Domain name not only serves as an address for Internet communication, but also identifies the specific Internet site as the address of its owner and also has trademark value. The consumer would be misled into thinking that the defendants’ goods/services are those of the Plaintiffs and/or related to the Plaintiffs. The domain name serves the function of a trademark and is not a mere address and is therefore entitled to equal protection as a trademark. Use of the impugned domain name by the Defendants amounts to infringement of the Plaintiffs’ said trademark as also passing off

2014  (60) PTC  227 (BOMBAY)

           IN THE HIGH COURT OF JUDICATURE AT BOMBAY

  ORDINARY ORIGINAL CIVIL JURISDICTION

NOTICE OF MOTION  NO. 2191 OF 2012

IN     \

SUIT  NO. 2061 OF 2012

 

 

Mahindra & Mahindra Limited & Anr.                                                        ….Plaintiffs

 

      vs.

                                                         MNM  Marketing Pvt. Ltd. & Anr.                                                            ..Defendants

Mr. Virag Tulzapurkar, Senior Advocate, along with Mr. A.   Nargolkar and Ms. S.     Yadav, instructed by  Mr. Mustafa  Banatwala,  for the Plaintiffs.                                           Mr. S.Y.  Katkade along with Ms. Nirmala V.  Gopal, for the Defendants.   

 

 

Trade Marks Act, 1999 Section 2 (1) (zg), 12, 29 (4), 30 (2) (e), 34 – Infringement – Injunction – Plaintiffs have contended that the Defendants’ registration of the domain name viz. www.mandmstores.in (”impugned domain name”) is dishonest and mala fide. It is correctly submitted by the Plaintiffs that the domain name not only serves as an address for Internet communication, but also identifies the specific Internet site as the address of its owner and also has trademark value. The consumer would be misled into thinking that the defendants’ goods/services are those of the Plaintiffs and/or related to the Plaintiffs. The domain name serves the function of a trademark and is not a mere address and is therefore entitled to equal protection as a trademark. Use of the impugned domain name by the Defendants amounts to infringement of the Plaintiffs’ said trademark as also passing off. [Para 37]

S.J. KATHAWALLA, J

Judgment reserved on :  1st April, 2014.

Judgment pronounced on: 31st July,2014.

 

JUDGMENT:

The above Suit is filed by the Plaintiffs, inter alia, complaining of acts of infringement of the Plaintiff’s registered trademark “M & M” (hereinafter referred to as “the said trademark”) committed by the Defendants and for acts of passing off and for further and other reliefs as set out in the Plaint. The Plaintiffs have also sought interim reliefs in the Suit by filing the above Notice of Motion which is now taken up for hearing and final disposal.

  1. According to the Plaintiffs, Plaintiff No. 1 is a Company incorporated and registered under theIndian Companies Act, 1913. Plaintiff No.1 and its KPPNair 2 NMS 2191/2012 group/subsidiary companies are together referred to as the “Mahindra Group”.

Plaintiff No. 1 is the flagship company of the Mahindra Group of Companies and is a highly reputed, established and well-known business house having interest in a very wide range of businesses and activities.

  1. Plaintiff No. 2 is a Company incorporated and registered under the Companies Act, 1956. Plaintiff No. 2 is the retail trade arm of the Mahindra Group which focuses on premium lifestyle and retail business stores selling, inter alia, apparels, toys and furnishings. Plaintiff No.2 has been using the trademarks “MAHINDRA” and “M & M” under the Name License Agreement dated 9 th October, 2009, between Plaintiff No.1 and Plaintiff No.2.
  2. Defendant No.1 started as a firm Manhar & Manhar in 1985 and was incorporated as MNM Marketing Private Ltd. in the year 2004 and Defendant No.2 was incorporated in the year 1989 in the name Mid India Hospital and Research Centre Private Limited, which changed its name to Mid India Enterprises Private Limited in 2007.
  3. It is the case of Plaintiff No.1 that it is the registered owner of the marks “MAHINDRA” (word per se and label), “Mahindra and Mahindra” (word per se and label) and “M & M” (word per se and label), hereinafter referred to as “the said trademark” in various Classes under the Fourth Schedule to the Trade Marks Rules, 2002 under the Trade Marks Act, 1999 (hereinafter referred to as “the Act”). A listKPPNair 3 NMS 2191/2012 containing the details of the applications/registrations of the marks “MAHINDRA”

(word per se and label), “Mahindra and Mahindra” (word per se and label) and “M & M” (word per se and label) is annexed as Exhibit-A at pages 37 to 39 of the Plaint.

The mark “MAHINDRA” (word per se and label) is also registered in various countries the world over, as can be seen from Exhibit-B at pages 40 and 41 of the Plaint. The mark “Mahindra & Mahindra” is also listed as a well-known mark on the official website of the Trade Marks Registry. Exhibit-C at page 42 of the Plaint, is a copy of the relevant extract from the online records of the Trade Marks Registry evidencing the same. In the case of Mahendra & Mahendra Paper Mills Ltd. vs. Mahindra & Mahindra Ltd.1 the Hon’ble Supreme Court has held that Mahindra & Mahindra is a well-known trademark.

  1. The said trademark of Plaintiff No.1 is registered both as word mark and label. The details of the registration of the said trademark in Classes 12, 35 and 42 are as under:

Sr.No. Trade Mark          Registration No. Class/Cl Application                  Registration valid                                                 asses    Date                         and subsisting upto    1          M & M           800566               12            30th April          30th April 2018               (word)                                             1998    2          M & M           800560               12            30th April          30th April 2015                     (label)                                            1998    3          M & M           1460262              35            15 June 2006 15 June 2016                (label)    4          M & M           1460269              42            15 June 2006 15 June 2016                (label)    5          M & M           1460926              35            16 June 2006 16 June 2016      1 (2002) 2 SCC 147 paragraph 24 at pg. 161                      (label)                                                                                                                6          M & M              1460933                 42            15 June 2006 15 June 2016                 (label)                                                                                      7          M & M (label  1725068                      3,5,16,1 26 August                26 August 2018                in colour)                                 8,20,21, 2008                                                           24,25,27                                                           ,28,35                                                            and 42                                                                                     8          M & M (label  1722794                      3,5,16,1 19 August                19  August 2018                in black and                               8,20,21, 2008                white)                                     24,25,27                                                           ,28,35                                                                                                                            and 42      7.

