CASE ANALYSIS ON INFRINGEMENT OF TRADEMARK UNDER SECTION 29 OF THE TRADEMARKS ACT, 1999
QUA HAWKINS PRESSURE COOKERS LTD. V. MURUGAN ENTERPRISES
What is Trademark Infringement?
Generally, trademark infringement suggests that unauthorized use of a trademark or service mark on or in reference to goods and services in a manner that is doubtless to cause confusion, deception or mistake regarding the supply of goods and services.
Trademark has been outlined as the mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others.
Section 29 of the Trademarks Act, 1999 deals with “Infringement of registered trademarks”. It states that infringement of trademark is defined as a use of the mark, by an unauthorised or an authorised person or a person who is not the registered proprietor, which is identical or deceptively similar to the trademark in relation to the goods or services in respect of which the trademark is registered.
In straightforward words, it is defined as the violation of exclusive rights that are attached to a registered trademark without the permission of the registered owner.
A registered trademark is claimed to be infringed within the following situations:
If the mark relevant is identical with or deceptively kind of like the registered trademark and is in respect to an equivalent or similar goods or services;
If the identical or similar mark will cause confusion within the minds of general public to possess associate association with the registered trademark;
If the registered trademark is employed as a region of name or business for goods and services in respect of which the trademark is registered;
If the trademark is publicized and as a result it takes unfair advantage or is contrary to honest practices or is damaging to the distinctive character and reputation of the registered trademark;
If the registered trademark is employed within the material meant for packaging or labelling of other goods or as a business paper without due authorization of the registered user.
Any person commits the offence of trademark infringement shall be punishable with imprisonment for a minimum period of 6 months which may extend to 3 years and shall even be vulnerable to fine which shall not be less than Rs. 50,000 which may extend to Rs. 2,00,000.
ESSENTIAL ELEMENTS OF TRADEMARK INFRINGEMENT
Unauthorised Person: This means a person who is not the owner or licensee of the registered trademark.
Identical or Deceptively Similar: The test for determining whether marks are identical or not is by determining whether there is a chance for likelihood of confusion among the public. If the consumers are likely to get confused between the two marks, then there is an infringement.
Registered Trademark: Infringement happens only in case when the trademark is registered.
Goods/Services: In order to establish infringement even the goods/services of the infringer must be identical with or similar to the goods that the registered trademark represents.
CITATION: 2012(50) PTC 389 (Del)
Date of Judgement: 4th January 2008
Name of the judges at the bench: Justice Sanjay Kishan Kaul
Judgement delivered by: Justice Sanjay Kishan Kaul
Material facts of the case in brief
Hawkins Cooker Limited an existing Public Limited Company under the Companies Act, 1956 was incorporated with the name M/s Pressure Cookers and Appliances Limited which was changed to the present name in the year 1986.
The Company was engaged in the manufacture of pressure cookers and parts thereof under the trademark HAWKINS for the last 30 years.
One of the parts being manufactured by the Company was ‘gasket’ which prevents the steam from leaking out of the cooker and is a crucial and integral part of a pressure cooker.
The Company has a quality control department to ensure that its pressure cookers and various parts thereof are of the required quality and standard. In order to promote the pressure cookers and parts thereof manufactured, the Company had spent a sum of Rs. 111 crores between October, 1986 and March, 2005 towards advertisements and promotions.
In January, 2000, the Company came to know that Murugan Enterprises was using the trademark HAWKINS in respect of parts of the pressure cooker and served a Cease-and-Desist Notice vide its letter dated 03.01.2000.
Murugan Enterprises disputed the claim of the Company on the following ground:
“Their trade mark is “MAYUR” and that the gaskets were being sold under their own trademark and the use of the word ‘Hawkins’ on the products/gaskets was to inform the purchasers that the gaskets being manufactured by Murugan Enterprises were suitable for Hawkins pressure cooker”.
The Company claimed that it did not see the product subsequently in the market till October 2004, after which it again noticed that the gaskets are being sold in the market by Murugan Enterprises by using the trademark HAWKINS.
The Company again issued Cease and Desist Notice dated 08.11.2004.
