2001 (11) TMI 978 - SC - Indian Laws

Whether, on the facts and circumstances of the case, the High Court committed an error in granting the plaintiff s prayer for interim injunction? Whether the mark is likely to deceive or to cause confusion? Whether there is as a result of misrepresentation a real likelihood of confusion or deception of the public and consequent damage to the plaintiff? Held that - Appeal dismissed. As the plaintiff has established a prima facie case and irreparable prejudice in its favour which calls for passing an order of interim injunction restraining the defendant-company from utilising the name of plaintiff for the purpose of its trade and business. Therefore, High Court cannot be faulted for confirming the order of injunction passed by the learned Single Judge.

Issues Involved:
1. Use of the name "Mahendra & Mahendra" by the defendant.
2. Alleged infringement of the plaintiff's registered trademark "Mahindra".
3. Claim of passing-off by the defendant.
4. Balance of convenience and irreparable harm in granting an interim injunction.

Issue-wise Detailed Analysis:

1. Use of the name "Mahendra & Mahendra" by the defendant:
The plaintiff, Mahindra & Mahindra Ltd., sought a permanent injunction to restrain the defendant from using the name "Mahendra & Mahendra" as part of its corporate name or trading style. The plaintiff argued that the name "Mahindra" is a registered trademark and forms a dominant part of its identity, which is widely recognized in various industries. The defendant, Mahendra & Mahendra Paper Mills Ltd., contended that the name "Mahendra" was used honestly, derived from the name of a family member, and had been in use since 1974 in various businesses.

2. Alleged infringement of the plaintiff's registered trademark "Mahindra":
The plaintiff asserted that the name "Mahendra & Mahendra" is deceptively similar to its registered trademark "Mahindra," causing confusion and deception among the public. The defendant denied the similarity and argued that their business activities and products do not overlap with those of the plaintiff, thus negating any likelihood of confusion or deception.

3. Claim of passing-off by the defendant:
The plaintiff claimed that the defendant's use of the name "Mahendra & Mahendra" was intended to deceive the public into believing an association with the plaintiff's well-established brand, thereby trading on the plaintiff's goodwill and reputation. The defendant refuted this, stating that they had an independent reputation and that their business activities were distinct from those of the plaintiff.

4. Balance of convenience and irreparable harm in granting an interim injunction:
The Single Judge of the Bombay High Court granted an interim injunction restraining the defendant from using the name "Mahendra & Mahendra" pending the final disposal of the suit, citing the likelihood of confusion and deception. The Division Bench upheld this decision, noting that the plaintiff had a registered trademark and that the defendant failed to show significant business activity under the contested name. The Supreme Court affirmed the lower courts' decisions, emphasizing the principles of maintaining the status quo and preventing irreparable harm to the plaintiff's established brand.

Conclusion:
The Supreme Court upheld the interim injunction, recognizing the plaintiff's prima facie case of trademark infringement and passing-off. The Court noted the long-standing use and reputation of the "Mahindra" name, the likelihood of public confusion, and the potential prejudice to the plaintiff's business. The appeal by the defendant was dismissed with costs, maintaining the injunction to preserve the plaintiff's trademark rights until the final resolution of the suit.

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