Madras High Court
Eicher Motors Ltd vs Nitin Service Point And Automobiles on 22 November, 2023
Author: Abdul Quddhose
Bench: Abdul Quddhose
C.S.(Comm.Div.)No.77 of 2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 22.11.2023
CORAM:
THE HON'BLE MR. JUSTICE ABDUL QUDDHOSE
C.S.(Comm.Div.) No.77 of 2023
Eicher Motors Ltd.,
3/9, Royal Enfield, Besant Avenue,
Adayar, Chennai,
Tamil Nadu – 600 020.
Rep. By its Power Agent
Mr.Tapaswi Kumar Gupta ... Plaintiff
Vs.
Nitin Service Point and Automobiles,
Shop No.5, Runwal Classic,
A Block, Kalewadi Main Road,
Jagtap Nagar, Tapkir Chowk,
Thergaon, Pimpri-Chichwad,
Maaharashtra. ... Defendant
Prayer: Civil Suit is filed under Order IV Rule 1 of O.S. Rules and
Order VII Rule 1 CPC read with Sections 27, 29, 134 & 135 of the
Trademarks Act, 1999, and first proviso to Section 7 of the Commercial
Courts Act, 2015, praying:-
a) to grant permanent injunction restraining the Defendant, its
partners, directors, officers, men, servants, agents, distributors, stockists,
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C.S.(Comm.Div.)No.77 of 2023
successors in business, retailers, legal representatives, assigns or any
other person claiming through or under them in any manner whatsoever
from infringing the registered trademark ROYAL ENFIELD by the use
of an identical mark ROYAL ENFIELD or any other mark identical or
deceptively similar in respect of any goods or services or in any other
manner whatsoever;
(b) to grant permanent injunction restraining the Defendant, its
partners, directors, officers, men, servants, agents, distributors, stockists,
successors in business, retailers, legal representatives, assigns or any
other person claiming through or under them, from in any manner using,
selling, offering for sale, advertising its services and products or
otherwise dealing with the trademark ROYAL ENFIELD, singularly or
in combination with any other word and/or any mark similar or
deceptively similar thereto and thereby passing off their products,
services and business as and for the products, services and business of
the Plaintiff or in any other manner whatsoever;
(c) to grant permanent injunction restraining the Defendant, its
partners, directors, officers, men, servants, agents, distributors, stockists,
successors in business, retailers, legal representatives, assigns or any
other person claiming through or under them, from in any manner
replicating the look and feel and the exterior, interior of the Plaintiff’s
authorized outlets, thereby passing off their services/business by use of
color scheme, get up, arrangement of features and layout deceptively
similar to the Plaintiff’s authorized outlets.
(d) the Defendant be ordered to pay to the Plaintiff, a sum of
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Rs.10,00,000/-, as damages for committing infringement of trademark
and passing off its products/services/business as being associated with
the Plaintiff;
(e) the Defendant be ordered to surrender to the Plaintiff for
destruction of the name boards, invoices/bills, prints, brochures, screen
prints and advertising material and any other material in the Defendant’s
possession, which bears the mark ROYAL ENFIELD;
(f) to pass an order of declaration, declaring the Plaintiff’s
registered trademark ROYAL ENFIELD as "well-known" trademark
within the meaning of Section 2(1) (zg) read with Section 11(6) of the
Trademarks Act, 1999 along with a direction to the Registrar of
Trademarks to notify the mark ROYAL ENFIELD on the register of
well-known marks;
(g) a preliminary decree be passed in favor of the Plaintiff
directing the Defendant to render account of profits made by use of the
Plaintiff’s trade mark ROYAL ENFIELD amounting to infringement of
the Plaintiff’s registered trademark and/or passing off and a final decree
be passed in favor of the Plaintiff for the number of profits thus found to
have been made by the Defendant after the latter have rendered accounts;
and (h) for costs of the suit;
For Plaintiff : Mr.Vijay Narayanan, Sr. Counsel
for Mr.Arun C.Mohan
Defendant is set exparte
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C.S.(Comm.Div.)No.77 of 2023
JUDGMENT
This suit has been filed seeking the following reliefs;
(a) to grant permanent injunction restraining the defendant from
infringing the registered trademark “ROYAL ENFIELD” by the use of an
identical mark “ROYAL ENFIELD” or any other mark identical or
deceptively similar thereto in respect of any goods or services or in any
other manner whatsoever;
(b) to grant permanent injunction restraining the defendant from in
any manner using, selling, offering for sale, advertising its services and
products or otherwise dealing with the trademark ROYAL ENFIELD,
singularly or in combination with any other word and/or any mark
similar or deceptively similar thereto and thereby passing off their
products, services and business as and for the products, services and
business of the Plaintiff or in any other manner whatsoever;
(c) to grant permanent injunction restraining the defendant from in
any manner replicating the look and feel, and the exterior and interior of
the Plaintiff’s authorized outlets, thereby passing off their
services/business by use of color scheme, get up, arrangement of features
and layout deceptively similar to the Plaintiff’s authorized outlets;
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C.S.(Comm.Div.)No.77 of 2023
(d) to order the defendant to pay a sum of Rs.10,00,000/- to the
plaintiff as damages for committing infringement of trademark and
passing off its products/services/business as being associated with the
Plaintiff;
(e) the Defendant be ordered to surrender to the Plaintiff for
destruction of the name boards, invoices/bills, prints, brochures, screen
prints and advertising material and any other material in the Defendant’s
possession, which bears the mark ROYAL ENFIELD;
(f) to declare the Plaintiff’s registered trademark “ROYAL
ENFIELD” as "well-known" trademark within the meaning of Section
2(1) (zg) read with Section 11(6) of the Trademarks Act, 1999 (in short
“the Act”) along with a direction to the Registrar of Trademarks to notify
the mark ROYAL ENFIELD on the register of well-known marks;
(g) to grant a preliminary decree in favor of the Plaintiff directing
the Defendant to render account of profits made by use of the Plaintiff’s
trade mark ROYAL ENFIELD amounting to infringement of the
Plaintiff’s registered trademark and/or passing off and a final decree be
passed in favor of the Plaintiff for the number of profits thus found to
have been made by the Defendant after the latter have rendered accounts;
and
(h) for costs of the suit;
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2. Since no one has entered appearance on behalf of the defendant
despite effecting substituted service, the defendant was set exparte by
this Court on 09.11.2023.