The Company had instituted the present suit for permanent injunction restraining infringement of trademark, passing off, delivery up and rendition of accounts against Murugan Enterprises.
It was pleaded on behalf of the Company that:
The unauthorised use of the trademark Hawkins by the defendant on the packaging of their product/gasket is likely to cause confusion or deception about the trade connection or association between the goods and business of the defendant with that of the plaintiff;
The use of the trademark ‘Hawkins’ by the defendant is detrimental to the plaintiff’s reputation since the plaintiff has no control or supervision over the quality of spare parts manufactured by the defendants;
The defendant cannot use the trademark HAWKINS or the endorsement i.e., the gasket manufactured by the defendant is suitable for Hawkins pressure cookers.
The following defence was taken on behalf of Murugan Enterprises:
They have adopted the trademark MAYUR and only state on their product / gasket that the same is suitable for Hawkins Pressure Cookers.
There is no chance of deception or infringement of the trademark of the plaintiff since the trademark of the defendant MAYUR has been used prominently on the packaging of the product/gasket.
The use of a trademark of one person as a referral cannot be termed as infringement of trademark. The object is only to inform the public that MAYUR gaskets can be used for HAWKINS pressure cookers and it is only such information which is set out on the packaging of the defendant.
It had adopted the trademark MAYUR and device of PEACKOCK from 1994 and has acquired good reputation in the market and the sales of the defendant’s product/gasket is only in Tamil Nadu.
The product manufactured by it is of high value and there is no question of the product of the defendant being inferior to that of the plaintiff and the quality standards of the gaskets manufactured by the defendant are approved by the Bureau of Indian Standards.
Points for determination/issues involved in the case
Following issues were involved for determination in the case:
Issue No. 1: Whether this Court has no territorial jurisdiction to try and adjudicate the present suit?
Issue No. 2: Whether the defendant is using ‘Hawkins’ as a trademark?
Issue No. 3: If issue No. 2 is answered in favour of plaintiff: Whether the defendant is infringing the trademark ‘Hawkins’ of the plaintiff?
Issue No. 4: If issue No. 2 is answered in favour of the plaintiff: Whether the defendant is passing of its goods as that of the plaintiff?
Issue No. 5: Whether the plaintiff is entitled to damages/rendition of accounts? If so, the extent and period thereof?
Issue No. 6: Relief
Following Sections of Trademarks Act, 1999:
Section 2 (zb)
Section 29 (2)(c)
Section 29 (3)
Section 9(1) (b)
Section 30 (2) (d)
Arguments of Murugan Enterprises
Cease and Desist notices were sent from Bombay and thus this Court would have no territorial jurisdiction to try and determine the present suit.
Arguments of Hawkins Cookers Ltd.
Jurisdiction is claimed under Section 134 of the said Act since the plaintiff carries on business at Delhi.
The goods of the defendant are being sold and are being offered for sale at Delhi.
Held: The Hon’ble Court command that the plea by the defendant is rejected on the bottom that the plaintiff is carrying on business at Delhi and also the same is confirmed within the affidavits of proof to that there’s extremely no denial on the part of the defendant.
Issue No. 2: Whether the defendant is using ‘Hawkins’ as a trademark?
Arguments of Hawkins Cookers Ltd.
In terms of Section 29 (2) of the Act, the registered trade mark is infringed if during the course of trade, the mark has been used (even if it is not a trademark) because of its identity with the registered trademark which results in the possibility of confusion on the part of public or having association with the trademark.
There is no dispute that the defendant can use the tradename to indicate that the spare part is fit for use in a particular machinery but for the same it should be accompanied with a disclaimer that the spare part is not manufactured by the original manufacturer.
It was also contended that the defendant’s gaskets may mention that it can be used for different brands of pressure cookers and specify the number of such brands including ‘Hawkins’ but the defendant cannot single out ‘Hawkins’ because that would be amount to trying to take advantage of the reputation of the plaintiff’s trademark.
The plaintiff also argued that the trade practice is not to use the brand but to go by the nature of pressure cookers and thus it was not necessary to state that the gasket was meant for Hawkins pressure cooker.