According to Plaintiff No.1, it has been incurring huge expenses in sales promotion and advertisements in relation to the goods and services bearing the mark “MAHINDRA”, the corporate name “Mahindra and Mahindra Limited” and the trading style “Mahindra and Mahindra”. The statement of the gross revenue earned and advertisement expenses incurred by Plaintiff No.1 during the years 2005 till 2011, certified by their Chartered Accountant, is annexed and marked as Exhibit-E at page 53 of the Plaint, which evidences the gross revenue earned and the advertisement expenses incurred by Plaintiff No.1. It is further pointed out that Plaintiff No.2 itself, doing retail business with retail stores, has been incurring huge expenses in sales promotion and advertisements in relation to the retail services.

The Plaintiff No. 2 has more than 75 stores across India and the sales turnover of Plaintiff No. 2 runs into crores of rupees.

  1. It is submitted on behalf of the Plaintiffs that “M & M” is the natural abbreviation/acronym of “Mahindra & Mahindra”. The Plaintiffs submitted that the KPPNair 5 NMS 2191/2012 popularity, goodwill and reputation of the marks “Mahindra”/”Mahindra and Mahindra” has become so immense amongst the members of the trade and public, that the same has naturally flown into and is associated with the term/acronym of the Plaintiffs “M & M” in any field of business/activity. The said trademark is used by the Plaintiffs in the course of all their businesses/activities and the Plaintiffs are known and referred amongst the members of the trade and public and in press and other media as “M & M” since at least 1969. It is submitted that the secondary significance, noted by the Hon’ble Supreme Court in Mahendra and Mahendra Paper Mills Ltd. (supra), holds true even in respect of the abbreviation “M & M” .
  2. It is submitted that the benefit of use and registration of the marks “Mahindra” and “Mahindra & Mahindra” enures to its natural abbreviation “M & M”

which has been upheld by this Court (Coram: S.C. Dharmadhikari, J.) in its order and judgment dated 7th May, 2012 in Notice of Motion No. 1078 of 2012 in Suit No. 867 of 2012.

  1. It is submitted on behalf of the Plaintiffs that the right of an abbreviation to have protection from infringement has been recognized by authors and courts the world over. It is therefore submitted that the said trademark “M & M” enjoys right of protection against infringement and passing off. In the instant case, the Plaintiffs have used and registered their trademark “M & M” and the public also identifies the same as the trademark of the Plaintiffs and exclusively associates the same with the Plaintiffs. The Plaintiffs therefore have the exclusive right to use the said trademark “M & M” both in common law and under the statute by reason of its registrations, including in particular Classes 35 and 43. The first registration in classes 35 and 42 KPPNair 6 NMS 2191/2012 was made as far back as on 16th June, 2006.
  2. The Plaintiffs have complained of the Defendants’ impugned mark “M & M” / “MNM” (”impugned mark”) used by the Defendants for their shopping mall/retail business which falls within Class 35, as being identical with or in any event, deceptively similar to the Plaintiffs’ trademark “M & M” which is registered inter alia in Classes 35 and 42. Such use of the impugned mark constitutes infringement of the Plaintiffs’ registered trademark “M & M” and also results in passing off the Defendants’ retail services/business as and for those of the Plaintiffs.
  3. It is submitted on behalf of the Plaintiffs that the Defendants’ registration of the impugned mark is in several other class in respect of goods, but not in Class 35 or 42 and use thereof is much after the registration and use by the Plaintiffs of the said trademark “M & M”, and in any event the Defendants do not have any registration of the impugned mark “M & M” in Class 35 (for retail trade services) in respect of which the Defendants are using the same.
  4. The Plaintiffs further submitted that Defendant No. 1 is using the said trademark as a part of its Company name viz. MNM Marketing Private Limited. It is submitted that the use of the impugned mark in the trading name/corporate name constitutes infringement and passing off the Plaintiffs’ registered trademark “M & M”.
  5. The Plaintiffs further submitted that the Defendants’ registration of the domain name viz. www.mandmstores.in (impugned domain name) is dishonest and mala fide. Relying on the decision in Satyam Infoway Ltd. vs. Sifynet Solutions Pvt.

KPPNair 7 NMS 2191/2012 Ltd.2, it is submitted that the use of the impugned domain name by the Defendants amounts to infringement of the Plaintiffs’ said trademark as also passing off.

  1. The Plaintiffs have also submitted that the Plaintiffs learnt about the impugned activities of the Defendants for the first time in or about January, 2012.

The Plaintiffs sent a cease and desist notice dated 18 th January, 2012, through their Advocates to which the Defendants replied by their Advocates’ letter dated 30 th January, 2012. It is submitted that the acts of passing off and infringement by the Defendants are continuing till date. It is submitted that a strong prima facie case is made out by the Plaintiffs for grant of reliefs as prayed for by them. The balance of convenience is also in favour of the Plaintiffs and the Plaintiffs are entitled to the reliefs as prayed for in the Notice of Motion.