3. The plaintiff, with regard to their reputation as a leading
manufacturer of motorcycle (ROYAL ENFIELD), has made the
following averments in the plaint:-
1. During 1901, the first Royal Enfield motorcycle
was produced by The Enfield Cycle Company Limited at
Redditch, England. This was discussed in detail in The
Autocar newspaper of 12thSeptember 1901. The
motorcycle was designed by Bob Walker Smith and
Frenchman Jules Gobiet and was launched at the famous
Stanley Cycle Show in London in November1901. The
motorcycle was advertised in the newspapers including in
The Autocar newspaper dated 21stDecember 1901. In
1913, at the first India Tourist Trophy race, Royal Enfield
had won the first prize.
2. After first Indo Pakistan war and considering the
continued hostilities along the Cease-Fire Line (now
known as Line of Control (‘LOC’)), the Government of
India (‘GOI’) during1951 looked out for the ‘seize- proof’
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C.S.(Comm.Div.)No.77 of 2023
motorcycles for Indian army to carry out patrolling at the
inaccessible tracts along the Cease-Fire Line. The
Plaintiff’s Royal Enfield Bullet 350 was chosen as the
most suitable bike for the job. Immediately, during 1952,
500 of such bikes were ordered by the GOI. The Royal
Enfield Bullets gave a sterling service on the tough terrain
of Kashmir and in scorching desert of Rajasthan.
Thereafter, subsequent orders were issued by GOI, with
requirement to manufacture such bikes in India. An
industrial license was granted with provision for the
company to manufacture upto 5000 units per annum
provided it followed a phased programme of making an
ever-increasing number of components in India. This was
the beginning of a relationship of paramount importance
to Royal Enfield-with Indian Army and other armed
forces.
3. In 1955, the Redditch company partnered with
Madras Motors in India to form 'Enfield India' to
assemble, under licence, the 350 cc RoyalEnfield Bullet
motorcycle in Madras and The Enfield India Limited(‘The
Enfield India’) was incorporated. Initially, it started with
the assembling of Royal Enfield Bullets shipped from
Royal Enfield Redditch, at its plant in Madras, India. By
1962, all components were made in India. From 1977,
Enfield India begins exporting the 350cc Bullet to the UK
and Europe.
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C.S.(Comm.Div.)No.77 of 2023
4. The Plaintiff states that since the year 1955, the
Plaintiff has been continuously, extensively and widely
manufacturing and marketing their motorcycles in India
under the distinctive trademark ROYAL ENFIELD. All
Plaintiff’s products bear the house mark ROYAL
ENFIELD and are sold across India and the globe. The
Plaintiff’s ROYAL ENFIELD motorcycles are sold under
several well-known brands like Royal Enfield, Bullet,
Enfield, Royal Enfield Continental GT, Royal Enfield
Thunderbird, Classic, Royal Enfield Himalayan, Royal
Enfield Interceptor,Royal Enfield Hunter, Royal Enfield
Meteor etc. The Plaintiff’s ROYAL ENFIELD
motorcycles and accessories are sold extensively all over
India and are also exported to over 70 countries viz. USA,
Europe, Brazil, Thailand, Nepal, Australia, Colombia, etc.
The Plaintiff’s motorcycles sold under the mark ROYAL
ENFIELD by reason of their excellent quality and volume
of sales have garnered enviable reputation and goodwill
amongst the members of the trade and public and the mark
ROYAL ENFIELD is always associated with that of the
Plaintiff only and to this day its Royal Enfield
motorcycles stand as a symbol of power, toughness,
elegance and to put it in a few words it still represents the
legacy of “Royal Enfield - Made Like A Gun!”.