The plaintiff further argued that there was neither any necessity for the same nor it was an honest practice which was a pre-requisite under Section 30 (2) (d) of the Act. The reputation of a pressure cooker manufacturer could also be affected in case of lack of proper quality of gasket.
The plaintiff also contended that the user of only one name of ‘Hawkins’ to show suitability of the product is stated to be not an honest business practice but an endeavour to encash on the goodwill and reputation of the brand of HAWKINS
Arguments of Murugan Enterprises
The defendant is manufacturing the gasket under the registered trademark MAYUR with the device of PEACKOCK and has large and extensive sale because of its product’s good quality, good market and sales promotion.
The defendant’s line of business is one of ancillary nature and the indication given on the packaging is an essential information to the customers so that they can select an accessory of particular specification which is suitable for the main article. The expression ‘suitable for HAWKINS pressure cookers’ is thus said to fall within the exception of Section 30 (2) (d) of the said Act.
The indication is stated to be only to show compatibility of the product of the defendant with that of the plaintiff.
A reading of Section 29 of the said Act shows that the use of a registered trademark by a third party in the course of trade or user of a deceptively or identical trademark is not permissible when it renders the use of the mark likely to be taken as being used as a trademark.
Held: The Single Judge Bench rejected the appellant’s plea, stating that it was not an infringement as the usage of the word “HAWKINS” was only to indicate that the gaskets produced by Murugan Enterprises were capable of being used in Hawkins Pressure Cookers and not to indicate any connection of their company to the trade of Hawkins.
Since the Issue No. 2 was answered in favour of defendant, hence no order was passed for Issue no. 3, 4, 5 and 6.
The case was appealed in Divison Bench of Delhi High Court before Pradeep Nandrajog and Siddharth Mridul, JJ (2012 SCC OnLine Del 2118: (2012) 189 DLT 545 (DB).
Date of Judgement: 13th April 2012
Name of the judges at the bench: Justices Pradeep Nandrajog and Siddharth Mridul
Judgement delivered by: Justice Pradeep Nandrajog
Hawkins Cookers Limited appealed in Division Bench of Delhi High Court against the judgement passed by Single Judge Bench of Delhi High Court on 4th January, 2008
Grievance of the Appellant:
The learned Single Judge has proceeded on the basis, that as per the evidence, gaskets manufactured by the respondent are specially made, to be fitted in Hawkins Pressure Cookers.
The learned Single Judge has noted that: the defendant in the affidavit has emphasized that the gaskets manufactured by them are specifically made for them to be fitted in the Hawkins pressure Cookers.
Submissions made on behalf of Appellant:
The gaskets manufactured by the respondent are neither designed, nor are capable of being designed, to be used in a particular kind of pressure cooker;
All pressure cookers are so designed that the mouth of the pressure cooker and the corresponding lid is of same dimension;
Section 29 of the Trademarks Act, 1999 relates to the protections available to registered trademarks and rights available to the proprietor of a registered trademark.
Section 30 (1) of the said Act, clearly states that nothing in Section 29 shall be construed as preventing the use of a registered trademark by any person for the purposes of identifying goods or services, in the situations contemplated by Sec 30 (1) (a) and (b); provisions with which we are not concerned for the case at hand.
Section 30 (2) (d) stipulates situation where the manufacturer of goods which form part of or are an accessory to other goods for which a trademark exists is entitled to indicate that the accessory goods are adaptable to some other goods and it is reasonably necessary to so indicate. In such a situation, reference to the registered trademark of another person would not be actionable.
The Court held the following:
The learned Single Judge has noted that the defendant in the affidavit has emphasised that the gaskets manufactured by them are specifically made for them to be fitted in the Hawkins pressure cookers.
The learned Single Judge has correctly noted the law: that if in the sale it becomes reasonably necessary for the manufacturer of adaptable goods, to refer to the trademark of the relatable goods, such reference would not amount to an infringement of the trademark under which the relatable goods are sold, but has misapplied the evidence on record.
