Delhi High Court
General Electric Company vs Mr. J.Singh And Ors. on 21 December, 2011
Author: V. K. Jain
THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Pronounced on: 21.12.2011
+ CS(OS) 1284/2006
GENERAL ELECTRIC COMPANY ..... Plaintiff
Through: Mr Pravin Anand, Ms Kruttika
Vijay and Mr Shrawan Chopra, Advs.
versus
MR. J.SINGH AND ORS. ..... Defendants
Through: None
CORAM:-
HON'BLE MR JUSTICE V.K. JAIN
V.K. JAIN, J (ORAL)
1. The plaintiff is a large corporation incorporated in
United State of America and also has a subsidiary in India
by the name GE International Operations Company, Inc.
The plaintiff, which is a 122 years old company, claims to be
the world‟s largest diversified services company, providing
high quality, high technology industrial and consumer
products, has 250 manufacturing plants in 25 countries
and employs 3,40,000 personnel. The plaintiff was
recognized as the „world‟s most valuable company‟ by Time
CS(OS)No. 1284/2006 Page 1 of 39
magazine. It is alleged that plaintiffs Six Sigma quality,
which is aimed at complete customer satisfaction, translates
into high degree of efficiency and uniformity in products and
services, and a hard-to-match record of minimal rate of
defects per million products, giving it a distinct edge over
competitors. The businesses of the plaintiff include (i) GE
Appliances, which is one of the largest manufacturers of
major appliances such as dehumidifiers, refrigerators and
freezers, electric and gas ranges, microwave ovens, washers
and dryers, dish washers, disposals and compactors, room
air-conditioners, water purifying systems etc. being sold
under various well-known trademarks under GENERAL
ELECTRIC and GE (Monogram); (ii) GE Lighting, leading
supplier of lighting products such as incandescent,
fluorescent, high intensity discharge, halogen and holiday
lamps along with portable lighting fixtures, lamp
components and quartz products; (iii) GE Medical Systems,
a world leader in medical diagnostic imaging technology
with products including computed tomography (CT
Scanners), X-Ray equipment, nuclear medicines cameras,
ultra sound systems, mammography and radiation therapy
equipment, etc.; (iv) GE Aircraft Engines, world‟s largest
CS(OS)No. 1284/2006 Page 2 of 39
producer of large and small jet engines for commercial and
military aircrafts; (v) GE Industrial Systems, industrial
leaders in design and motivate or products such as
industrial motors and drives, circuit breakers, switches,
transformers, switch boards, switchgears, meters, relays,
programmable logic controllers, and power management
solutions; (vi) GE Plastics, a world leader in versatile high
performance engineered plastics used in business
equipment, automotives, building and construction of other
industries; (vii) GE Information Services, a global leader in
business-to-business electrical solutions; (viii) NBC which is
a leading US television network with outstanding news,
sports and entertainment programming.; (ix) GE Capital
Services a diversified financial services organization that
provides services globally including Europe and Asia
through a network of several highly-focused businesses in
five core niches; Equipment Management, Consumer
Services, Specialized Financing, Mid-Market Financing and
Specialty Insurance; (x) GE Power Systems a world leader in
the design, manufacture and service of gas, steam and
hydro electrical turbines and generators for power
production, pipeline and industrial applications; (ix) GE
CS(OS)No. 1284/2006 Page 3 of 39
Transportation Systems, which manufactures more than
half of diesel freight locomotives in North America and has
operations in 74 countries.
2. The trademarks GE and GENERAL ELECTRIC
being used by the plaintiff as its trade name, trademark and
is mark are stated to be well-known marks. The plaintiff-
company holds the following registrations in India in respect
of the trademark GE and GENERAL ELECTRIC and their
variations:
Trademark Class Description of Goods Regn.
No.
GE Monogram 1 Chemical products used in 399688
industry science,
photography, agriculture,
horticulture; forestry,
artificial and synthetic
resins; plastics in the form of
powders; liquids of pastes for
industrial use; manures
(natural and artificial); fire
extinguishing compositions;
tempering substances and
chemical preparations for
soldering; chemical
substances for preserving
foodstuffs, tanning
substances, adhesive
substances used in industry
GENERAL 2 Paints, varnishes (other than 10091
ELECTRIC GE insulating varnish), shellacs,
lacquers and resins
GE Monogram 3 Bleaching preparations and 399956
other substances for laundry
use; cleaning; scouring and
abrasive preparations; soaps,
CS(OS)No. 1284/2006 Page 4 of 39
perfumery, essential oils;
cosmetics; hair lotions;
dentifrices.
GE Monogram 6 Metal alloys not included in 10085
other classes
GE Monogram 7 Compressors (Machinery); 10086
pump, condensers and
gearing (not included in
other classes), machine tools
and parts thereof, electric
alternators, electric
generators, electric motors,
electric ignition devices for
engines, electric hoists,
magnetos, mining
machinery, elastic fluid
turbines, internal
combustion engines not
included in class 12, and
marine engines.,
GE Monogram 9 Magnets 304290
GENERAL 9 Cinematograph apparatus, 10094
ELECTRIC GE radio receiving and
transmitting apparatus,
television apparatus,
thermionic valves, cathode
ray tubes, conductors,
phonographs, insulated wire,
loudspeakers, electric
welding apparatus, electric
circuit breakers, circuit
closers, electric fuses,
electric control apparatus,
electric protective devices,
electric converters, rectifiers,
transformers, amplifiers,
discharge tubes and parts
thereof, electric relays,
electric resistances, electric
measuring apparatus and
instruments, switches and
switchboards, induction
apparatus, collectors,
CS(OS)No. 1284/2006 Page 5 of 39
contact devices, smoothing
irons, flat irons, vacuum
cleaners.
