Our Associate, Roohan Kathuria discusses “Defendant Restrained from Using Plaintiff’s Designs, Label Marks and Trade Dress!”
Recently the Delhi Hight Court decreed a suit in favour of Freemans Measures Private Limited, a company engaged in manufacture and sale of high-quality measuring tapes in various models and designs. By the decree, the defendants were restrained from dealing in measuring tapes with designs, trade dresses and label marks identical/similar to those of the plaintiff.
The case of the plaintiff is that the defendant No. 4, Ambika Overseas, is engaged in dealing in measuring tapes and tools, etc. that have designs identical to the plaintiff’s registered designs which are non-functional. Moreover, the label marks/trade dresses used by the defendants are near identical reproduction of the plaintiff’s product packaging/trade dress/label mark for its measuring tapes sold under the well-known trademarks HI-formative marks such as HI-WIDE, HI-16, HI-19 and HI-25 and the mark CENTIFLEX. The plaintiff claims to have earlier rights in these designs, label marks and trade dresses.
It is the plaintiff’s claim that, sometime in the year 2012, it learned about the defendant’s use of a label mark/ trade dress of defendants’ measuring tape bearing the mark and label MI-19 As per the plaintiff, the mark MI-19 was deceptively similar to the plaintiff’s HI-formative marks and that the defendants had made minor/insignificant changes in the labels of the tape. Further, as per the plaintiffs, the label mark/trade dress of defendants’ measuring tapes under the mark CONFLEX was similar to plaintiff’s label mark/trade dress of its measuring tapes bearing the mark CENTIFLEX. The plaintiff contented that the products of respective parties are sold in markets in rural and semi-rural areas where people are not educated. Consequently, confusion is bound to occur between the products. The plaintiff also claims that the defendants’ mala fide intention to ride upon the goodwill of the plaintiff and pass-off its goods as those of the plaintiff.
The case of the defendants is that they have never used the marks MI-19 and CONFLEX for any of their products and do not intend to use these marks in future as well. Instead, the defendants claimed that they are using the marks A-13, A-16, A-19, where A stands for AMBIKA and the denominations 13/16/19 stand for the width of the steel tape. The defendants claimed that these marks are unique and distinct in appearance and bear no resemblance to any of the plaintiff’s marks and as such, the question of infringement, passing-off, dilution or tarnishing holds no merit.
The defendants submitted that shape of the measuring tape manufactured by the plaintiff is not novel or original. Rather the shape has been used by every other measuring tape manufacturer in every part of the world. The defendants further contended that since the products bearing the marks in question have not been used by the defendants, there is no question of a huge undeserved profits being made by the defendants by riding on the plaintiff’s goodwill.
The plaintiff contended that the defendants had published an advertisement in the magazine The Yellow Pages showing products with the designs, label marks and marks M-19 and CONFLEX and that the defendants are making contradictory statements regarding their use of the label marks, designs, etc. Further, as per the plaintiff, the defendants only changed their mark from MI-19 to A-19 after a matter resolved between the parties in 2012. The plaintiff also contended that even the modified/ amended mark and trade dress is deceptively similar to the plaintiff’s marks and/or trade dress.
The court took cognizance of the plaintiff’s registered designs, copyright, etc. and held that the rival designs, etc. were similar/identical. Consequently, based on the averments and materials on record, the court held that the suit be decreed in favor of the plaintiff.
Citation: Freemans Measures Pvt Ltd. v. Mankaran Bhandari & Ors.- CS(COMM) 981/2016. Order dt. 22.12.2020.