5. The Plaintiff’s manufacturing operations go
through a series of modernization and improvement
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C.S.(Comm.Div.)No.77 of 2023
efforts, with a number of automated processes. Its
products are known for their reliability, quality and
toughness. The Plaintiff has a state-of-the-art
infrastructure to manufacture its vehicles and has an active
in-house research and development wing (one in India and
another one in United Kingdom) constantly at work to
meet the changing customer/market preferences. At
present, the Plaintiff operates via various subsidiaries
across multiple countries namely in the United Kingdom,
Thailand, North America, Brazil and Canada. It operates
through its dealers and distributors and by means of more
than 1088 large format stores and 1024 studio format
stores in major cities and towns across India and exports
to multiple countries worldwide. Through its distribution
network, the Plaintiff has 187 exclusive stores in 22
countries and sells through about 724 multi-brand outlets
and has over 1000 dealers/retainers around the world.
6. The Plaintiff has more than 1088 authorized
dealers in India, all maintaining a similar Brand Retail
Identity (BRI) and are operating outlets that are uniquely
designed with distinguishing features which include
distinctive interiors, exteriors, colour scheme and get-up
which has become inalienably associated with the goods
and business of the Plaintiff apart from using the
trademarks vesting with the Plaintiff. This is an exercise
done at considerable cost and effort, and with a uniform
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C.S.(Comm.Div.)No.77 of 2023
standard across the country and abroad.
4. The plaintiff came to know in the month of January, 2023,
through its authorized dealer that the defendant is using the identical
name “ROYAL ENFIELD” for its service center. The service center
established by the defendant is situated just 4.7 km. away from the
authorized showroom of the plaintiff. Therefore, since the showroom
established by the defendant is creating deception and confusion in the
minds of the general public, the plaintiff was constrained to file this suit
seeking for the reliefs as prayed for in the plaint.
5. Before the learned Additional Master-III, the power agent of the
plaintiff by name Mr.Tapaswi Kumar Gupta, was examined as PW1 on
the side of the plaintiff. Through PW1, the following documents were
marked as exhibits on the side of the plaintiff:-
Ex.No. Description and nature of documents
Ex.P1 Power of Attorney
Ex.P2 Copy of registration certificate of trademark ROYAL
ENFIELD (WORD MARK)under no. 657319 along with
copy of Trademarks Journal. (photocopy)
Ex.P3 Copy of registration certificate of trademark ROYAL
ENFIELD THUNDER BIRD (WORD MARK) under no.
1035163 along with copy of Trademarks Journal.
(photocopy)
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Ex.No. Description and nature of documents
Ex.P4 Copy of registration certificate of trademark ROYAL
ENFIELD CAFE RACER (WORD MARK) under no.
1095489 along with copy of Trademarks Journal.
(photocopy)
Ex.P5 Copy of registration certificate of trademark ROYAL
ENFIELD CLUBMAN (WORD MARK) under no.
1095490 along with copy of Trademarks Journal.
(photocopy)
Ex.P6 Copy of registration certificate of trademark ROYAL
ENFIELD METEOR (WORD MARK) under no. 1095491
along with copy of Trademarks Journal. (photocopy)
Ex.P7 Copy of registration certificate of trademark ROYAL
ENFIELD TRAIL (WORD MARK) under no. 1095492
along with copy of Trademarks Journal. (photocopy)
Ex.P8 Copy of registration certificate of trademark Royal
Enfield Label under no. 1107889 along with copy of
Trademarks Journal. (photocopy)
Ex.P9 Copy of registration certificate of trademark ROYAL
ENFIELD CLASSIC (WORD MARK) under no. 1788966
along with copy of Trademarks Journal. (photocopy)
Ex.P10 Copy of registration certificate of trademark ROYAL
ENFIELD TRIP (WORD MARK) under no. 1884955
along with copy of Trademarks Journal. (photocopy)
Ex.P11 Copy of registration certificate of trademark ROYAL
ENFIELD THUNDERBIRD 'LOGOUT' (WORD MARK)
under no. 1884957 along with copy of Trademarks
Journal. (photocopy)
Ex.P12 Copy of registration certificate of trademark ROYAL
ENFIELD 'LOGOUT' (WORD MARK) under no. 1884958
along with copy of Trademarks Journal. (photocopy)
Ex.P13 Copy of registration certificate of trademark ROYAL
ENFIELD CRUZR (WORD MARK) under no. 1986869
along with copy of Trademarks Journal. (photocopy)
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Ex.No. Description and nature of documents
Ex.P14 Copy of registration certificate of trademark ROYAL
ENFIELD TOURER (WORD MARK) under no. 1986870
along with copy of Trademarks Journal. (photocopy)
Ex.P15 Copy of registration certificate of trademark ROYAL
ENFIELD HIMALAYAN TOURER (WORD MARK) under
no. 1986871 along with copy of Trademarks Journal.
(photocopy)
Ex.P16 Copy of registration certificate of trademark ROYAL
ENFIELD CONTINENTAL GT WORD PER SE under no.
2347096 along with copy of Trademarks Journal.