GE Monogram 9 Cinematograph apparatus, 10087
radio receiving and
transmitting apparatus,
television apparatus,
thermionic valves, cathode
ray tubes, conductors,
phonographs, insulated wire,
loudspeakers, electric
welding apparatus, electric
circuit breakers, circuit
closers, electric fuses,
electric control apparatus,
electric protective devices,
electric converters, rectifiers,
transformers, amplifiers,
discharge tubes and parts
thereof, electric relays,
electric resistances, electric
measuring apparatus and
instruments, switches and
switchboards, induction
apparatus, collectors,
contact devices, smoothing
irons, flat irons, vacuum
cleaners.
GENERAL 10 Diagnostic apparatus, 107920
ELECTRIC GE accessories and parts thereof
using X-ray, Gamma Rays or
other radiation, such as spot
film devices, X-Ray image
intensifier systems, X-ray
fluoroscopes, mobile X-ray
units, dental X-ray units, X-
ray tables, radiographic film
viewers, computerized
tomography scanner
systems, nuclear camera
systems and ultra sound
scanner systems, devices
used to monitor physiological
activities, such as cardiac
activity, temperature and
blood pressure and parts
CS(OS)No. 1284/2006 Page 6 of 39
and accessories thereof,
prosthetic devices such as
defibrillators and parts and
accessories thereof.
GE Monogram 10 X-ray apparatus for 107919
locomotion by land, air and
water.
GE Monogram 11 Gas and oil-burning 10088
furnaces, electric fans,
electric air conditioning
apparatus, electric heating
apparatus, electric cooking
apparatus, electric furnaces,
electric incandescent lamps,
electric gaseous discharge
lamps, electric photographic
flash lamps, electric
refrigerating apparatus,
electric washing apparatus
(clothes and dishes), electric
lighting fittings and
accessories not included in
other classes.
GENERAL 11 Gas and oil-burning 10095
ELECTRIC GE furnaces, electric fans,
electric air conditioning
apparatus, electric heating
apparatus, electric cooking
apparatus, electric furnaces,
electric incandescent lamps,
electric gaseous discharge
lamps, electric photographic
flash lamps, electric
refrigerating apparatus,
electric washing apparatus
(clothes and dishes), electric
lighting fittings and
accessories (not included in
other classes).
GE in block 12 Vehicles, apparatus for 583550
letters locomotion by land, air or
water
GE 17 Gutta percha; indiarubber; 399689
Monogram balata and substitutes;
articles made from these
CS(OS)No. 1284/2006 Page 7 of 39
substances and not
included in other classes,
plastics in the form of
sheets; blocks and rods;
being for use in
manufacture; materials for
packing; stopping or
insulating; asbestos; mica
and their products; hose
pipes (not metallic)
GENERAL 17 Dielectric or insulating oils 10090
ELECTRIC and compounds
GE
3. The plaintiff has wide presence in India through
the following subsidiaries/Joint Venture Companies:
i. GE India Technology Centre Pvt. Ltd.
ii. GE Plastics India Limited
iii. Wipro GE Medical Systems Limited
iv. GE Power Control India Pvt. Ltd.
v. GE Lighting (India) Ltd.
vi. GE Bayer Silicones (India) Pvt. Ltd.
vii. GE Fanuc Systems Pvt. Ltd.
viii. GE BE Limited
ix. GE Motors (India) Ltd.
x. GE Power Services (India) Ltd.
xi. GE Capital International Services
xii. GE Capital Services India Limited
CS(OS)No. 1284/2006 Page 8 of 39
xiii. GE Countrywide Consumer Financial Services Ltd.
xiv. GE Capital Transportation Financial Services Ltd.
xv. GE Capital Business Process Management Services
Pvt. Ltd.
xvi. BHEL GE Gas Turbine Services Ltd.
xvii. Satyam GE Software Services Pvt. Ltd.
xviii. Godrej GE Appliances Ltd.
xix. GE Medical Systems X-Ray (South Asia) Ltd.
xx. IGE (India) Limited.
4. It is alleged that during last more than 100 years,
the plaintiff has built up an unparalleled reputation and
goodwill in its trade name/trademark GENERAL ELECTRIC
and GE and it was rated as „The World‟s Most Respected
Company‟ by the Financial Times from 1998 to 2003, „The
Company of the Century‟ by Time Magazine, „Most Admired
Company in America‟ by Fortune Magazine from 1999 to
2002 and ranks 05th in overall ranking in the Fortune 500
companies. It is claimed that by virtue of long and
continuous usage of the trade name and trade mark
GENERAL ELECTRIC and trademark GE by the plaintiff in
practically all parts of the world, including India in respect
of enormous variety of goods and services, the aforesaid
CS(OS)No. 1284/2006 Page 9 of 39
trade name and trademark have come to be identified
exclusively with the plaintiff and use of the aforesaid mark
in relation to any goods would automatically be considered
to be as use by the plaintiff.
