HAVELLS INDIA LIMITED (Havells) has been using the mark ‘STANDARD’ for electrical products, including switch gears, fuse gears, cables, insulation wires, miniature circuit breakers since the year 1958.

 

 

It is the registered proprietor of several trademark registrations in its favour for the mark ‘STANDARD’ in India as well as in other foreign jurisdictions. In 2019, Havells came across L Ramesh’s (Ramesh) mark published in the trademark journal and opposed it. Thereafter, Havells conducted an independent investigation and came to know that Ramesh had adopted the marks    and and had also copied the mark ‘STANDARD’.

 

 

Havells contended that, Ramesh had merely replaced the letter ‘D’ occurring at the end of the word STANDARD with the letter ‘O’ to form the impugned trademark ‘SS STANDARO’ for a similar line of goods as those being sold by Havells such as MCBs, switch gears and the like. Havells further contended that, Ramesh had also adopted the packaging and other elements of the trade dress of Havells’s products to suggest an association of the products with Havells. Havells claimed that that its trademarks had been declared to be a well-known trademarks and hence the term "STANDARD" having acquired an aqcuired distinctiveness and secondary signifance was not descriptive.

 

 

Against this, Ramesh contended that he had not been using the mark ‘STANDARD", nor did he intend to do so. Ramesh added that the mark "STANDARD" was generic in trade and as per the search reports produced, Havells had suppressed the facts that while obtaining registrations, the Trade Mark Registry had granted registration subject to a disclaimer that Havells would have no right for the exclusive use of the word ‘STANDARD’ or letter "S".

 

 

Ramesh also argued that Havell’s claim was time-barred as it was aware of Ramesh’s use of the marks since 2003 however, it chose to file the suit in 2020 and has not filed any rectification proceeding in respect of his registered trademark.

 

 

 

Source- Judgment

  

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The Court had previously granted an ex parte interim injunction in favour of Havells restraining Ramesh from using the trademark ‘STANDARD’ / ‘SS STANDARO’ or the logo/device of and, or any other logo/device, trade dress deceptively similar to Havells’s registered trademarks.

 

 

In the present matter, the Court after hearing the submissions of both the parties accepted the submissions made by Havells that the trademarks/trade dress/packaging of Ramesh are deceptively similar with that of Havells’ and that there was a likelihood of confusion being caused in the minds of the public at large taking into account the overall similarity between the marks.

 

 

The Court further clarified that the word ‘STANDARD’ is a suggestive mark and not a descriptive mark. The Court said that the disclaimed portion would have no bearing until and unless the trademark has acquired a secondary meaning and in the present case, the registration certificates were duly filed by Havells and therefore, there can be no question of concealment.

 

 

The Court added that, the disclaimer as to the ‘right of exclusivity’ could not come in the way of Havells’ claim with regard to passing off, nor would it come in the way of comparison of the label/device marks of the two products as the marks are to be compared as a whole for the purpose of grant of relief on account of infringement.

 

 

Hence, the Court held that all the prerequisites for a grant of an interim injunction were satisfied and upheld the injunction granted against Ramesh, restraining him from using the trademarks "STANDARO" and "SS STANDARO". However, on compassionate grounds, the Hon’ble Court taking into consideration that Ramesh was a small trader, modified its injunction order allowing him to sell his goods, after removing and without using the impugned logos.