(photocopy)
Ex.P17 Copy of registration certificate of trademark ROYAL
ENFIELD Logo under no. 2893335 along with copy of
Trademarks Journal. (photocopy)
Ex.P18 Copy of registration certificate of trademark Royal
Enfield Himalayan Sleet under no. 3734184 along with
copy of Trademarks Journal. (photocopy)
Ex.P19 Copy of registration certificate of trademark ROYAL
ENFIELD HUNTER (WORD) under no. 4353491 along
with copy of Trademarks Journal. (photocopy)
Ex.P20 Copy of registration certificate of trademark ROYAL
ENFIELD ROADSTER (WORD) under no. 4426653
along with copy of Trademarks Journal. (photocopy)
Ex.P21 Copy of registration certificate of trademark ROYAL
ENFIELD MADE LIKE A GUN under no. 5129738 along
with copy of Trademarks Journal. (photocopy)
Ex.P22 Copy of registration certificate of trademark R WITH
WING DEVICE under no. 5129739 along with copy of
Trademarks Journal. (photocopy)
Ex.P23 Copy of registration certificate of trademark ROYAL
ENFIELD WITH R AND WING DEVICE under no.
5129740 along with copy of Trademarks Journal.
(photocopy)
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Ex.No. Description and nature of documents
Ex.P24 Copy of registration certificate of trademark ROYAL
ENFIELD WITH R AND WING DEVICE under no.
5129741 along with copy of Trademarks Journal.
(photocopy)
Ex.P25 Copy of registration certificate of trademark ROYAL
ENFIELD MADE LIKE A GUN under no. 5129742 along
with copy of Trademarks Journal. (photocopy)
Ex.P26 Copy of registration certificate of trademark ROYAL
ENFIELD CONSTELLATION under no. 5323674 along
with copy of Trademarks Journal. (photocopy)
Ex.P27 List of International registrations obtained by the
Plaintiff for the mark ROYAL ENFIELD (Printout)
Ex.P28 Invoices for sale of motorbikes by the Plaintiff
(Photocopy)
Ex.P29 Certificate of sales and Sales promotional expenses for
the mark ROYAL ENFIELD (Photocopy)
Ex.P30 Advertisements and promotional materials issued by
the Plaintiff for the mark ROYAL ENFIELD (Photocopy)
Ex.P31 Awards and Recognitions granted to the Plaintiff for
the mark ROYAL ENFIELD (Photocopy)
Ex.P32 Plaintiff’s ROYAL ENFIELD logo and photographs of
the service centre (Photocopy)
Ex.P33 Defendant’s service outlet photographs
PW1 has also reiterated the contents of the plaint in his proof affidavit.
6. The issues that arise for consideration in this suit are as
follows:-
(a) Whether the plaintiff has proprietary
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C.S.(Comm.Div.)No.77 of 2023
right to the trademark 'ROYAL ENFIELD'?
(b) Whether the plaintiff's trademark falls
within the definition of Well-Known mark within
the meaning of Section 2(1)(zg) of the Trade
Marks Act?
(c) Whether the plaintiff is entitled for
damages and surrender of infringed materials by
the defendant and rendition of accounts by the
defendant as sought for in prayer (d), (e) and (g)
of the plaint?
(d) Whether the use of the word “ROYAL
ENFIELD” by the defendant would amount to
infringing and passing off of the trademark of the
plaintiff? and
(e) To what other reliefs the plaintiff is
entitled to?
Issue (a):-
Whether the plaintiff has proprietary right over the trademark
“ROYAL ENFIELD?
7. The list of registrations for the mark “ROYAL ENFILED” and
its variations obtained by the plaintiff are as follows:-
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Sl. Date of Applicati Trademark Clas
No. Application on No. s
1. 03-01-1995 657319 ROYAL ENFIELD (WORD MARK) 12
2. 08-08-2001 1035163 ROYAL ENFIELD THUNDER BIRD 12
(WORD MARK)
3. 15-04-2002 1095489 ROYAL ENFIELD CAFE RACER 12
(WORD MARK)
4. 15-04-2002 1095490 ROYAL ENFIELD CLUBMAN 12
(WORD MARK)
(WORD MARK)
6. 15-04-2002 1095492 ROYAL ENFIELD TRAIL (WORD 12
MARK)
8. 24-02-2009 1788966 ROYAL ENFIELD CLASSIC 12
(WORD MARK)
9. 16-11-2009 1884957 ROYAL ENFIELD THUNDERBIRD 12
'LOGOUT' (WORD MARK) and
10. 16-11-2009 1884958 ROYAL ENFIELD 'LOGOUT' 12
(WORD MARK) and
11. 29-06-2010 1986870 ROYAL ENFIELD TOURER 12
(WORD MARK)
12. 29-06-2010 1986871 ROYAL ENFIELD HIMALAYAN 12 &
13. 16-11-2009 1884955 ROYAL ENFIELD TRIP (WORD 12 &
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Sl. Date of Applicati Trademark Clas
No. Application on No. s
14. 29-06-2010 1986869 ROYAL ENFIELD CRUZR (WORD 12
MARK)
15. 06-12-2012 2347096 ROYAL ENFIELD CONTINENTAL 12
GT WORD PER SE
16. 02-05-2015 2893335 ROYAL ENFIELD Logo 12,9,
18,2
5,35,
18. 22-01-2018 3734184 Royal Enfield Himalayan Sleet 12,2
5,35,
19. 20-11-2019 4353491 ROYAL ENFIELD HUNTER 12
(WORD)
20. 31-01-2020 4426653 ROYAL ENFIELD ROADSTER 12
(WORD)
21. 13-09-2021 5129738 ROYAL ENFIELD MADE LIKE A 9,12,
GUN 18,2
5,35,
37,
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Sl. Date of Applicati Trademark Clas
No. Application on No. s
22. 13-09-2021 5129739 R WITH WING DEVICE 9,12,
18,2
5,35,
37,4
23. 13-09-2021 5129740 9,12,
18,2
5,35,
37,4
24. 13-09-2021 5129741 ROYAL ENFIELD WITH R AND 9,12,
WING DEVICE 18,2
5,35,
37,4
25. 13-09-2021 5129742 ROYAL ENFIELD MADE LIKE A 9,12,
GUN 18,2
5,35,
37,4
26. 10-02-2022 5323674 ROYAL ENFIELD 9,12,
CONSTELLATION 18,2
5,35,
37,4
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8. The aforesaid registration certificates for the mark “ROYAL
ENFIELD” and its variants have been marked as Exs.P2 to P26. Apart
