Madras High Court
Dated: 03.04.2025 vs Bhaskar Nethi on 3 April, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
2025:MHC:897
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 03.04.2025
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
OP(TM)/14/2023
Meritor Technology, LLC
2135 West Maple Road
Troy, Michigan 48084
Represented herein by its Power of Attorney Holder
Mr.Ritam Rawal
Having office at 8th Floor, Tower A,
Millennium Plaza, Sector 27
Gurugram, Haryana 122 009. ... Petitioner
-vs-
1.Bhaskar Nethi
Proprietor of Auto India Trade Corporation
4-2-121, VST Colony
Nacharam, Hyderabad – 500 076
Also at:
4-1-82/5 F, Bhavani Nagar, 1,
Nacharam, Medchal, Malkajgiri
Rangareddy, Hyderabad – 500 076
And:
Plot No.2/A, B No.42
TSIIC, Auto Nagar,
Baghhayathnagar, R R Dist.
Telangana – 500 070.
1/18
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2.The Registrar of Trade Marks,
Intellectual Property Office Building
GST Road, Guindy,
Chennai – 600 032. ... Respondents
PRAYER: Original Petition (Trade Marks) is filed under Sections 47 and
57 of the Trade Marks Act, 1999, pleased to remove from the Register of
Trade Marks entry in respect of the registration No.4763841 in Class 4 in
the name of Bhaskar Nethi Proprietor of Auto India Trade Corporation of 4-
1-121, VST Colony, Nacharam, Hyderabad – 500 076.
For Petitioner : Mr.Abishek Jenasenan
For Respondents : Mr.O.Padmaprakash for R1
Mr.K.Subbu Ranga Bharathi, CGSC for R2
**********
ORDER
By this petition, the petitioner seeks rectification of the register of
trade marks insofar as the entry relating to the trade mark MERITOR, which
was registered under Trade Mark No.4763841 in Class 4 is concerned.
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2. The petitioner asserts that it is the wholly owned subsidiary of
Meritor Inc and a leading global supplier of drive train, mobility, braking,
after market and electric power train solutions for commercial vehicles and
industrial markets. The petitioner further states that it applied for and
obtained trade mark registrations for both word and device marks
containing the element MERITOR as a prominent feature. By pointing out
that such registrations were obtained with effect from 28.07.1997, it is
further stated that the petitioner's mark was applied to a range of auto
components since 2012. Upon noticing the identical mark of the first
respondent, it is stated that the present petition was filed.
3. Learned counsel for the petitioner invited my attention to the
registration certificate and pointed out that the petitioner's registration is
with effect from 28.07.1997. He also points out that the registration is in
class 12 in relation to vehicles and vehicle components, and that such
registration covers brakes, cam shafts, clutches, differentials and the like.
He further submits that registrations were obtained for the petitioner's trade
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mark in several countries across the globe. In support of this contention, he
relies upon the list of registrations at pages 153 to 156 of volume-1 of
documents filed by the petitioner. As regards sales turnover, by relying on
certificate dated 07.03.2023 from L.R.Prakash and Co, Chartered
Accountants, learned counsel submits that the turnover for the year 2022
was about Rs.1377 crores. He also points out that substantial amounts were
expended towards advertisement expenditure and that the data relating
thereto is also found in the said Chartered Accountants' certificate. With
regard to proof of use of the mark in relation to goods manufactured and
sold by the petitioner, learned counsel invited my attention to invoice dated
08.03.2012. He further submits that multiple invoices issued between 2012
and the date of filing of the rectification petition have been placed on
record.
4. By referring to the registration certificate relating to the impugned
mark, learned counsel submits that the impugned mark is identical to the
petitioner's mark, and not merely similar. Although such registration is in
class 4, learned counsel submits that the registration is in respect of
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industrial oils and greases, which are used extensively in the automobile
sector. Since the goods to which the first respondent's trade mark is applied
qualify as cognate goods, learned counsel submits that the entry relating to
the impugned mark is liable to be expunged so as to prevent dilution of the
petitioner's mark and to avert the likelihood of deception or confusion
among the public.
5. Learned counsel next pointed out that no evidence of use was
submitted along with the counter statement. Therefore, he submitted that the
petitioner had stated both in the petition and in the rejoinder that there is no
evidence of use of the first respondent's mark and that, consequently, the
mark is liable to be removed from the register not only under Section 57, but
also under Section 47 of the Trade Marks Act, 1999 (the TM Act). Only
thereafter, learned counsel states that the first respondent filed an
application for permission to rely on additional documents and enclosed
invoices in the additional volume. Even if the said invoices are taken into
account, learned counsel contends that the earliest invoice is dated
30.10.2022.