  1. It is pertinent to mention herein that the Counsel appearing for the Defendants addressed the Court only for about 20 minutes and his main contentions were that the impugned mark was registered by the Defendant No.2 in certain classes and that there was delay on the part of the Plaintiff in approaching this Court. Thereafter, as correctly submitted by the Plaintiffs, the Defendants made improper use of their opportunity to file written submissions by raising certain contentions/submissions for the first time in the written submissions, which were neither argued at the hearing nor find place in their affidavit in reply nor in their sur-rejoinder. Thus these submissions can straightaway be rejected. However, keeping in mind the interest of justice and in order not to give an opportunity to the Defendants to make a grievance that their written submissions were rejected, whilst 2 (2004) 28 PTC 566 (SC) KPPNair 8 NMS 2191/2012 strongly deprecating the above conduct of the Defendants and their Advocates, this Court has in this order considered all the written submissions made by the Defendants. In view thereof, an opportunity was also given to the Plaintiffs to file their further written submissions.
  2. In this background the submissions made on behalf of the Defendants are now briefly set out hereunder:

(i) That since the impugned mark ” M & M”/”MNM” is registered by Defendant No.1 since 2002 in a few classes viz. Classes 3, 14, 16, 18, 24 and 25, such registrations are a defence under Section 30 (2) (e) of the Act to the Plaintiff’s case of infringement;

(ii) That the impugned mark is therefore distinctive and hence registered under Nos. 1121669 in Class 14, 1121670 in Class 16, 1121671 in Class 25, 1121672 in Class 24, 1121673 in Class 18 and 1121674 in Class 03;

(iii) That the impugned mark is used by the Defendants since 2002 and is therefore protected by Section 34 of the Act;

(iv) That the Defendants are the honest concurrent user of the impugned mark or are using the impugned mark prior to others on extensive basis. In support of their contention, the Defendants have relied on Section 12 of the Act;

(v) That the Plaintiffs are not entitled to any reliefs in view of latches and acquiescence on their part;

(vi) that the Plaintiff’s registration in Class 35 is in respect of advertising, business management, business administration, office functions and it does not cover ‘retail services’ and that the Plaintiffs covered their ‘retail services’ in subsequent trademark KPPNair 9 NMS 2191/2012 applications filed in the year 2012 and 2013. That the 2006 registration therefore cannot assist the Plaintiffs;

(vii) That the said trademark M &M is not used by the Plaintiffs;

(viii) That the Plaintiffs have no presence in shopping malls, there is no commonality in the field of activity of the Plaintiffs and the Defendants and there is a vast difference between the nature of services of the Plaintiffs and the Defendants;

(ix) That the Plaintiffs have failed to establish dishonesty/unfair advantage by the Defendants;

(x) That the balance of convenience is in favour of the Defendants;

(xi) That the Notice of Motion therefore deserves to be dismissed.

  1. In rejoinder, the Plaintiffs have submitted as follows:

(i) That the classes under which the Defendants have got the marks registered pertain only to specific goods and not for services at all. The Defendants do not have any registration in Classes 35 and 42. The impugned mark ” M & M – Look no Further”, the words “Look no Further” have been disclaimed and in any event are not distinctive. Hence the Defendants’ mark is really ‘ M & M ‘ only, hence there is no question of the impugned mark being considered as distinctive to the Defendants;

(ii) That as per Section 28 of the Act, the registration of a trademark shall, if valid, give to the registered proprietor of the trademark the exclusive right to the use the trademark in relation to the goods or services in respect of which the trademark is registered. The Defendants do not have any statutory right in the KPPNair 10 NMS 2191/2012 impugned mark for the services which is the cause of action for the present case, as they have no registration for services in class 35 or 42 at all. The Plaintiffs have in support of this contention relied on the decision of this Court in Balkrishna Hatcheries vs. Nando’s International Ltd. and another3;

(iii) That neither of the two conditions of Section 34, which are required to be fulfilled in order to afford a valid defence thereunder, is satisfied by the Defendants.

The Plaintiff has relied on the decision of this Court in Kamat Hotels (India) Limited vs. Royal Orchids Hotel Limited and another 4 wherein Section 34 of the Act has been analysed.

(iv) That the Defendants who always had knowledge of the Plaintiffs’ mark M & M cannot be heard to say that the Defendants are the honest concurrent user of the impugned mark or are using the impugned mark prior to the others on an exclusive basis. Reliance on Section 12 of the Act is therefore misplaced.

(v) That delay, if any, in approaching the Court does not affect interim injunction particularly when marks in question are structurally and visually similar and phonetically identical and that prima facie the adoption of the impugned mark was itself dishonest. In support of this submission, the Plaintiffs have relied on the decision in Schering Corporation and others vs. Kilitch Co. (Pharma) Pvt. Ltd. 5 andHindustan Pencils Pvt. Ltd. vs. India Stationery Products Co.6

(vi) That the Defendants’ contention that the Plaintiffs’ registration of the said trademark in class 35 is from 2008, is incorrect.

3 (2007 (35) PTC 295    4 [2011 (47) PTC 111 (Bom) ]    5 (suppl.) (2) 22 (Bom) (DB) at paras 18-22    6 AIR 1990 Delhi 19 at paras 22-31          KPPNair                                          11                                NMS 2191/2012     (vii)     That considering that the Plaintiffs’ said trademark is prior in point of time

vis-a-vis the impugned mark and the fact that the Plaintiffs’ said trademark is a well known mark, any subsequent use, howsoever big or small, cannot be a valid defence.

The Plaintiffs’ timeline starts from the date of knowledge and as stated in paragraph 16 of the plaint, the Plaintiffs became aware of the impugned mark only in or about January, 2012 and the Plaintiffs have immediately taken action against the Defendants.

(viii) That the Plaintiffs have filed for the class 35 heading which includes ‘services in relation to retail trade’ as per the explanatory note of Nice Classification which was tendered in Court at the hearing. The Plaintiffs have also relied on Rule 22 of the Trade Marks Rules, 2002 for this purpose. It is submitted that this clearly shows that the Plaintiffs registration of 2006 covers the retail services. The subsequent trademark applications made by the Plaintiffs referred to by the Defendants are not related to the present case, as those relate to entirely different marks viz. “m&m mahindra retail” and “m&m mahindra retail our little India coming together”.