5. The plaintiff had revenue of US$ 132226 million,
US$ 134641 million and US$ 152866 million in the years
2002, 2003 and 2004 respectively. It is also claimed that
the plaintiff-company extensively advertises and promoting
its goods and services under the trademark GE and
GENERAL ELECTRIC on a regular basis in newspapers and
magazines having international reach and circulation. The
actual promotional expenditure of the plaintiff is alleged to
be US$ 406.3 million, US$ 439.5 million and US$ 471.6
million in the years 1997, 1998 and 1999 respectively. It is
also alleged that the plaintiff has been zealously protecting
its rights in the aforesaid mark and has obtained
injunctions from this Court alone in a number of cases
mentioned in para 20 of the plaint.
6. Defendant No. 1 Mr J. Singh and defendant No. 2
Mr Sukhwinder Singh are carrying business under the
name and style of Galaxy Enterprises (Defendant No.3) and
they appear to be manufacturing nuts, bolts, suts, washers,
CS(OS)No. 1284/2006 Page 10 of 39
rivets. In April, 2005, the plaintiff came across an
advertisement in Trademarks Journal of 14th February,
2005, whereby it came to know that the defendant had
applied for registration of the Trademark GE in class 6 in
respect of all kinds of nuts, bolts, suts, etc. The plaintiff
filed an Opposition to the aforesaid registration, which is
stated to be pending. It is alleged that use of the impugned
mark by the defendants is bound to mislead the consumer
and members of the trade, who being familiar with the
reputation of the mark GE, are likely to be deceived on
account of use of the aforesaid marks by the defendant. It is
also alleged that adoption of the trademark GE by the
defendants is mala fide and dishonest, aimed at earning
illegal profits by encashing upon the tremendous reputation
and goodwill which the brand of the plaintiff enjoys
throughout the world.
7. The plaintiff has sought an injunction, restraining
the defendants from selling, advertising or promoting any
product or service under the trademark GE or any other
mark deceptively similar to plaintiff‟s registered trademark.
The plaintiff has also sought damages, amounting to Rs 20
lakh, besides delivery up of the infringing material.
CS(OS)No. 1284/2006 Page 11 of 39
8. The defendant was proceeded ex parte vide order
dated 14th March, 2007. The plaintiff has examined its
constituted attorney Mr Mrigank Sharma by way of ex parte
evidence. In his affidavits by way of evidence, Mr Sharma
has supported on oath the case set out in the plaint and
has proved various document relied upon by the plaintiff.
9. In Tata Sons Ltd. vs. Manoj Dodia & Ors 2011
(46) PTC 244 (Delhi), I had an opportunity to examine as to
what in India would constitute a well-known mark within
the meaning of Section 2(ZG) of Trademarks Act, 1999. This
Court, inter alia, observed as under:
"The doctrine of dilution, which has
recently gained momentus, particularly in
respect of well known trademarks
emphasises that use of a well known
mark even in respect of goods or services,
which are not similar to those provided
by the trademark owner, though it may
not cause confusion amongst the
consumer as to the source of goods or
services, may cause damage to the
reputation which the well known
trademark enjoys by reducing or diluting
the trademark‟s power to indicate the
source of goods or services.
Another reason for growing acceptance of
trans-border reputation is that a person
using a well known trademark even in
respect of goods or services which are not
similar tries to take unfair advantage of
the trans-border reputation which that
CS(OS)No. 1284/2006 Page 12 of 39
brand enjoys in the market and thereby
tries to exploit and capitalize on the
attraction and reputation which it enjoys
amongst the consumers. When a person
uses another person‟s well known
trademark, he tries to take advantage of
the goodwill that well known trademark
enjoys and such an act constitutes an
unfair competition.
The concept of confusion in the mind of
consumer is critical in actions for
trademark infringement and passing off,
as well as in determining the
registrability of the trademark but, not all
use of identical/similar mark result in
consumer confusion and, therefore, the
traditionally principles of likelihood of
confusion has been found to be
inadequate to protect famous and well
known marks. The world is steadily
moving towards stronger recognition and
protection of well known marks. By
doing away with the requirement of
showing likelihood of confusion to the
consumer, by implementing anti-dilution
laws and recognizing trans-border or spill
over reputation wherever the use of a
mark likely to be detrimental to the
distinctive character or reputation of an
earlier well known mark. Dilution of a
well known trademark occurs when a well
known trademark loses its ability to be
uniquely and distinctively identify and
distinguish as one source and
consequent change in perception which
reduces the market value or selling power
of the product bearing the well known
mark. Dilution may also occur when the
well known trademark is used in respect
of goods or services of inferior quality. If
a brand which is well known for the
quality of the products sold or services
CS(OS)No. 1284/2006 Page 13 of 39
rendered under that name or a mark
similar to that mark is used in respect of
the products which are not of the quality
which the consumer expects in respect of
the products sold and/or services
provided using that mark, that may evoke
uncharitable thoughts in the mind of the
consumer about the trademark owner‟s
product and he can no more be confident
that the product being sold or the service
being rendered under that well known
brand will prove to be of expected
standard or quality.
The owner of a well known trademark
may (i) seek cancellation or (ii) prevent
registration of a trademark which is same
or similar to the well known mark
irrespective of whether the impugned
mark is in relation to identical or similar
goods or services or in relation to other
categories of goods or services. He may
also prevent others from incorporating
the well known trademark as a part of
their corporate name/business name.
Even if a well known trademark is not
registered in India, its owner may avail
these rights in respect of the trademark
registered/used or sought to be
registered/used in India, provided that
the well known mark is otherwise known
to or recognized by the relevant section of
public in India.