from adopting a unique trademark “ROYAL ENFIELD”, the plaintiff has
a standard pattern for interiors and exteriors for each and every
authorized outlet so as to have the same look and feel/identity for all its
outlets to enable its customers to easily identify the plaintiff's authorized
outlets. The authorized outlets are distinctive and are exclusively
identified by the trade and public with the plaintiff's establishments for
motorcycles, parts, fittings, servicing and accessories. While appointing
the dealers, the plaintiff ensures that all the dealers maintain the same
standards, interiors and exteriors in accordance with plaintiff's BRI
(Brand Retail Identity). Therefore, it is clear from the documentary
evidence placed on record before this Court that the plaintiff has
proprietary right over the trademark “ROYAL ENFIELD” and its
variants. Infact, the registration under various classes shows that the
plaintiff has got various proprietary rights and rights as conferred for
registration as applicable for a registered proprietor. Therefore, issue (a)
is decided in favour of the plaintiff by declaring that the plaintiff has
proprietary right to the trademarks “ROYAL ENFIELD” and its variants.
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Issue (b):-
(b) Whether the plaintiff's trademark falls within the definition of
Well-Known mark within the meaning of Section 2(1)(zg) of the Trade
Marks Act?
9. This Court earlier had a doubt as to whether concurrent powers
are vested with both the trademark registry as well as this Court for
granting recognition for a particular trademark as a well-known mark.
In the year 2017, the Trade Marks Rules were amended empowering the
trademark registry to grant recognition of a trademark as a well-known
mark within the meaning of Section 2(1)(zg) of the Act, but, did not
exclude the power of the Court also to grant such a recognition. Prior to
the amendment of the Trade Marks Rules in the year 2017, the power to
grant recognition of a trademark as a well-known mark was vested only
with the Court. Only due to the said reason, a doubt had arisen in the
mind of this Court as to whether, with the amendment of the Trade
Marks Rules, 2017, the power of this Court to grant recognition of a
trademark as a well-known mark has been ousted. To get over the doubt,
this Court had to analyze the provisions of Sections 11(6) and 2(1)(zg) of
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the Act and the amended Trade Marks Rules, 2017, pertaining to grant of
recognition by the trademark registry for a trademark to be recognized as
a well-known mark.
10. After analyzing the said provisions and the authorities
pertaining to grant of recognition of a trademark as a well-known mark,
this Court is now convinced that concurrent powers are vested with both
this Court as well as the Trade Marks Registry for granting recognition to
a trademark as a well-known mark.
11. Section 2(1)(zg) of the Act defines a 'well – known trademark'
in relation to any goods or services, as "a mark which has become so to
the substantial segment of the public which uses such goods or receives
such services that the use of such mark in relation to other goods or
services would be likely to be taken as indicating a connection in the
course of trade or rendering of services between those goods or services
and a person using the mark in relation to the first-mentioned goods or
services.” The above definition clearly demonstrates the extraordinary
protection provided to a well-known mark.
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12. The relevant provisions under the Trade Marks Act, 1999, with
regard to “well-known” marks, are as follows:-
(a) Section 11(2) recognizes one of the relative grounds of refusal
of a trade mark stating that a trade mark shall not be registered if or to
the extent the earlier trade mark being a well-known trademark in India.
(b) Section 11(6) lays down the criteria for determination of a
well-known mark, which is as follows:-
(i) The knowledge or recognition of that trademark in the relevant
section of the public including knowledge in India obtained as a result of
promotion of the trademark;
(ii) the duration, extent and geographical area of any use of that
trademark;
(iii) the duration, extent and geographical area of any promotion of
the trade mark, including advertising or publicity and presentation, at
fairs or exhibition of the goods or services to which the trade mark
applies;
(iv) the duration and geographical area of any registration of or
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C.S.(Comm.Div.)No.77 of 2023
any application for registration of that trade mark under this Act to the
extent that they reflect the use or recognition of the trade mark;
(v) the record of successful enforcement of the rights in that trade
mark, in particular the extent to which the trade mark has been
recognised as a well-known trade mark by any court or Registrar under
that record.
(c) Section 11(9) lays down the conditions/factors which are taken
into consideration for grant of a well-known trademark. They are as
follows:-
(i) That the Trademark is registered in India.
(ii) That public at large has knowledge of the trademark .
(iii) That the Trademark has been used in India.