Therefore, the Defendants contention that the Plaintiffs’ registration under class 35 does not cover retail trade/business is untenable. The Plaintiffs have also relied on the decision of the Division Bench of the Hon’ble Delhi High Court dated 8 th February, 2008 in the case of Larsen and Toubro Limited vs. Lachmi Narain Trades and others7 wherein it was inter alia held that, “dissimilarity in some of the products in which the parties trade does not make any material difference in so far as the grant or refusal of injunction against the Defendants are concerned”. Relying on Section 29 (4) 7 (MIPR 2008 (1) 0313) KPPNair 12 NMS 2191/2012 of the Act and Section 2 (1) (zg) of the Act which defines well-known trademark and the Defendants own admission at para 22 page 16 of the affidavit in reply and para 8 of the affidavit in sur-rejoinder that “M & M” is an abbreviation of Mahindra & Mahindra, it is submitted on behalf of the Plaintiffs that the argument of the Defendants that the Plaintiffs have not registered for ‘retail services’ in 2006 or that the Defendants are into a different business will also not hold good.

(ix) That quite independently of infringement, the Plaintiffs have sought reliefs also on passing off. It is settled law that registration is no defence to an action for passing off. The Plaintiffs’ goodwill and reputation in their said trademark “M & M”

is sufficiently established by the material produced on record. Relying on the decision of the Hon’ble Supreme Court in Laxmikant V. Patel vs. Chetanbhat Shah and another8, it is submitted that assuming for the sake of argument that there is no dishonesty on the part of the Defendants, still if confusion results on account of the rival marks, injunction ought to be granted.

(xi) That the Notice of Motion taken out by the Plaintiff be therefore allowed.

  1. I have considered the submissions on behalf of the Plaintiffs as well as the Defendants.
  2. The Defendants have not disputed any of the documents annexed to the Plaintiffs’ pleadings. The Plaintiffs’ registrations are also not disputed. Therefore, admittedly, Plaintiff No.1 is the registered owner of the marks “MAHINDRA” (word per se and label), “Mahindra and Mahindra” (word per se and label) and “M & M”

(word per se and label) in various classes under the Fourth Schedule to the Trade 8 AIR 2002 SC 275 paras 10-13 KPPNair 13 NMS 2191/2012 Marks Rules, 2002, under the Act. The mark “MAHINDRA” (word per se and label) is also registered in various countries the world over, as can be seen from Exhibit-B to the Plaint. As pointed out by the Plaintiff, the mark “Mahindra & Mahindra” is also listed as a well-known mark on the official website of the Trade Mark Registry, the relevant extract of which from the online records of the Trade Marks Registry is annexed as Exhibit-C to the Plaint.

  1. Section 2(1) (zg) of the Act defines “well-known trademark” and the same reads as under:

“(zg) “well-known trade mark”, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services.”

  1. The Apex Court in its decision in the case of Mahendra & Mahendra Paper Mills Ltd. (supra) has in paragraph 24 upheld that Mahindra & Mahindra is a well known trademark in the following words:

“24. Judging the case in hand on touchstone of the principles laid down in the aforementioned decided cases, it is clear that the plaintiff has been using the word ‘Mahindra’ and ‘Mahindra & Mahindra’ in its companies/business concerns for a long span of time extending over five decades. The name has acquired a distinctiveness and a secondary meaning in the business or trade circles. People have come to associate the name ‘Mahindra’ with a certain standard of goods and services. Any KPPNair 14 NMS 2191/2012 attempt by another person to use the name in business and trade circles is likely to and in probability will create an impression of a connection with the plaintiff’s group of companies. Such user may also affect the plaintiff prejudicially in its business and trading activities. Undoubtedly, the question whether the plaintiffs’ claim of ‘passing-off action’ against the defendant will be accepted or not has to be decided by the court after evidence is led in the suit. Even so for the limited purpose of considering the prayer for interlocutory injunction which is intended for maintenance of status quo, the trial court rightly held that the plaintiff has established a prima facie case and irreparable prejudice in its favour which calls for passing an order of interim injunction restraining the defendant-company which is yet to commence its business from utilising the name of ‘Mahendra’ or ‘Mahendra & Mahendra’ for the purpose of its trade and business. Therefore, the Division Bench of the High Court cannot be faulted for confirming the order of injunction passed by the learned Single Judge”.

In view thereof further rights flow to the Plaintiffs under Section 29 (4) of the Act.

  1. The details of the registration of the Plaintiffs’ trademark “M & M ” both as word mark and label mark in Class 12, 35 and 42 are set out in paragraph 6 hereinabove. “M & M” is the natural abbreviation/acronym of “Mahindra & Mahindra”. The Defendants have admitted this in their affidavits in reply and sur-

rejoinder. A perusal of Exhibits F-1 to F-34 at pages 54 to 90 of the Plaint which contains specimen news reports of the years 1969, 1972 and 1985 to 2011 shows/establishes that the said trademark “M & M” being a natural abbreviation of their well known mark “Mahindra and Mahindra”, is used by the Plaintiffs in the course of all their businesses/activities and the Plaintiffs are known and referredKPPNair 15 NMS 2191/2012 amongst the members of the trade and public and in the press and other media as “M & M” since at least 1969. Therefore, the popularity, goodwill and reputation of the marks Mahindra/Mahindra and Mahindra has become so immense amongst the members of the trade and public that the same has naturally flown into and is associated with the term/acronym of the Plaintiffs “M & M” in any field of business/activity. The Plaintiffs are therefore correct in their submission that the Plaintiff’s reputation in “Mahindra & Mahindra” attaches itself to the acronym/abbreviation ‘M & M’ which has acquired the character and quality of a distinctive trade mark itself, both in common law as also the statutory rights acquired by its registration as set out hereinabove. The benefit of the use and registration of the marks “Mahindra” and “Mahindra & Mahindra” enures to its natural abbreviation “M & M”. The Plaintiffs are also correct in submitting that the right of an abbreviation to have protection from infringement has been recognised by authors and courts the world over. J. Thomas McCarthy in his commentary “McCarthy on Trademarks and Unfair Competition”, 2000 Edition (fourth), Volume 1, at paragraph 7 : 18 sets out several court decisions where it has been indicated that, “where as a result of use by customers, the trade or by news media, an abbreviation has become identified in the public mind with a particular company, then that abbreviation is a protectable trademark, even if the company itself has not formally used the abbreviation as a trademark.” McCarthy goes on to state that “it is public use that will set the stage for confusion, which is the evil to be remedied in trademark cases”. In my view, therefore, the Plaintiffs have prima facie established their exclusive right in respect of the mark ”M & M” both under the Act by virtue of KPPNair 16 NMS 2191/2012 their registrations, and also under common law due to the extensive reputation therein acquired by them by long, extensive and continuous use thereof.

