, allowing defendant

to continue will be akin to allowing repeated trespass to property of

the plaintiff. In my view once such intellectual rights have been

given the stature of a "property", all principles of tangible property

ought to apply. I do not find any reason to defer so restraining the

defendant till the disposal of the suit.

14. In fact the pleas of the defendant of the plaintiff having no

presence/business in India when the defendant adopted the

mark/name are against the plea of the defendant of delay and

latches. The plaintiff would, irrespective of knowledge, naturally be

affected when it spread its wings in India and found defendant to be

trespassing.

15. I also do not find any merit in the plea of defendant of two

others, outside India using FORD in relation to other business. Their

case is not before this court for adjudication and even if the plea of

dilution was to be available in an infringement action, no case of

dilution in India is made out. Recently the Division Bench of this

Court in Pankaj Goel v Dabur India Limited 2008 (38) PTC 49

(Delhi) held that merely because others are carrying on business

under similar or deceptively similar trademark or have been

permitted to do so by the plaintiff, cannot offer a licence to the world

at large to infringe the trademark of the plaintiff. It was further held

that even otherwise, the use of similar marks by a third party cannot

be a defence to an illegal act of passing off. In Castrol Limited v

A.K. Mehta 1997 (17) PTC 408 DB it was held that a concession

given in one case does not mean that other parties are entitled to use

the same. Also, in Prakash Roadline v Prakash Parcel Service

1992 (2) Arbitration Law Reporter 174 it has been held that use of a

similar mark by a third party in violation of plaintiff's right is no

defence.

16. On the touchstone of balance of convenience also I find in

favour of plaintiff. It is the defendant's own case (though not

believed as aforesaid) that the success/volume of its business is

unrelated to its name. Only inconvenience in terms of costs involved

in change of name is urged. The said costs can always be

compensated. On the contrary the loss caused to the plaintiff by the

defendant continuing to use the impugned name will be practically

impossible to determine with precision. Besides as aforesaid

irrespective of loss, repeated trespass to property of plaintiff ought

not to be permitted.

17. The plaintiff is thus found entitled to the interim relief. The

defendant, its proprietor, partners and agents, during the pendency

of the suit, are restrained from directly or indirectly using the

trademark FORD or any other mark deceptively similar thereto as

part of their trade name or trading style or on hoarding, stationery,

advertising etc. Though, as aforesaid the ex parte order was not

granted considering of certain disruption in the contract of the

defendant with IBP and sufficient time has elapsed thereafter but

still, this order is made effective w.e.f. 1st January, 2009 so as to

allow the defendant to affect the requisite changes.

RAJIV SAHAI ENDLAW (JUDGE) December 11, 2008 M