(iv) Application for registration of trademark is underway in India
(v) That the trademark is registered in any other jurisdiction
(d) Section 11(10) sets out an obligation on the Registrar of Trade
Marks to protect a well-known trademark against marks which are
identical and/or similar.
13. As seen from the aforesaid sections and in particular, Section
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11(6) of the Trademarks Act, 1999, it is clear that both the Registrar of
Trademarks as well as the Court having competent jurisdiction can
recognize a trademark as a well-known mark. The Trademarks Act does
not prohibit this Court, which is a competent Court, from recognizing the
plaintiff's trademark as well-known marks.
14. Rule 124 of the Trade Marks Rules of 2017, which empowers
the trademark registry to grant recognition of a trademark as a well-
known mark, also makes it clear that once the Court passes an order
recognizing a trademark as a well-known mark, trademark registry will
have to give due consideration to the said recognition, while adjudicating
as to whether the applicant is entitled to be granted the recognition of its
trademark as a well-known mark. As seen from Section 11(6) of the Act,
for adjudicating whether a trademark is a well-known mark or not, the
following 10 factors will have to be considered:-
(i) The extent of knowledge of the mark vis-à-vis the relevant
public segment;
(ii) Duration of use;
(iii) Extent of product and services to which the mark is being
used;
(iv) Method, frequency and duration of advertising and promotion
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of the mark;
(v) Geographical extent of trading area where the mark is being
used
(vi) Registration of the mark;
(vii) Volume of goods and services being sold under the mark;
(viii) Nature and extent of use of same or similar marks by other
parties;
(ix) Extent to which rights claimed in the mark have been
successfully enforced; and
(x) Actual number of consumers consuming goods or availing
services under the brand.
15. In the case of the plaintiff, the trademark “ROYAL ENFIELD”
has satisfied all the tests required for granting recognition as a well-
known mark. The exhibits marked on the side of the plaintiff make it
clear that in respect of the motorcycle industry, their trademark “ROYAL
ENFIELD” is well-known, not only in India, but also in abroad. They
have commenced their business in the year 1955 and over a period, they
have established 187 exclusive stores in 22 countries and have over 1000
dealers/retainers around the world. Their annual reports also prove that
their turnover runs into several hundreds of crores of rupees and they
have carved a niche for themselves in the motorcycle industry. Judicial
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C.S.(Comm.Div.)No.77 of 2023
notice can also be taken with regard to the said fact. Ten-factors tests
highlighted supra are also satisfied by the plaintiff for recognizing their
trademark as a well-known mark as per the provisions of Section 11(6)
of the Act.
16. The name “ROYAL ENFIELD” is synonymous to the plaintiff
and the plaintiff is therefore entitled to the highest level of protection as
the public at large associate the name “ROYAL ENFIELD” only with the
plaintiff. Therefore, the plaintiff's trademark falls within the definition
of well-known mark within the meaning of Section 2(1)(zg) of the Act
and deserves protection, that is conferred to well-known marks under the
Trade Marks Act.
17. The judgments relied upon by the learned counsel for the
plaintiff during the course of his submissions also throw light on the
circumstances when a trademark can be recognized as a well-known
mark under Section 11(6) of the Act. In all those judgments, the
respective High Courts have recognized the trademark involved in those
cases as a well-known mark under Section 11(6) of the Act. The plaint
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C.S.(Comm.Div.)No.77 of 2023
averments, oral and documentary evidence placed on record make it clear
that the plaintiff's trademark “ROYAL ENFIELD” and its variants are
well-known marks in the motorcycle industry. Hence, the plaintiff is
entitled to get recognition by this Court for its trademark “ROYAL
ENFIELD” as a well-known mark in respect of the motorcycle industry.
Accordingly, issue (b) is answered in favour of the plaintiff by declaring
that the trademark “ROYAL ENFIELD” is a well-known mark in the
motorcycle industry as per the provisions of Section 11(6) read with
Section 2(1)(zg) of the Act.
Issue (c):-
(c) Whether the plaintiff is entitled for damages, surrender of
infringed materials and rendition of accounts by the defendant as sought
for in prayer (d), (e) and (g) of the plaint?
18. The learned counsel on record for the plaintiff has made an
endorsement in the plaint on instructions that the plaintiff is not pressing
the relief as sought for in the prayer (d), (e) and (g) of the plaint. Hence,
there is no necessity for this Court to adjudicate with regard to prayer (d),
(e) and (g) of the plaint. Hence, the suit claim insofar as prayer (d), (e)
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C.S.(Comm.Div.)No.77 of 2023
and (g) of the plaint has to be dismissed as not pressed.
Issue (d):-
Whether the use of the word “ROYAL ENFIELD” by the
defendant would amount to infringing and passing off of the plaintiff's
trademark?
19. As could be seen from the materials available on record, on
receiving the information about the defendant's unauthorized use of the
mark “ROYAL ENFIELD”, the plaintiff had sent its Area Sales-Manager
for inspection, who, upon such inspection, demanded the defendant to
refrain from using the plaintiff's registered trademark “ROYAL
ENFIELD”, and the similar getup, layout, look and feel of the interiors of
its authorized outlets to portray themselves as the authorized dealer of
the plaintiff. However, without removing the signage and changing the
getup and layout of its service center, even now, the defendant has been
using the same trade name “ROYAL ENFIELD” for its outlet. As
observed earlier, the plaintiff is having registration for its trademark
“ROYAL ENFIELD” and its variants in different Classes under the
Trade Marks Act. They have been using their trademark “ROYAL
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C.S.(Comm.Div.)No.77 of 2023
ENFIELD” ever since 1994.