  1. The Defendants have contended that since the impugned mark “M & M” /”MNM” is registered by Defendant No. 2 since 2002 in few Classes viz. Classes, 3, 14, 16, 18, 24 and 25, such registrations are a defence under Section 30(2) (e) of the Act to the Plaintiffs’ case of infringement. It is further contended that the impugned mark is distinctive and hence is registered under classes 14, 16, 25, 24, 18 and 03. However, the Defendants do not have any registration in Classes 35 and 42 wherein their applications are pending, and have been opposed by the Plaintiffs. It is correctly submitted on behalf of the Plaintiff that in the impugned mark “M & M –

Look no Further” the words ”Look no Further” have been disclaimed and in any event are not distinctive, hence the Defendants’ mark is really ”M & M” only, hence there is no question of the impugned mark being considered as distinctive to the Defendants. Section 28 of the Act prescribes that, “the registration of a trade mark shall, if valid, give to the registered proprietor of the trademark the exclusive right to the use of the trademark in relation to the goods or services in respect of which the trademark is registered”. In view thereof, the Defendants do not have any statutory right in the impugned mark for services, which is the cause of action for the present case, as they have no registration for services in class 35 or 42 at all. Their statutory right is restricted to only those goods in respect of which their trademark is registered. Section 30 (2) (e) is to the same effect and the defence or protection available thereunder to the Defendants is restricted only to the right to use given by virtue of registration. Since the Defendants’ registrations are all in classes other than KPPNair 17 NMS 2191/2012 classes 35 and 42, the use by the Defendants of the impugned marks in respect of services falling in 35 and 42 is not a right conferred on the Defendants by their registrations and hence is not protected under Section 30 (2) (e) of the Act. In Balkrishna Hatcheries (supra), this Court has noted the distinction between goods and services, and marks registered for goods on the one hand and for services on the other. The Court has held that registration of a trademark in relation to goods cannot support the use of that mark in respect of services and vice versa. In the present case, the Defendants have registration of their mark in respect of goods only and not for services. Hence, their registrations cannot afford protection when their mark is used in respect of services. Therefore, an infringement suit does lie against the Defendants, as the Defendants’ registrations are not in respect of services in classes 35 and 42 and the registrations in respect of goods in other classes cannot be a defence to a suit based on the Plaintiffs registrations in classes 35 and 42.

  1. As regards the contention of the Defendant that the impugned mark was used by them since 2002 and is therefore protected by Section 34of the Act, two conditions need to be fulfilled to afford a valid defence thereunder to the Defendants. The Defendants’ use must be prior (a) to the use of the first mentioned trademark in relation to those goods or services by the proprietor or a predecessor in title of his; or (b) to the date of registration of the first-mentioned trademark in respect of those goods or services in the name of the proprietor or a predecessor in title of his; whichever is earlier. Both the above conditions are not satisfied by the Defendants. Further in the case of Kamat Hotels (India) Ltd. vs. Royal Orchids Hotels KPPNair18 NMS 2191/2012 Ltd. and another9 , this Court has analysed Section 34 of the Act and laid down the conditions to be satisfied to raise a defence of prior use of the trademark. On the facts of this case, the Plaintiffs’ use of their trade mark “M & M” is from 1969, as established by the material on record. The Plaintiffs’ registration of “M & M” in class 12 is of 1998 and in classes 35 and 42 is of 2006. The Defendants’ own application for impugned mark ”M & M look no further ” in Class 35 claims use from 1 st January 2002 and for the impugned mark ”MNM” claims use from 17 th March 2007. These applications are at Exhibit-B-7 page 37 and Exhibit-C pages 40 and 41 to the affidavit in reply of the Defendants. Thus, on the Defendants’ own showing, their use of ”M & M” from January 2002, is subsequent to the Plaintiffs’ use of ”M & M” from 1969. The Defendants’ use of ”MNM” is claimed in the Defendants’ own registration application to be from 17 th March, 2007. Again, this is subsequent both to the Plaintiffs’ use of ”M & M” from 1969 and the Plaintiffs’ registration from 2006 in classes 35 and 42. Therefore, neither condition of Section 34 is satisfied by the Defendants. Their contention under Section 34 therefore cannot be accepted.
  2. The submission of the Defendants that they are the honest concurrent user of the impugned mark also cannot be accepted. The Plaintiffs are in the business since last several decades and it is inconceivable that the Defendants were unaware of the said trademark of the Plaintiffs when they adopted the impugned mark. The Plaintiffs said trademark is a well known mark. Therefore, the long prior existence of the Plaintiffs’ said trademark ”M & M” is to the Defendants’ knowledge, and makes the Defendants a subsequent adopter of an identical and/or deceptively 9 2011 (47) PTC 111 (Bom.)KPPNair 19 NMS 2191/2012 similar impugned mark. The Defendants’ adoption cannot be said to be honest at all. It is also not concurrent, as the Plaintiffs’ use of their mark ”M & M” is from 1969. The Defendants have offered no valid justification for adopting the impugned mark, particularly the ”&” , other than to cash in on the Plaintiffs’ goodwill in the said trademark, ”M & M”. The Defendants therefore cannot be considered to be honest concurrent users in relation to their impugned mark.
  3. The Defendants have contended that the Plaintiffs are guilty of gross delay and acquiescence in filing the present Suit. The Defendants have also relied on various news articles wherein the impugned mark is being featured. The Plaintiffs have correctly contended that considering that the Plaintiffs’ said trade mark is prior in point of time vis-à-vis the impugned mark and the fact that the Plaintiffs said trademark is a well known mark, any subsequent use, howsoever big or small, cannot be a valid defence. The Plaintiffs’ timeline starts from the date of knowledge and as stated in paragraph 16 of the Plaint, the Plaintiffs became aware of the impugned mark only in or about January 2012 and the Plaintiffs have immediately taken action against the Defendants. The Plaintiffs, by placing reliance on the decision of this Court in Schering Corporation and others vs. Kilitch Co. (Pharma) Pvt.

