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CASE ANALYSIS ON INFRINGEMENT OF TRADEMARK UNDER SECTION 29 OF THE TRADEMARKS ACT, 1999

QUA HAWKINS PRESSURE COOKERS LTD. V. MURUGAN ENTERPRISES

INTRODUCTION

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:

  1. 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;

  2. If the identical or similar mark will cause confusion within the minds of general public to possess associate association with the registered trademark;

  3. 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;

  4. 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;

  5. 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

  1. Unauthorised Person: This means a person who is not the owner or licensee of the registered trademark.

  2. 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.

  3. Registered Trademark: Infringement happens only in case when the trademark is registered.

  4. 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.


CASE ANALYSIS

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

  1. 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.

  2. The Company was engaged in the manufacture of pressure cookers and parts thereof under the trademark HAWKINS for the last 30 years.

  3. 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.

  4. 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.

  5. 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.

  6. 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”.

  1. 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.

  2. The Company again issued Cease and Desist Notice dated 08.11.2004.

  3. 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.

  4. It was pleaded on behalf of the Company that:

  5. 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;

  6. 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;

  7. The defendant cannot use the trademark HAWKINS or the endorsement i.e., the gasket manufactured by the defendant is suitable for Hawkins pressure cookers.

  8. The following defence was taken on behalf of Murugan Enterprises:

  9. They have adopted the trademark MAYUR and only state on their product / gasket that the same is suitable for Hawkins Pressure Cookers.

  10. 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.

  11. 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.

  12. 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.


  1. 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

Statutes Involved

Following Sections of Trademarks Act, 1999:

  1. Section 134

  2. Section 2(m)

  3. Section 2 (zb)

  4. Section 29 (2)(c)

  5. Section 29 (3)

  6. Section 9(1) (b)

  7. Section 30 (2) (d)

Arguments of Murugan Enterprises

  1. 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.

  1. Jurisdiction is claimed under Section 134 of the said Act since the plaintiff carries on business at Delhi.

  2. 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 affida