20. A comparison of the plaintiff's outlet(Ex.P32) and the
defendant's outlet (Ex.P33) submitted at a above distance is shown
below;
Plaintiff's authorized outlet:-
Defendant's outlet:-
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C.S.(Comm.Div.)No.77 of 2023
would amply depict that the defendant has not only blatantly copied the
essential features of the plaintiff's authorized outlets, but has also
unauthorizedly used the plaintiff's registered trademark “ROYAL
ENFIELD” to market its service center. Apart from this, exterior of the
plaintiff's outlets has ROYAL ENFIELD written in red lettering on a
dark grey background with golden yellow lines on either side; and the
frontage of the outlet consists of a deceptively similar glass paneling as
that of the plaintiff's outlet. Therefore, the defendant selling its products
by using such a deceptively similar/identical trade mark and thereby
creating confusion and deception in the minds of the general public,
would amount to infringement of the plaintiff's registered trademark
“ROYAL ENFIELD”.
21. Further, based on the oral and documentary evidence available
on record, it is clear that only with a dishonest intention of making undue
profits by using the trademark “ROYAL ENFIELD”, which belongs
exclusively to the plaintiff, the defendant has been using the mark
“ROYAL ENFIELD”. Both the plaintiff and the defendant are in the
same area of business. If the defendant is allowed to use the mark
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C.S.(Comm.Div.)No.77 of 2023
“ROYAL ENFIELD”, it will certainly cause confusion in the minds of
the public, who are familiar only with the usage of name “ROYAL
ENFIELD” for motorcycle industry by the plaintiff alone and no one
else. Being a deceptively similar mark to that of the plaintiff, the
defendant should be permanently injuncted from using the name
“ROYAL ENFIELD” for its outlet business. The defendant has not only
infringed the plaintiff's trademark, but also committed an act of passing
off on account of the fact that the public will be deceived as they will be
under the impression that “ROYAL ENFIELD” is also an outlet run by
the plaintiff, which, in reality, is not true. Therefore, permanent
injunction reliefs sought for by the plaintiff in the suit as found in prayer
(a), (b) and (c) of the plaint have to be granted by this Court.
Accordingly, issue (d) is answered in favour of the plaintiff.
22. In view of infringement and passing off committed by the
defendant, the defendant will have to pay for the costs of this suit.
23. For the foregoing reasons, this suit is partly decreed by
granting the following reliefs:-
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C.S.(Comm.Div.)No.77 of 2023
(a) It is declared that the mark “ROYAL ENFIELD” is a well-
known trademark insofar motorcycle industry is concerned as per the
provisions of Section 2(1)(zg) read with Section 11 of the Trade Marks
Act, 1999. Consequently, Registrar of Trademarks is directed to notify
the mark “ROYAL ENFIELD” on the register of well-known marks.
(b) Permanent injunction is granted restraining the defendant from
infringing the registered trademark “ROYAL ENFIELD” by use of an
identical mark “ROYAL ENFIELD” or any other mark identical and
deceptively similar thereto in respect of any goods or services or in any
other manner whatsoever.
(c) Permanent injunction is granted restraining the defendant from
in any manner using, selling, offering for sale, advertising its services
and products or otherwise dealing with the trademark ROYAL
ENFIELD, singularly or in combination with any other word and/or
deceptively similar thereto and thereby passing off their products,
services and business as and for the products, services and business of
the Plaintiff or in any other manner whatsoever;
(d) Permanent injunction is granted restraining the defendant from
in any manner replicating the look and feel, and the exterior and interior
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C.S.(Comm.Div.)No.77 of 2023
of the Plaintiff’s authorized outlets, and thereby passing off their
services/business by use of color scheme, getup, arrangement of features
and layout deceptively similar to the Plaintiff’s authorized outlets.
(e) Insofar as prayer (d), (e) and (g) sought for in the plaint is
concerned, the same is dismissed as not pressed.
(f) The defendant is directed to pay the costs of this suit.
22.11.2023
Index: Yes/no
Speaking order/non-speaking
Neutral citation : Yes/no
rkm
Plaintiff's witness:
Mr.Tapaswi Kumar Gupta - PW1
Documents exhibited by the Plaintiff:
Ex.No. Description and nature of documents
Ex.P1 Power of Attorney
Ex.P2 Copy of registration certificate of trademark ROYAL
ENFIELD (WORD MARK)under no. 657319 along with
copy of Trademarks Journal. (photocopy)
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C.S.(Comm.Div.)No.77 of 2023
Ex.No. Description and nature of documents
Ex.P3 Copy of registration certificate of trademark ROYAL
ENFIELD THUNDER BIRD (WORD MARK) under no.
1035163 along with copy of Trademarks Journal.
(photocopy)
Ex.P4 Copy of registration certificate of trademark ROYAL
ENFIELD CAFE RACER (WORD MARK) under no.
1095489 along with copy of Trademarks Journal.