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6. By referring to and relying upon the judgment of the Delhi High
Court in Minda Spectrum Advisory Limited and Others v. Minda Oils India
Pvt. Ltd. And Others, 2022 SCC OnLine Del 3033, particularly paragraph 23
thereof, wherein the fact situation was substantially similar, learned counsel
concluded his submissions by reiterating that the impugned mark is liable to
be expunged from the register.
7. In response to these contentions, learned counsel for the first
respondent advanced about three oral arguments. He also filed written
arguments. The first contention of learned counsel was that the impugned
mark was advertised before registration. In spite of claiming to be one of
the leading players in the automotive industry, learned counsel submits that
the petitioner failed to oppose the registration. As a consequence, he
submits that the mark was registered with effect from 01.12.2020. He
further submits that the first respondent has been in business since the year
2017. Consequently, he states that the petitioner is not entitled to relief on
grounds of delay and laches.
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8. The second contention of learned counsel is that the first
respondent's registration is in class 4 and not in class 12, which is the class
in which the petitioner's mark is registered. By further pointing out that the
products to which the first respondent's mark is applied are industrial oil
and greases, learned counsel submits that there is no likelihood of deception
or confusion on the part of customers or consumers. The third contention is
that the petitioner's mark is not a well-known mark and, therefore, the
petitioner is not entitled to class- agnostic protection. In support of the
contention that the goods are not similar, learned counsel placed reliance on
the judgment of this Court in Hatsun Agro Products Ltd. v. M/s.Arokiya
Foods, 2023 (93) PTC 592 ('Hatsun Agro'), particularly paragraph 28
thereof, to contend that the origin of the goods of the petitioner and the first
respondent are completely different. He also relied upon the judgment of
the Supreme Court in Nandhini Deluxe v. Karnataka Cooperative Milk
Producers Federation Limited, (2018)9 SCC 183 ('Nandhini Deluxe'), to
contend that the Supreme Court declined to interfere with the use of the
mark NANDHINI by the appellant therein in relation to restaurants by
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holding that the services in respect of which the appellant therein used the
mark are completely different from the dairy business undertaken by the
respondent therein under the trade mark NANDINI.
9. In the context of the above contentions, the first question that falls
for consideration is with regard to whether the petitioner's use pre-dates use
by the first respondent. The petitioner has placed on record multiple
invoices. The earliest invoice on record is invoice dated 08.03.2012. The
invoice clearly bears the device mark of the petitioner containing the
element MERITOR prominently. Several invoices issued between the year
2012 and 2020 have been placed on record. All these invoices disclose the
use of the petitioner's trade mark in relation to a range of auto components
such as brake assemblies, axle assemblies, cap assemblies and the like. The
registration certificate pertaining to the petitioner's trade mark is also on
record. As evidenced by trade mark no.762991, the petitioner has obtained
registration for word mark MERITOR in class 12 for a range of auto
components. The certificate of the Chartered Accountants dated 07.03.2023
indicates substantial sales turnover from 2016 to 2022. As pointed out by
learned counsel for the petitioner, the sales turnover in the year 2022 was
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about Rs.1377 crores.
10. As regards the first respondent, both the registration certificate
and the extract from the trade marks journal are on record. The registration
certificate discloses that the registration is for the word mark MERITOR in
class 4. Such registration is in respect of industrial oil and greases and is
with effect from 01.12.2020. The advertisement carried in trade marks
journal no.1980 contains an assertion of use since 11.12.2017. In spite of
being permitted to place on record additional documents, the first
respondent has not provided any evidence of use since December 2017. On
the contrary, the earliest evidence of use is in the form of invoice dated
30.10.2022. These invoices are in relation to lubricants. The above
discussion leads to the categorical conclusion that the petitioner is the prior
user of the trade mark in India.
11. The next issue that warrants a brief discussion is whether the
marks are identical or similar. From a mere visual comparison, it is clear
that the word marks are identical.
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12. Although the petitioner asserted in the petition that its trade mark
is well-known, learned counsel for the petitioner did not press this issue.
This leads to the most critical aspect, namely, whether the goods are cognate
or similar. Learned counsel for the first respondent relied on the judgment
of the Supreme Court in Nandhini Deluxe. In that case, the respondent
before the Supreme Court had adopted and applied the mark NANDINI in
the year 1985 in relation to dairy products. The respondent adopted the
mark NANDHINI for its restaurants in the year 1989. In that factual
context, the Supreme Court concluded that the appellant's use of the mark
NANDHINI was not in relation to similar goods or services. On that basis,
relief was granted to the appellant therein.