The existence of actual
confusion or a risk of confusion is,
however, necessary for the protection of a
well known trademark, as a result of
infringement.
Trademarks Act, 1999 does not specify
the factors which the Court needs to
consider while determining whether a
mark is a well known mark or not,
CS(OS)No. 1284/2006 Page 14 of 39
though it does contain factors which the
Registrar has to consider whether a
trademark is a well known mark or not.
In determining whether a trademark is a
well known mark or not, the Court needs
to consider a number of factors including
(i) the extent of knowledge of the mark to,
and its recognition by the relevant public;
(ii) the duration of the use of the mark;
(iii) the extent of the products and
services in relation to which the mark is
being used; (iv) the method, frequency,
extent and duration of advertising and
promotion of the mark; (v) the
geographical extent of the trading area in
which the mark is used; (vi) the state of
registration of the mark; (vii) the volume
of business of the goods or services sold
under that mark; (viii) the nature and
extent of the use of same or similar mark
by other parties; (ix) the extent to which
the rights claimed in the mark have been
successfully enforced, particularly before
the Courts of law and trademark registry
and (x) actual or potential number of
persons consuming goods or availing
services being sold under that brand. A
trademark being well known in one
country is not necessarily determinative
of its being well known and famous in
other countries, the controlling
requirement being the reputation in the
local jurisdiction."
10. The deposition of Mr Mrigank Sharma, coupled
with the documents filed by the plaintiff-company would
show that the mark GE and GENERAL ELECTRIC are
known almost throughout the world, including India and,
CS(OS)No. 1284/2006 Page 15 of 39
therefore, are widely recognized as the trademarks
belonging to the plaintiff-company. These trademarks have
been in use in a large number of countries for more than
100 years, in respect of a large number of diversified
products and services. The plaintiff-company has been
regularly advertising its brand names and incurring huge
expenditure on such advertisement and promotion on a
regular basis, almost throughout the world, including India.
The plaintiff-company holds registrations in the aforesaid
trademarks in a large number of countries. It has about 250
manufacturing capacities in various countries and employs
more than 3 lakh personnel. The sale turnover of the
plaintiff-company, using the aforesaid trademarks, was
US$ 147955 million, US$ 163391 million and US$ 172738
million in the years 2005, 2006 and 2007 respectively,
which is a strong indicator of the worldwide presence, the
plaintiff has in a large number of products and services. The
promotional expenditure of the plaintiff-company was US$
406.3 million, US$ 439.5 million and US$ 471.6 million in
the years 1997, 1998 and 1999 respectively. The plaintiff-
company carries on business in India through as many as
19 subsidiaries/joint venture companies.
CS(OS)No. 1284/2006 Page 16 of 39
The plaintiff-company holds a number of
trademark registrations in India in class 1, 3, 6, 7, 9, 10,
11, 12, 17, 41 and 42. The registrations in class 1, 3, 6, 7,
9, 10, 11 & 17 are GE (Monogram - the letter GE in a circle,
in a stylized form). The registrations in class 2, 9, 10, 11 &
17 are trademark registrations of GENERAL ELECTRIC GE,
whereas, the registration in class 12 is of the GE trademark.
The plaintiff-company has been zealously protecting its
aforesaid trademarks and filed CS(OS) No. 1880 of 2000,
CS(OS) No. 1180 of 2001, CS(OS) No. 1634 of 2003, CS(OS)
No. 239 of 2005, CS(OS) No. 241 of 2005, CS(OS) No. 242
of 2005, CS(OS) No.404 of 2005 and 1 CS(OS) No. 1119 of
2006 in this Court and obtained injunction against
infringement of its trademark. The plaintiff-company has
applied for a number of other registrations in India in
different classes. The plaintiff-company has consistently
been ranked amongst world‟s largest corporations. It was
accorded first and second rank in the Forbes Super 500 list
of companies from 1997 to 2004 and ranked 5th in the year
2005. It was recognized as „world most respected company‟
by Financial Time Magazine in the years 1999 to 2004 and
„globally most admired company‟ by Fortune magazine in
CS(OS)No. 1284/2006 Page 17 of 39
the years 1999 to 2007. It has also come in evidence that
the trademarks of the plaintiff-company were valued at US$
39 billion, US$ 42 billion, US$ 44 billion and US$ 49 billion
in value, in the year 2000, 2001, 2004, 2005 and 2006
respectively. It was voted as the third most admired
company by the Fortune magazine in the year 2005 and
Fourth most "Innovative Company" by Business Week for
the year 2008.
Considering the overwhelming presence of the
plaintiff-company almost throughout the world, the
diversified range of the products and services offered by it
throughout the world, widespread presence of the company
in India through a number of subsidiaries/joint venture
companies, various registrations of the trademark
GE/GENERAL ELECTRIC, leading position accorded to it by
highly reputed business magazines such as Time, Fortune
and Business Week, the variety of the trademarks being
used by the plaintiff-company and the orders passed by this
Court from time to time against infringement of the
trademarks of the plaintiff-company, the sale turnover of
the plaintiff, promotional expenditure being incurred by it
throughout the world in building its brands and promoting
CS(OS)No. 1284/2006 Page 18 of 39
its business, there being no evidence of any other persons
holding registration or using the trademark GE and the
reputation which the plaintiff-company enjoys throughout
the world, including India, it can hardly be disputed that
GENERAL ELECTRIC as well as GE, whether written in
plain letters or in a stylized form such as a Monogram are
well-known marks of the plaintiff, within the meaning of
Section 2(ZG) of Trademarks Act.