(photocopy)
Ex.P5 Copy of registrationcertificate of trademark ROYAL
ENFIELD CLUBMAN (WORD MARK) under no.
1095490 along with copy of Trademarks Journal.
(photocopy)
Ex.P6 Copy of registration certificate of trademark ROYAL
ENFIELD METEOR (WORD MARK) under no. 1095491
along with copy of Trademarks Journal. (photocopy)
Ex.P7 Copy of registration certificate of trademark ROYAL
ENFIELD TRAIL (WORD MARK) under no. 1095492
along with copy of Trademarks Journal. (photocopy)
Ex.P8 Copy of registration certificate of trademark Royal
Enfield Label under no. 1107889 along with copy of
Trademarks Journal. (photocopy)
Ex.P9 Copy of registration certificate of trademark ROYAL
ENFIELD CLASSIC (WORD MARK) under no. 1788966
along with copy of Trademarks Journal. (photocopy)
Ex.P10 Copy of registration certificate of trademark ROYAL
ENFIELD TRIP (WORD MARK) under no. 1884955
along with copy of Trademarks Journal. (photocopy)
Ex.P11 Copy of registration certificate of trademark ROYAL
ENFIELD THUNDERBIRD 'LOGOUT' (WORD MARK)
under no. 1884957 along with copy of Trademarks
Journal. (photocopy)
Ex.P12 Copy of registration certificate of trademark ROYAL
ENFIELD 'LOGOUT' (WORD MARK) under no. 1884958
along with copy of Trademarks Journal. (photocopy)
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C.S.(Comm.Div.)No.77 of 2023
Ex.No. Description and nature of documents
Ex.P13 Copy of registration certificate of trademark ROYAL
ENFIELD CRUZR (WORD MARK) under no. 1986869
along with copy of Trademarks Journal. (photocopy)
Ex.P14 Copy of registration certificate of trademark ROYAL
ENFIELD TOURER (WORD MARK) under no. 1986870
along with copy of Trademarks Journal. (photocopy)
Ex.P15 Copy of registration certificate of trademark ROYAL
ENFIELD HIMALAYAN TOURER (WORD MARK) under
no. 1986871 along with copy of Trademarks Journal.
(photocopy)
Ex.P16 Copy of registration certificate of trademark ROYAL
ENFIELD CONTINENTAL GT WORD PER SE under no.
2347096 along with copy of Trademarks Journal.
(photocopy)
Ex.P17 Copy of registration certificate of trademark ROYAL
ENFIELD Logo under no. 2893335 along with copy of
Trademarks Journal. (photocopy)
Ex.P18 Copy of registration certificate of trademark Royal
Enfield Himalayan Sleet under no. 3734184 along with
copy of Trademarks Journal. (photocopy)
Ex.P19 Copy of registration certificate of trademark ROYAL
ENFIELD HUNTER (WORD) under no. 4353491 along
with copy of Trademarks Journal. (photocopy)
Ex.P20 Copy of registration certificate of trademark ROYAL
ENFIELD ROADSTER (WORD) under no. 4426653
along with copy of Trademarks Journal. (photocopy)
Ex.P21 Copy of registration certificate of trademark ROYAL
ENFIELD MADE LIKE A GUN under no. 5129738 along
with copy of Trademarks Journal. (photocopy)
Ex.P22 Copy of registration certificate of trademark R WITH
WING DEVICE under no. 5129739 along with copy of
Trademarks Journal. (photocopy)
Ex.P23 Copy of registration certificate of trademark ROYAL
ENFIELD WITH R AND WING DEVICE under no.
5129740 along with copy of Trademarks Journal.
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C.S.(Comm.Div.)No.77 of 2023
Ex.No. Description and nature of documents
(photocopy)
Ex.P24 Copy of registration certificate of trademark ROYAL
ENFIELD WITH R AND WING DEVICE under no.
5129741 along with copy of Trademarks Journal.
(photocopy)
Ex.P25 Copy of registration certificate of trademark ROYAL
ENFIELD MADE LIKE A GUN under no. 5129742 along
with copy of Trademarks Journal. (photocopy)
Ex.P26 Copy of registration certificate of trademark ROYAL
ENFIELD CONSTELLATION under no. 5323674 along
with copy of Trademarks Journal. (photocopy)
Ex.P27 List of International registrations obtained by the
Plaintiff for the mark ROYAL ENFIELD (Printout)
Ex.P28 Invoices for sale of motorbikes by the Plaintiff
(Photocopy)
Ex.P29 Certificate of sales and Sales promotional expenses for
the mark ROYAL ENFIELD (Photocopy)
Ex.P30 Advertisements and promotional materials issued by
the Plaintiff for the mark ROYAL ENFIELD (Photocopy)
Ex.P31 Awards and Recognitions granted to the Plaintiff for
the mark ROYAL ENFIELD (Photocopy)
Ex.P32 Plaintiff’s ROYAL ENFIELD logo and photographs of
the service centre (Photocopy)
Ex.P33 Defendant’s service outlet photographs
AQJ
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C.S.(Comm.Div.)No.77 of 2023
ABDUL QUDDHOSE, J.
rkm
C.S.(Comm.Div.) No.77 of 2023
22.11.2023
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