Ltd. (supra) and the decision of the learned Single Judge of the Delhi High Court in Hindustan Pencils Pvt. Ltd. vs. India Stationery Products Co. (supra), have correctly submitted that it is settled law that delay in any event does not affect an interim injunction, particularly when the marks in question are structurally and visually similar and phonetically identical and that prima facie the adoption of the impugned KPPNair 20 NMS 2191/2012 mark was itself dishonest. Hence, this contention of the Defendants cannot be accepted and is rejected.

  1. The Defendants also contended that the Plaintiffs registration of the said trademark in class 35 is from 2008. This is incorrect. From the material placed on record it is clear that the Plaintiffs have registered their said trademark viz. M & M (logo) in the year 2006 and not in the year 2008. The logo is composite and contains the words ”M & M” also, which is an essential part of the registration and has to be taken into consideration for comparison of the rival marks. Moreover, the said trademark is registered in Class 12 way back in the year 1998. Exhibit-A at pages 37 to 39 of the Plaint is a list containing the details of applications/registrations of the marks ”MAHINDRA” (word per se and label), ”Mahindra and Mahindra” (word per se and label) and said trademark ” M & M” in various classes in India. The details set out therein have not been disputed by the Defendants.
  2. The Defendants have contended that the Plaintiffs’ registration in Class 35 is in respect of “advertising, business management, business administration, office functions” and that Class 35 does not include retail services. It is submitted on behalf of the Defendants that it is for this reason that the Plaintiffs covered their retail services in subsequent trademark applications filed in the year 2012 and 2013.

This submission of the Defendants also cannot be accepted. The Plaintiffs have pointed out that the Plaintiffs have filed for the Class 35 heading which includes ‘services in relation to retail trade’ as per the explanatory note of the Nice KPPNair 21 NMS 2191/2012 Classification. The International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), Ninth Edition, Part-1 with List of Goods and Services in Alphabetical Order in its explanatory note with respect to Class 35 categorically sets out as under:

” Explanatory note:

….. …..

This excluding Class includes, in particular:

the bringing together, for the benefit of others, of a variety of goods (the transport thereof), enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes”.

The Plaintiffs have also correctly relied on Rule 22 of the Trade Marks Rules, 2002, for this purpose which is reproduced hereunder:

“22. Classification of goods and services.-

(1) …. ….. ……. …..

(2) The goods and services specified in the Fourth Schedule only provide a means by which the general content of numbered international classes can be quickly identified. It corresponds to the major content of each class and are not intended to be exhaustive in accordance with the international classification of goods and services. For determining the classification of particular goods and services and for full disclosure of the contents of international classification, the applicant may refer to the alphabetical index of goods and services, if any, published by the Registrar under Section 8 or the current edition of the International Classification of Goods and Services for the purpose of registration of trademark published by the World Intellectual Property Organisation or KPPNair 22 NMS 2191/2012 subsequent edition as may be published.”

These clearly show that the Plaintiffs’ registration of 2006 covers retail services. The subsequent trademark applications made by the Plaintiffs and referred to by the Defendants are not related to the present case as those relate to entirely different marks viz. ”m&m Mahindra retail” and ”m&m Mahindra retail our little India coming together…”. Therefore, the Defendants’ contention that the Plaintiffs’ registration under class 35 does not cover retail trade/business is untenable. The Plaintiffs’ mark is registered in class 35 in respect of retail trade/business. In fact the Defendants who are contending to be using the impugned mark for shopping malls have not made a single application for ‘shopping malls’.

  1. The Division Bench of the Hon’ble Delhi High Court by its decision dated 8 th February, 2008 in the case of Larsen and Toubro Limited (supra), whilst allowing the appeal and restraining the Defendants/Respondents therein from using the trademark/names LNT/ELENTE or other deceptively similar name in relation to any of its products inter alia held that, ” ..Once the learned Single Judge came to the conclusion that the word ‘landt’ or ELENTE are associated with the plaintiff’s goods and have acquired a definite and distinct reputation amongst the buyers, there was no justification for allowing the defendant to make use of the said words or any word or words phonetically similar to them. This was especially so when the learned Single Judge had recorded a specific finding to the effect that the adoption of the abbreviation LNT by the defendant was not bona fide no matter the defendants name may be KPPNair 23 NMS 2191/2012 Lachmi Narain Trades and LNT/elente an abbreviated form thereof”. It was further held in the above case that, “Dissimilarity in some of the products in which the parties trade does not make any material difference insofar as the grant or refusal of injunction against the Defendants are concerned”.

Further, as per Section 29 (4) of the Act, “A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark”. Again as per Section 2 (1) (zg) of the Act, “well-known trade mark, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or service would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services”.

In the present case, as already stated hereinabove, the Defendants themselves have admitted at paragraph 22 at page 16 of the affidavit in reply and paragraph 8 of the affidavit in sur rejoinder that “M & M” is an abbreviation of Mahindra & Mahindra.