11. The mark which the defendant used or proposed to
be used is a word mark consisting of two letters of English
alphabet „G‟ & „E‟. The plaintiff has only one registration of
the word mark GE which is in Category 12, whereas rest of
its registrations are of the word mark GENERAL ELECTRIC
and GE (monogram). The question which comes up for
consideration is as to whether use/proposed use of the word
mark GE by the defendant constitutes infringement of a well
known mark of the plaintiff. In my view, not only GE
(monogram) and GENERAL ELECTRIC but also the word
mark GE, are the well known marks of the plaintiff.
Assuming, however, that the word mark GE is not the well
known mark of the plaintiff and only GENERAL ELECTRIC
and GE (monogram) are its well known marks, use of the
CS(OS)No. 1284/2006 Page 19 of 39
word mark GE by the defendant, in my view, would still
constitute infringement of the well known mark GE
(monogram) of the plaintiff. It is by now settled proposition
of law that in order to constitute infringement of a registered
trademark, the impugned mark need not be its absolute
replica and it is sufficient to constitute infringement if the
impugned mark is visually, phonetically or otherwise so
close to the registered trademark of the plaintiff that it
would be considered to be a imitation of the registered
trademark. In fact, the infringer is not likely to use a mark
which is absolutely identical of a registered trademark, but
would like to make some changes here and there so that in
the event the mark used by him is challenged, he can take a
plea that since his mark was not identical to the mark of the
plaintiff, no case of infringement was made out.
Section 29(4) of Trademarks Act 1999 which deals
with infringement of a well known mark, to the extent it is
relevant, provides that such a mark is infringed by use of a
mark which is identical with or similar to the registered
trademark, is used in relation to goods or services which are
not similar to those for which the trademark is registered
and use of the impugned mark, without due cause takes
CS(OS)No. 1284/2006 Page 20 of 39
unfair advantage or of is detrimental to the distinctive
character or repute of the registered trademark. The mark
GE, though not identical to the registered trademark GE
(monogram) of the plaintiff, it is difficult to dispute that it is
similar to the plaintiff‟s trademark GE (monogram). If there
is a deceptive resemblance between registered trademark
and the impugned trademark, that would be sufficient to
constitute infringement within the meaning of Section 29 of
the Trademarks Act, 1999. It was observed by Supreme
Court in Ruston & Hornsby Ltd. v. The Zamindara
Engineering Co. 1969(2) SCC 727, where the alleged
infringement consists of using not the exact mark on the
register, but something similar to it, the test of infringement
is the same as in an action for passing off, which would
mean the test as to likelihood of confusion or deception
arising from similarity of marks. The question as to
whether the two competing marks are so similar as to be
likely to deceive or to cause confusion has to be considered
from the point of view of a man of average intelligence and
imperfect collection, who is not likely to notice and retain in
his mind, all the details of the registered trademark. What
such a person notices and keeps in mind is what is called
CS(OS)No. 1284/2006 Page 21 of 39
essential or distinguishing features of the mark which he
has earlier seen on the goods purchased or services availed
by him or which on account of quality of products sold or
the services rendered under that mark has built such a
reputation that he wants to buy the goods being sold or
services being offered under that particular mark without
having purchased such goods or availed such services in the
past. The Courts need to ensure that there is no confusion
in the mind of such a customer as regards source of the
product or service he is buying and he needs to be assured
that he is buying the same product or the same services
which he intends to buy and identifies on account of the
mark under which it is sold.
In Saville Perfumery Ld. vs. June Perfect Ld.,
LVIII, reports of Patent, Design and Trademark cases - 6, the
plaintiff was using the trademark "June", printed in a
particular way over a bar and a word "Saville" was used in
connection with that trademark. The mark was not merely
the word "June", but the word "June" represented in a
particular way. Underneath, the word "June" was a garland
of flowers and roses and the plaintiff had no right to the
exclusive use of the flower devices. The defendants were
CS(OS)No. 1284/2006 Page 22 of 39
selling goods which had upon them the word "June". The
case of the plaintiff, both as regards, infringement as well as
passing off, rested upon the use of the word "June" on
lotion, lipstick and the shampoo powder. The case of the
plaintiff was that the word "June" had become so identified
with the toilet preparations manufactured by it that use of
the word "June" inevitably led to the goods being sold as the
goods of the plaintiff. On the case of the plaintiff having
been dismissed, the matter was taken to Court of Appeal,
which allowed the appeal, holding it to be the case of
infringement as well as passing off. The Court of Appeal
noted that infringement takes place not merely by exact
imitation but also by use of a mark so nearly resembling the
registered mark as is likely to deceive. The Court noted
that, in the case of certain goods, traders and perhaps the
public too, may be expected to receive so strong an
impression of the actual mark as to lead to the conclusion
that nothing short of a degree of resemblance apparent to
the eye will cause the necessary likelihood of deception, but
many articles do not fall within this category. It was
observed that the traders who deal with a large number of
marks used in the trade in which they are interested, do
CS(OS)No. 1284/2006 Page 23 of 39
not, in practice, and indeed cannot be expected to, carry in
their heads the details of any particular mark, while the
class of customer among the public which buys the goods
does not interest itself in such details. In such cases, the
mark comes to be remembered by some feature in it which
strikes the eye and fixed itself in the recollection. Such a
feature is referred to sometimes as the distinguishing
feature and sometimes as the essential feature of the mark.