The error committed is by proceeding upon the premise that the evidence establishes that the respondent manufactures gaskets specifically for the special sizes of pressure cookers manufactured by the appellant, ignoring that the evidence is to the contrary.
Clarifying that the undisputed evidence brings out that gaskets pertaining to pressure cookers, irrespective of the brand or the manufacturer, are identically designed for pressure cookers of different sizes i.e., smallest gaskets for one litre pressure cookers, bigger gaskets for two litre pressure cookers and yet bigger gaskets for three litre pressure cookers and so on.
Thus, a gasket of a particular size would fit the lid of all pressure cookers manufactured by different manufacturers of the same relatable size, would mean that it is not reasonably necessary to indicate, for the benefit of the consumer, that the adaptable goods relate to only one particular brand of pressure cookers.
It has escaped the attention of the learned Single Judge that while writing: ‘Suitable for Hawkins Pressure Cookers’, the respondent has given undue prominence to the word ‘Hawkins’ by printing it in a distinct red colour and the remaining words of the sentence are printed in black colour.
Clarifying that the respondent, may, if it so chooses, indicate on the packaging material of the gasket that the gasket is suitable for all pressure cookers, as is being done by other manufacturers of gaskets.
Decision of the Appellate Court
The appeal was allowed and the impugned judgement and decree dated January 04, 2008 was set aside and decree the suit filed by the appellant, but limited to prayer (a) and (b) thereof.
The respondent was given three months’ time to dispose of the existing packaging material containing the offending printed material and for which we direct the respondent to file an affidavit in the suit disclosing the number of plastic pouches lying with it on which the offending sentence has been written.
Prayer pertaining to rendition of accounts, being not pressed, is declined.
The parties to bear their own costs all throughout.
It can be safely concluded that the Court has answered the question of law by explaining the term reasonably necessary.
Section 30(2)(d) off Trade Mark Act, 1999, gives immunity to the manufacturers of the goods, where the goods manufactured are adaptable to some other goods and it is reasonably necessary to so indicate by reference to the trademark of the other goods provided it is just and this would mean that the goods claimed to be adaptable are specially manufactured to be used as a part of the other goods alone.
The Court of original jurisdiction had passed the judgement in favour of defendant (Murugan Enterprises) and against the plaintiff (Hawkins Cookers).
The judgement was passed by the Court pursuant to Section 30(2)(d) of the Trade Mark Act, 1999, wherein the goods (gaskets) were manufactured by Murugan Enterprises which can be used in the pressure cookers manufactured by Hawkins Cooker. Since the gaskets are adaptable to Hawkins pressure cookers, hence it is reasonably necessary to indicate by reference to trademark.
However, an error was committed upon the premise that the evidence establishes that Murugan Enterprises manufactures gaskets specifically for the special sizes of pressure cookers manufactured by Hawkins Cooker, ignoring that the evidence is to the contrary.
After the undisputed evidence brings out that gaskets pertaining to pressure cookers, irrespective of the brand or the manufacturer, are identically designed for pressure cookers of different sizes, it would mean that it is not reasonably necessary to indicate, for the benefit of the consumer, that the adaptable goods relate to only one particular brand of pressure cookers.
It is most with all respect submitted that in my opinion, the decision of the Hon’ble Division Bench of Delhi High Court is incredibly a lot applicable. This decision confirms the position of law where the trade mark is employed by a third party who wasn’t its owner and this use was necessary so as to point the supposed purpose of a product marketed by that third party wherever such use in with comprehensible and complete information thereon supposed purpose so as to preserve the undistorted system of competition within the market for that product.
It is additionally submitted that the court has adequately justified its reasoning and the given reasoning was logical and consistent. The court self-addressed all the problems and arguments, none of the problems was left over/omitted by the court. Altogether, the judgement of the Court was alright written and depicts an accurate proposition of law as applicable in India consistent with law of infringement and passing off.
The Trademarks Act, 1999
SUBMITTED BY: MUSKAN BHARIJA
COURSE: BBA LLB
YEAR: 5TH YEAR
SEMESTER: 10TH SEMESTER
NAME OF THE COLLEGE: DELHI METROPOLITAN EDUCATION, IP UNIVERSITY