13. In Hatsun Agro, I examined the law relating to the similarity of
goods. In paragraph 28 on which reliance was placed by learned counsel for
the first respondent, I examined the important criteria in such regard after
recording that it is not prudent to attempt an exhaustive catalogue. The
criteria specified therein are: the nature of the goods / services; the origin of
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the goods; the purposes for which the goods / services are used; whether the
goods / services are in competition and / or can be used as substitutes for
one another; whether the goods / services are complementary and, if so, in
what manner and to what extent; the trade connection; and the trade
channels. I also noted that other factors such as the strength of the prior
mark, the degree of identity or similarity of the marks, the segment or class
of consumers or potential consumers; retail environment, circumstances in
which the later mark was adopted, etc. would have a bearing on likelihood
of confusion, if the goods or services are similar. Significantly, I further
concluded that the classification is not determinative in this regard and that
goods or services in the same class under the Nice classification may be
held to be dissimilar, whereas goods or services in different classes may be
held to be similar.
14. The documents on record clearly indicate that the petitioner's
mark is applied in relation to a range of auto components. The first
respondent's mark appears to be applied to industrial oils and greases. This
would undoubtedly include oils, lubricants and greases used in the auto
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industry. In this connection, it is pertinent to notice that the first respondent
carries on business through a proprietary concern called 'Auto India Trade
Corporation'. Even the name of the first respondent's proprietary concern is
indicative of the nature of business and the sector serviced by the first
respondent. While it is true that the goods of the petitioner and those of the
first respondent do not have a common origin as contended by learned
counsel for the first respondent, the goods of both the petitioner and the first
respondent, as noticed above, are targeted largely, if not solely, at the auto
industry. In fact, the invoices filed by the first respondent include invoice
dated 27.05.2023 raised on an entity called Sri Venketeshwara Auto
Agencies. This piece of evidence reinforces the conclusion that the first
respondent supplies lubricants to the auto industry. Consequently, there is
likely to be substantial overlap in trade channels.
15. As stated earlier, the marks are identical and not merely similar.
The evidence on record also leads to the conclusion that the petitioner has
applied the mark in India at least since the year 2012, whereas evidence of
use of the mark by the first respondent is available only from 30.10.2022.
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The extent of use by the petitioner is substantial and significant, as
evidenced by the sales turnover. In these circumstances, I conclude that the
goods are cognate and the use of the impugned mark is likely to cause
deception or confusion among the relevant section of the public.
16. As a corollary to the above conclusions, I further conclude that
the entry relating to the impugned mark was made without sufficient cause,
thereby warranting rectification.
17. For reasons set out above, OP(TM)/14/2023 is allowed by
directing the Registrar of Trade Marks to remove the entry relating to the
trade mark MERITOR under Trade Mark No.4763641 in class 4 from the
register of trade marks. This action shall be carried out within four weeks
from the date of receipt of a copy of this order. There shall be no order as to
costs.
03.04.2025
(2/2)
rna
Index : Yes / No
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Internet : Yes / No
Neutral Citation: Yes / No
To
The Registrar of Trade Marks,
Intellectual Property Office Building,
G.S.T. Road, Guindy,
Chennai 600 032.
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SENTHILKUMAR RAMAMOORTHY,J
rna
OP(TM)/14/2023
03.04.2025
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(2/2)
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 15.04.2025
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
OP(TM)/14/2023
M/s. Meritor Technology, LLC
2135 West Maple Road Troy, Michigan 48084
Represented herein by its Power of Attorney Holder
Mr. Ritam Rawal Having Office at 8th Floor, Tower A, Millennium Plaza,
Sector 27 Gurugram, Haryana 122 009. ... Petitioner
-vs-
M/s. Bhaskar Nethi
Proprietor of Auto India Trade Corporation 4-2-121 VST Colony Nacharam
Hyderabad - 500 076. Also at 4-1-82/5 F Bhavani Nagar, 1 Nacharam,
Medchal, Malkajgiri Rangareddy Hyderabad - 500 076. And Plot No. 2/A,
B No - 42 TSIIC, Auto Nagar Baghhayathnagar, R R Dist.
Telangana - 500 070. and another ... Respondents
For Petitioner : Mr.Abishek Jenasenan
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For Respondents : Mr.O.Padmaprakash for R1
Mr.K.Subbu Ranga Bharathi, CGSC for R2
**********
ORDER
The matter is listed upon being mentioned. By order dated
03.04.2025, OP(TM)/14/2023 was allowed. Learned counsel for the
SENTHILKUMAR RAMAMOORTHY,J
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petitioner states that there is a typographical error in paragraph 17 of the
order. In specific, she points out that the Trade Mark number mentioned
therein is incorrect. Upon examining the record, the submission of learned
counsel is liable to be accepted. Therefore, the Registry is directed to re-
issue the order by replacing Trade Mark No.4763641 in line 3 of paragraph
17 with Trade Mark No.4763841.
15.04.2025
rna
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OP(TM)/14/2023
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