The Court held, on evidence that the word "June" being the
distinguishing or essential feature of the Appellants‟ mark,
the traders and members of the public who see the mark on
the goods which they purchase describe the Appellants‟
goods. The proposition of Law Court of Appeal approved
was that the question of resemblance and the likelihood of
deception is to be considered by reference not only to the
whole mark, but also to its distinguishing or essential
features, if any. The Court observed that if the retailer
ordering the goods from the wholesaler asks for the goods
under the word "June", and in answer to that order, an
article marked "June", which, in fact, emanates from the
defendant is supplied, there will probably be deception of
the customer and possibly of the retailer and therefore user
CS(OS)No. 1284/2006 Page 24 of 39
of the word "June" was a case of infringement. The matter
was taken by the defendants to House of Lords by way of
appeal, which was dismissed. The Appellants before the
House of Lords contended that the conflicting marks were
different since the word "June" used by them, if compared
with the plaintiff‟s registered trademark, was not calculated
to deceive. Rejecting the contention, the House of Lords
held that distinguishing feature of the plaintiff‟s registered
mark, was the word "June" and hardly any evidence was
required to enable the Court to come to this conclusion and
since the Appellants had used an essential feature of the
plaintiff‟s mark, which was registered mark, a case of
infringement was made out. The House of Lords came to
the conclusion that the use of the word "June" as a mark on
the goods so nearly resembled the Respondents‟ mark as
was to be likely to deceive or cause confusion in the minds
of the purchasers with a normally imperfect recollection of
the precise picture representing or containing the registered
mark.
A person who has seen or come across the mark
GE or GE (monogram) of the plaintiff is likely to notice the
letters G & E and neither the stylized form, in which these
letters are written nor the circle in which these letters
enclosed. What he is likely to notice and retain in his mind
are the letters GE and if he comes across any goods bearing
the mark GE, whether it is a word mark, or the letters GE
written in a stylized form or it is the letters G & E written in
some form other than the form in which it is being used by
the plaintiff, he is likely to presume it to be a mark of the
plaintiff company. The core, and I would say only
distinctive or essential feature of the trademark
GE(monogram) of the plaintiff are the letters G & E and,
therefore, if anyone uses these two letters together,
irrespective of the form in which they are used, this, to my
mind, would constitute infringement of the registered
trademark GE(monogram) of the plaintiff.
I am in agreement with the learned Counsel for the
plaintiff that in order to decide whether the impugned mark
infringes the registered trademark of the plaintiff or not, the
Court has to compare not only the whole of the marks but
also their essential or distinguishing features and if the
Court comes to the conclusion that the defendant has used
the core or distinguishing part of the registered trademark
of the plaintiff that would be the case of infringement since
such a use is likely to cause deception and confusion in the
mind of the customer, particularly with respect to source of
the goods. If the facts of this case are compared with the
facts in the case of Saville Perfumery (supra) the case of
the plaintiff stands on a much stronger footing.
In Naturelle Trade Mark case, the plaintiff was
registered proprietor of the trademark NATREL in respect of
a range of cosmetics and toiletries. The application for
registration of NATURELLE in the device mark and device in
respect of skin and hair care preparation etc. was opposed
by the proprietor of the trademark NATREL. The Registrar
refused the application for registration which was
challenged. It was held in appeal that the word
NATURELLE was confusingly similar to the word NATREL
and the mark NATURELLE was apt to capture the
distinctiveness of the earlier trademark NATREL which was
likely to cause confusion.
In the case before this Court, the mark of the
plaintiff GE (monogram) irrespective of the form in which it
is written and the circle in which the letters are enclosed,
will be pronounced as GE. The mark used/proposed to be
used by the defendant being GE, there is absolute
phonetically similarity between the two marks. It can
therefore hardly be disputed that the mark GE
used/proposed to be used by the defendants is similar to
the mark GE (monogram) of the plaintiff. If a person goes to
the mark seeking to buy a product of the plaintiff company
he would ask for the product of GE and if a product bearing
the trademark GE, in plain letters of English alphabets is
offered to him, he is likely to take it as a product of the
plaintiff company irrespective of the fact that neither the
letters GE are written in a stylized form in which the letters
in the trademark GE (monogram) of the plaintiff nor are
they enclosed in a circle. To him what matters are the
letters GE.
In K. R. Chinna Krishna Chettiar vs Sri Ambal &
Co., Madras & Anr AIR 1970 SC 146, the respondents were
proprietors of two trademarks, one consisting of a label
containing a device of goddess Sri Ambal in the centre with
the legend 'Sri Ambal parimala snuff' at the top of the label
and the name 'Sri Ambal & Co. Madras' at the bottom and
the other consisting of the expression „Sri Ambal‟. The
appellants were seeking registration of a label containing
three panels. The first and the third panels contained in
Tamil, Devanagri, Telugu and Kannada the equivalents of
the words "Sri Andal Madras Snuff". The centre panel
contained the picture of goddess Sri Andal and the legend
"Sri Andal". Sri Andal and Sri Ambal are separate divinities.
