Plaintiffs cannot seek a restraint against Defendants from using their registered trademark ‘MINDA UTO’ for Plaintiffs do not have registration for said goods under Class 04 while Defendants do. In view of Section 31 of The Trade Marks Act, 1999 registration of the trademark is prima facie evidence of its validity in favor of Defendants.
A suit for passing off would lie against Defendants despite registration of their trademark [S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683]. The use of a mark confers rights on account of generation of goodwill and a third party cannot encash upon goodwill and reputation [Toyota Jidosha Kabushiki Kaisha v. M/s. Prius Auto Industries Ltd., (2018) 2 SCC 1].
Having prima facie established formidable reputation and goodwill, Plaintiffs would require to show, two competing marks are either identical or deceptively similar. Greaves Cotton Limited v. Mr. Mohammad Rafi, 2011 SCC OnLine Del 2596 and Prem Ratan Rathi v. Ashish Iron Trading Co., 2013 SCC OnLine Del 3649 are closest in facts.
‘MINDA’ forms an essential part of Plaintiffs’ trademarks and Defendants prima facie cannot claim any right to use ‘MINDA’ with or without suffixes or prefixes, as it is likely to cause confusion amongst purchasers. Defendants explained, ‘MINDA’ is where forefathers of Defendants lived in Rajasthan. There is no material on record to substantiate same. It is implausible, far-fetched and wholly unconvincing. It is interesting to note, registration of Defendants in Class 04 is ‘MINDAUTO’, i.e., as a single word. The intent behind ‘MINDA UTO’ is perhaps with a view to lay more emphasis on ‘MINDA’.
In present case, offending goods are allied and cognate to goods of Plaintiffs sold under trademark ‘UNO MINDA’. It is a matter of common knowledge, automobile spare parts, lubricants and grease are sold from same shops and therefore, trade channels are identical.
Plaintiffs have made out a prima facie case of passing off against Defendants.
– Hon’ble Justice Jyoti Singh of Hon’ble High Court of Delhi, Minda Spectrum Advisory Limited v. Minda Oils India Pvt. Ltd., [CS(COMM) 51/2022] decided on 20.09.2022.
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