Therefore, in the aforesaid circumstances, the argument of the Defendants will also not hold good. The Hon’ble Supreme Court in Mahendra & Mahendra Paper Mills KPPNair 24 NMS 2191/2012 Ltd. vs. M and M Auto Industries Limited (supra) has observed that, ”Mahindra & Mahindra” is a well known trade mark and that the mark ”Mahindra & Mahindra ” has acquired secondary significance. Since ”M & M” which is only a natural abbreviation, has also been used since 1969, the reputation of Mahindra & Mahindra will enure to and attach to its natural abbreviation and the abbreviation itself in the normal course will be a well-known mark. Under Section 29 (4), the use of the impugned mark by the Defendants in respect of dissimilar goods or services also constitutes infringement of a well known trademark. Any use of the impugned mark by the Defendants in respect of any goods or services will constitute infringement of the Plaintiffs registered trademarks. There are no bona fides in the Defendants’ use of the impugned mark. Also, its use will certainly be detrimental to the distinctive character of the Plaintiffs’ registered trademark inasmuch as it will get diluted and its indiscriminate use will lead to its destruction.

  1. The Plaintiffs are also entitled to seek relief on the ground of passing off. As correctly submitted by the Plaintiffs, it is settled law that registration is no defence to an action for passing off. The Plaintiffs’ goodwill and reputation in their said trademark “M & M” is sufficiently established by the material produced on record.

The Plaintiffs’ use of “M & M” is long prior to that of the Defendants. Secondary significance has been acquired by the Plaintiffs’ said trademark. Therefore, any use of “M & M” by the Defendants will inevitably lead to an association of the Defendants’ goods and business with those of the Plaintiffs. Damage will result thereby to the Plaintiffs’ reputation.

KPPNair 25 NMS 2191/2012

  1. The Defendants contend that the said trademark ”M & M” is not used by the Plaintiffs. The Plaintiffs have produced material in the plaint showing use of the said trademark since 1969. The Plaintiffs are not only dealing in vehicles but also in retail trade and other services falling in class 35. Plaintiff No. 2 is the retail trade arm of the Mahindra Group which focuses on premium lifestyle and retail business stores selling, inter alia, apparels, toys and furnishings. Plaintiff No. 2 has been using the trademark ”MAHINDRA” and ”M & M” under the Name License Agreement dated 9th October, 2009, between Plaintiff No.1 and Plaintiff No.2. Plaintiff No.2 is itself doing retail business with retail stores, and has been incurring huge expenses in sales promotion and advertisements in relation to the retail services as mentioned at paragraph 13, page 9 of the Plaint. Plaintiff No. 2 has more than 75 stores across India and the sales turnover of Plaintiff No.2 runs into crores of rupees. In any event, the said trademark of the Plaintiffs being a well known trademark under Section 29(4) of the Act, the alleged difference in goods and services of the Plaintiffs and the Defendants is immaterial. Reliance placed by the Plaintiffs on the judgment of this Court in Mahindra & Mahindra Ltd. vs. M and M Auto Industries Ltd. (Notice of Motion No. 1078 of 2012 in Suit No. 867 of 2012) at paragraph 26, is apposite.
  2. The Defendants contended that the Plaintiffs have no presence in shopping malls, there is no commonality in the field of activity of the Plaintiffs and the Defendants and that there is vast difference between the nature of services of the Plaintiffs and the Defendants. Considering that the Defendants’ impugned mark is KPPNair 26 NMS 2191/2012 identical with/deceptively similar to the Plaintiffs’ registered said trademark and the impugned mark is used for similar services as that of the Plaintiffs, the presumption under Section 29(2) of the Act, that the same is likely to cause confusion or association with the registered trademark also applies here. Even otherwise, the Plaintiffs have made out a strong prima facie case. Therefore the Defendants’ contention that there cannot be any confusion as the impugned mark is used in relation to shopping malls, which is alleged to be different from the goods/services covered by the Plaintiffs’ said trademark and/or registration, cannot be accepted.
  3. The Defendants contended that the Plaintiffs have failed to establish dishonesty/unfair advantage by the Defendants. This is incorrect. Assuming that the Defendants wanted to coin a mark based on their promoters name, Manhar Manhar;

the Defendants could have adopted any other mark instead of M & M, for the adoption of which by them they have offered no valid explanation, particularly when they had knowledge of the Plaintiffs’ well known said trademark. Furthermore, the Defendants’ dishonest intentions are apparent from the fact that Defendant No. 1 was incorporated in 2004 with the corporate name as MNM Marketing Pvt. Ltd.

Assuming that there is no dishonesty on the part of the Defendants, still if confusion results or is likely to result on account of the rival marks, injunction ought to be granted. Reliance has been placed by the Plaintiffs on Laxmikant V. Patel vs. Chetanbhat Shah and another (supra) which states that dishonest intention is not necessary to be shown by the Plaintiffs.

 

  1. Further, Defendant No. 1 is using the said trademark as a part of its Company name viz. MNM Marketing Private Limited. The use of the impugned mark in the trading name/corporate name when the Defendants are using it for business/activity similar to that for which the Plaintiffs’ mark are registered, constitutes infringement and also, in any event, passing off. The Defendants also, cannot take recourse to Section 35of the Act as Section 35relating to the saving for use of name does not apply to artificial person like an incorporated company. This has been held by the Bombay High Court in Kirloskar Diesel Recon Pvt. Ltd. and another vs. Kirloskar Proprietary Ltd. and others10.
  2. The Plaintiffs have contended that the Defendants’ registration of the domain name viz. www.mandmstores.in (”impugned domain name”) is dishonest and mala fide. It is correctly submitted by the Plaintiffs that the domain name not only serves as an address for Internet communication, but also identifies the specific Internet site as the address of its owner and also has trademark value. The consumer would be misled into thinking that the defendants’ goods/services are those of the Plaintiffs and/or related to the Plaintiffs. The domain name serves the function of a trademark and is not a mere address and is therefore entitled to equal protection as a trademark. Use of the impugned domain name by the Defendants amounts to infringement of the Plaintiffs’ said trademark as also passing off. The reliance by the Plaintiffs on the Supreme Court judgment in Satyam Infoway Ltd. vs. Sifynet Solutions Pvt. Ltd.11 is apposite. The Defendants’ use and registration of the 10 AIR 1996 Bom. 149 at paragraph 17 11 (2004 (28) PTC 566 (SC) at paragraphs 11-15 and 23 KPPNair 28 NMS 2191/2012 impugned domain name containing the words ”M & M” cannot be permitted.
  3. The Defendants have relied on various orders/judgments without giving any reference to the point of law in support of which the said orders/judgments have been cited. However, the said orders/judgments are not of any assistance to the Defendants as they are not relevant to the present case and the same have been distinguished hereunder:

(i) Bhavesh Mohanlal Amin and another vs. Nirma Chemicals Works and another 12:

The said judgment is in relation to use of rival marks with respect to unrelated goods. The present Suit is in relation to rival marks with respect to related services and hence the said judgment is not applicable to the present case.