Sri Andal is a vaishnavite woman saint of, Srivilliputur
village and was deified because of her union with Lord
Ranganatha. Sri Ambal is the consort of Siva or
Maheshwara. The question before Supreme Court was
whether the proposed mark was deceptively similar to the
respondents‟ mark. The Registrar was of the view that the
appellants‟ mark was not deceptively similar to the
respondents‟ trademark. The High Court, however, held
otherwise and felt that there was great phonetic similarity
between the word AMBAL and ANDAL and therefore there
was danger of confusion between the two phonetically allied
names. Rejecting their plea Supreme Court inter alia held
as under:
"It is for the Court to decide the question
on a comparison of the competing marks
as a whole and their distinctive and
essential features. We have no doubt in
our mind that if the proposed mark is
used in a normal and fair manner the
mark would come to be known by its
distinguishing feature "Andal". There is a
striking similarity and affinity of sound
between the words "Andal" and "Ambal".
There is no visual resemblance between
the two marks, but ocular comparison is
not always the decisive test. The
resemblance between the two marks
must be considered with reference to the
ear as well as the eye. There is a close
affinity of sound between Ambal and
Andal.
The name Andal does not cease to be
deceptively similar because it is used in
conjunction with a pictorial device.
The customers who use the respondent's
goods will have a recollection that they
are known by the word Ambal. They may
also have a vague recollection of the
portrait of a benign Goddess used in
connection with the mark. They are not
likely to remember the fine distinctions
between a Vaishnavite Goddess and a
Shivaite deity."
In James Chadwick & Bros. Ltd. vs. The
National Sewing Thread Co. Ltd. AIR 1951 (Bom) 147, the
appellants were using the two trademarks which they had
also got registered. One of the trademarks was bearing the
legend „Eagley Sewing Machine Thread‟, whereas the other
trademark was merely a representation of an eagle, without
any writing. The respondents were using the picture of a
bird of prey and the mark also bore a legend „Peerless
Quality Vulture Brand Reel Thread‟. Initially, they were
using the name of the brand as eagle which at the time of
registration they changed to a vulture. The marks of the
appellants were known as eagle. Holding that the mark of
the respondent was likely to deceive or cause confusion, the
High Court inter alia observed as under:
"Now in deciding whether a particular
trade mark is likely to deceive or cause
confusion, it is not sufficient merely to
compare it with the trade mark which is
already registered & whose proprietor is
offering opposition to the registration of
the former trade mark. What is important
is to find out what is the distinguishing
or essential feature of the trade mark
already registered & what is the main
feature or the main idea underlying that
trademark, & if it is found that the trade
mark whose registration is sought
contains the same distinguishing or
essential feature or conveys the same
idea, then ordinarily the Registrar would
be right if he came to the conclusion that
the trade mark should not be registered.
The real question is as to how a
purchaser, who must be looked upon as
an average man of ordinary intelligence,
would re-act to a particular trade mark,
what association he would form by
looking at the trade mark & in what
respect he would connect the trade mark
with the goods which he would be
purchasing. It is impossible to accept
that a man looking at a trade mark would
take in every single feature of the trade
mark. The question would be, what would
he normally retain in his mind after
looking at the trade mark? What would
be the salient feature of the trade mark
which in future would lead him to
associate the particular goods with that
trademark?
What the learned Judge should have
done was not to keep these two trade
marks before him & to find out how they
differ & how little they resemble; what he
should have done was to decide for
himself what was the distinguishing or
essential feature of the appellants‟ trade
mark, & then, looking at the trade mark
of the respondents, to ask himself
whether there was any resemblance in
the trade mark of the respondents to that
distinguishing or essential feature. It is
true, as pointed out by the learned
Judge, that the bird appearing in the
respondents‟ trade mark is different in its
posture, in its poise, in the position of its
head, & in the spreading of its wings from
the bird that appears in the trade mark of
the appellants. But that is hardly the
question. The question is whether the
bird in the respondents‟ trade mark is
likely to be mistaken by an average man
of ordinary intelligence as an Eagle.
Therefore, if there is a possibility of a
mistake, if there is a likelihood of this
bird being mistaken or accepted as an
Eagle, that possibility itself is sufficient to
entitle the Registrar to say that this trade
mark is likely to deceive or cause
confusion.
11. The use of the trademark GE in relation to goods
or services, irrespective of whether the plaintiff deals in
those goods and services or not, is likely to be taken as a
connection between the plaintiff-company and the goods or
services which are sold under the trademark GE. Use of the
trademark GE by the defendant is likely to give an
impression to the customer that the product has been
manufactured or is being sold in association with the
plaintiff-company or its subsidiary/associated company and
an unwary customer is likely to purchase the product of the
defendant, only on account of the use of the mark GE on it,
in the belief that the product in some manner or the other
connected with the plaintiff-company. A customer, while
purchasing goods of the defendant, is likely to attach
considerable importance to use of the mark GE on the
product and since the aforesaid mark has come to be
identified exclusively with the plaintiff-company, he may
also believe that the product was likely to be of superior
quality which he expects in respect of the products being
sold and services being offered by the plaintiff-company. If
the customer later finds that the quality of the goods
purchased by him is not as he expected from a GE product,
this may considerably damage the goodwill and brand
equity which the mark GE enjoys throughout the world,
besides adversely affecting the interest of the purchaser who
may be paying a higher price in the belief that he was
purchasing a product of high quality but may end up
getting a product of inferior quality.
