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TMI Blog2011 (12) TMI 689X X X X Extracts X X X X X X X X Extracts X X X X ..... s 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 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 managem ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 399956 GE Monogram 6 Metal alloys not included in other classes 10085 GE Monogram 7 Compressors (Machinery); 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., 10086 GE Monogram 9 Magnets 304290 GENERAL ELECTRIC GE 9 Cinematograph apparatus, 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, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... c 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). 10095 GE in block letters 12 Vehicles, apparatus for locomotion by land, air or water 583550 GE Monogram 17 Gutta percha; indiarubber; balata and substitutes; articles made from these 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) 399689 GENERAL ELECTRIC GE 17 Dielectric or insulating oils and compounds 10090 3. The plaintiff has wide presence in India through the following subsidiaries/Joint Venture Co ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tecting 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, 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 bran ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ood 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 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 ev ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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, 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 20 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rademark 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 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 (monog ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 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 ass ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... . 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 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ce 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 th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... gence 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 e ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 expe ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tion 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 reli ..... X X X X Extracts X X X X X X X X Extracts X X X X
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