(ii) Sterling’s Mac Fast Food vs. McDonald’s Corporation, U.S.A. Anr .13: The said judgment is not applicable in the present case as it is in relation to completely different facts and point of law as compared to the present case. The judgment is based on delay and acquiescence and such pleas have not been raised at any time by the Defendants in their pleadings or arguments, nor have the Defendants produced any evidence in respect of the same. Moreover, the said judgment would not hold good in light of the decision of this Court in Schering Corporation and others vs. Kilitch Co. (Pharma) Pvt. Ltd. (supra) and the decision of the learned Single Judge of the Delhi High Court in Hindustan Pencils Pvt. Ltd. vs. India Stationery Products 12 2006 (1) SCC 185 13 ILR 2004 KAR 2893: 2004 (4) KarLJ 612KPPNair 29 NMS 2191/2012 Co. (supra) relied upon by the Plaintiffs, wherein it is held that delay in any event does not affect the grant of an injunction.

(iii) Raymond Limited vs. Raymond Pharmaceuticals Pvt. Ltd. 14: The said judgment is not applicable in the present case as it is in relation to the use of a trademark only as a Corporate name and thus in relation to Section 29 (5) of the Act, whereas, in the present case, the Defendants have used the trademark also as a mark in relation to services in addition to its use as a corporate name. The present suit thus attracts inter alia Section 29 (1),(2) and (4) of the Act.

(iv) Goenka Institute of Education & Research vs. Anjani Kumar Goenka and others 15:

The said judgment relates to Section 12, prior use and Section 34 of the Act. As enunciated hereinabove, Section 12 is not applicable as there is no honest concurrent use of the impugned mark by the Defendants. The Defendants’ alleged user of the impugned mark is admittedly subsequent to the Plaintiffs and in any event, the Defendants’ adoption of the impugned mark is dishonest. Also, as stated hereinabove, the Defendants have not satisfied the conditions of Section 34 of the Act. In fact, paragraphs 17 and 19 of the said judgment strengthen the case of the Plaintiffs.

  1. In view of the aforestated circumstances, the Defendants are guilty of infringing the Plaintiffs’ said trade mark “M & M” and are also guilty of the acts of 14 2010 (44) PTC 25 (Bom.) (DB) 15 FAO (OS) No. 118/2009 Delhi High Court decided on 29th May, 2009 KPPNair 30 NMS 2191/2012 passing off. It is also the settled position in law that on consideration of balance of convenience and irreparable injury, relief ought to be granted to the Plaintiffs.
  2. Hence, the following Order is passed:

(a) that pending the hearing and final disposal of the Suit, the Defendants by themselves, their directors, servants, agents, franchisees, dealers, distributors and all other persons claiming under them are hereby restrained by a temporary order and injunction of this Court from infringing the Plaintiffs’ said trademark “M & M” bearing Registration Nos. 1460262, 1460269, 1460926, 1460933, 1725068 and 1722794 in any manner and/or from using the impugned marks “M & M”/ “MNM” or any word or mark identical with or deceptively similar to the registered trademark “M & M” in connection with services falling in Classes 35 and 42 for which the said Trade Marks of the Plaintiffs are registered or any services similar thereto and other materials related to services falling in classes 35 and 42 or as a part of their trade name and/or on their website and as a part of their domain name or in any other manner from advertising or dealing in or rendering any services under the Plaintiffs’ registered trademark or any other mark which is identical with or deceptively similar to the Plaintiffs’ registered trademark so as to infringe the Plaintiffs’ registered trademark.

(b) that pending the hearing and final disposal of the Suit, the Defendants by themselves, their directors, servants, agents, franchisees, dealers, distributors and all other persons claiming under them are hereby restrained by a temporary order and KPPNair 31 NMS 2191/2012 injunction of this Court from passing off any goods and/or services of the Defendants as those of the Plaintiffs by using the impugned mark “M & M”/ “MNM” or any mark identical with or deceptively similar to the Plaintiff’s registered trademark “M & M” in connection with their company names and/or on their website and/or in respect of any goods and/or services and/or the impugned domain name or any other domain name containing the Plaintiffs’ said trademark or any other mark similar to the Plaintiffs’ registered trademark or in any manner from manufacturing, marketing or offering for sale, advertising or dealing in any products or rendering any services under the Plaintiffs’ said trademark or any other mark which is similar to the Plaintiffs’ said trademark so as to pass off or enable others to pass-off the Defendants’ goods or services as being those of or as associated with or emanating from the Plaintiffs;

(c) that pending the hearing and final disposal of the Suit, the Defendants by themselves, their directors, servants, agents, franchisees, dealers, distributors and all other persons claiming under them are hereby restrained from using in any manner the impugned domain name www.mandmstores.in or containing the word/s “mandm” or “m&m” or any domain name deceptively similar to the Plaintiffs’ registered trademark “M & M”;

(d) The Defendant No. 1 is granted 4 weeks time to delete ‘MNM’ from its corporate name; the rest of the order is made operative forthwith; and

(e) Costs to be costs in the cause.

  1. The above Notice of Motion is accordingly disposed of.

(S.J. KATHAWALLA, J.)

 

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