Since the trademark GE is a well-known
trademark, use of the aforesaid mark by the defendant on
the product sold/proposed to be sold by them constitutes
infringement within the meaning of Section 29(4) of
Trademarks Act since by using the trademark GE, they are
trying to take an unfair advantage by encashing upon brand
equity and goodwill which the mark GE enjoys in the
market. Since the defendant has not come forward to
contest the suit, the presumption is that the use of the
mark GE by them is not bona fide, but, is a deliberate
attempt intended to encash upon the goodwill and
reputation which the trademark of the plaintiff-company
enjoys in the market. Such use is bound to be detrimental
to the reputation and distinctive character of the trademark
GE because if this mark is allowed to be use on the
products which have no connection with the plaintiff-
company, that may diminish the ability of the trademark GE
to identify the source of the goods in respect of which this
trademark is used, besides lowering its reputation in case
the quality of the goods is not of expected standard.
13. In their application for registration of the
trademark GE in their favour, the defendants claimed user
from a past date, but, no evidence has been led by the
plaintiff to prove actual user of the aforesaid trademark by
the defendants. But, in my view, mere application for
registration of the trademark gave sufficient cause of action
to the plaintiff-company to file the suit. In Jawahar
Engineers Private Limited, (1983) PTC 207, a Division
Bench of this Court was of the view that when injunction is
sought, it is not necessary that the threat could have
become the reality before the injunction and it can even be
sought for a threat, which is yet to materialize. It was
further held that since the plaintiffs had learnt that the
defendants had applied for registration of trademark in
Delhi, they could claim for injunction to prevent any sale of
the infringing products.
In Mars Incorporated vs. Kumar Krishna
Mukerjee & Ors. 2003 (26) PTC 60 (Del), the defendant
sought to incorporate a company named MARS FOODS PVT
LTD, though mark was the registered trademark of the
plaintiff company. The question which came up for
consideration before this Court was as to whether a person
who has not suffered any damage in respect of trade either
due to competition or due to deceptive or confusing
similarities of the trademark adopted by the defendant has
any right to challenge the act of the defendant in seeking to
incorporate a company under a name which included the
name of the registered trademark of the plaintiff company.
The defendant in that case had been incorporated as a
company but had not commenced operations by
manufacture of sale of goods. Upholding the right of the
plaintiff to maintain cause of action on account of
apprehension of infringement of its trademark, this Court
inter alia observed as under:-
To expect the aggrieved party to wait and
watch for the opening of business or
manufacturing or sale of goods under the
apprehended infringement of trade mark is
too much. A stitch in time always saves
nine and that is what is the essence of Quia
Timet Action...
...Let us assume that infringer has no past
history of either squatting or hoarding the
domain name, trade name and comes out
with advertisement for the first time for
registering its Corporate name by adopting
the similar name or deceptively or
confusingly similar name without
immediate intention to start its business.
Whether or not the plaintiff whose name is
sought to be infringed has a remedy to
forestall the defendant from adopting its
name or from opening up of the business
under the plaintiff‟s trade name. the
answer in any eventuality is in affirmative.
The plaintiff has the same degree of right to
protect its trade name from infringement as
it has against infringement of registered
name or in an action of passing off in
respect of manufacturing or selling or
offering to sell the goods by the defendants
under the plaintiff‟s trade name. The
genesis is the underneath intention which
is not difficult to fathom. Why one should
choose or pick up the name or mark which
has already become famous and well
known and whose reputation and goodwill
is all pervading and is obviously hard
earned. The only intention or object is to
thrive upon the goodwill and reputation
and confuse the purchasers of his goods
into believing that the defendants‟ goods or
business in one way or other is connected
with the plaintiff. Obvious object is to cash
on exploit the goodwill, reputation, name
and trade mark of the plaintiff...
...It is immaterial whether or not there is a
real or tangible possibility of starting a
business. Such a threat will even loom
large over the head of the plaintiff and
therefore entitle him to resort to Quia Timet
Action as the intentions are bad, designs
are dubious. There is no other object of
such a defendant than to hoard the trade
mark and black mail the plaintiff in order
to use it in future. Thus, in both the cases,
the action and proposed activities are
manifestly mala fide and calculated to
deceive the public or would be purchasers
as to the connection of the defendants with
the plaintiff.
As the saying goes, the evil should be
nipped in the bud so is the nature of Quia
Timet Action where the injury or damage
has been caused.
In KRBL Limited vs. Ramesh Bansal & Anr. 2009
(41) PTC 114 (Del), the plaintiff was registered proprietor of
the trademark/label "India Gate", which it was using for
selling rice. The defendant applied for registration of the
same mark in respect of salt. The right of the plaintiff to
maintain a quia timet action was upheld by this Court.
I, therefore, hold that even if there has been no use
of the trademark GE by the defendants, the plaintiff, on
account of the defendants having applied for registration of
the aforesaid trademark, is very much entitled to seek
injunction against infringement of its trademark by them.
CONCLUSION
For the reasons given in the preceding paragraphs,
a decree for injunction with proportionate costs is passed
restraining the defendants from using the mark GE or any
other mark which is identical or similar to the registered
trademarks GENERAL ELECTRIC, GE (monogram) and GE
of the plaintiff.
In the facts and circumstances of the case
particular considering the fact that there is no evidence of
actual user of the mark GE by the defendants, I do not
deem it appropriate to grant any other relief to the plaintiff.
Decree sheet be drawn accordingly.
(V.K. JAIN)
JUDGE
DECEMBER 21, 2011
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