INTRODUCTION

Trademark Registration is one of the most essential requirements for any start-up or company or any brand to exclude others from using the similar or identical name, figure, symbol, colour or any other form of written representation etc. in order to avoid any infringement or violation of TM by a dishonest user or claimant. Now in this scenario there can be two possible aspects: one is that the TM is a registered trademark and the other one is that the trademark is a well-known TM (and it does not matter whether the TM is registered or not).

A well-known trademark according to Section 11(2) of the Trademarks Act, 1999, is the one which has a significant reputation and goodwill amongst a larger section of public or consumers both nationally as well as internationally. Hence, usage of such a well-known TM has the capacity to cause unfair advantage to the infringer and unfair loss to the well-known trademark holder. The present case of Suzuki Motors V. Suzuki India Ltd. is one such landmark instance wherein the impugned TM is a well-known trademark that has been registered trans-nationally by plaintiff in class 7 and 12 of goods and is also claimed by defendant but in another class of goods.

FACTS OF THE CASE

Suzuki Motor (Plaintiff) is one of the most renowned and International automobile company that originated from Japan. The plaintiff also registered its TM both nationally and internationally based on its good repute and goodwill. During 1982, Indian Automobile Market graciously introduced the Japanese company for Indian consumers with a joint venture entered between the plaintiff, Government of India and Maruti Udyog Limited, but on its arrival in India the company realized that there is an Indian company with the similar trade name i.e. Suzuki India Ltd. (Defendant) and is using its TM without due permission.

Although the defendant claimed that the use of such a TM is an honest and concurrent usage under Section 12 of the Trademarks Act, 1999. In order to defend the same TM, the plaintiff filed an injunction suit in the Delhi HC for restraining the defendants from dishonestly using and benefitting from the same TM.

ISSUE

The main issue that lies before the Delhi high Court are:

• Whether the defendant is an honest and a concurrent user of the impugned TM?
• Whether the defendant should be allowed to use the same TM, as it is for a different class of goods in comparison to plaintiff’s class of goods?

SUBMISSIONS & ARGUMENTS

PLAINTIFF:

• Plaintiff has used the term SUZUKI since the beginning of the company’s business in the automobile sector i.e. 1909 and since then the trade name has been the most extravagant feature of the company’s corporate name and style of business.
• Since the commencement of the plaintiff company’s business in the market, the consumers have always known the company for its long-standing reputation and brand value that can be well-associated with its trade name i.e. SUZUKI.
• The trade name has absolutely no connection with India and its people as the term SUZUKI is a native Japanese surname, which is why there is no reason for the defendant to use such a trade name. The TM has been registered in about 169 countries around the globe including India.
• When the company commenced its business in India through the joint venture in 1982, the entire joint venture was tremendously advertised and informed all over India through various news reports and news articles.
• This news ought to have been known by the defendants before starting their business and using such a trade name, as this is directly ruining the long-standing reputation of the plaintiff as well as misleading the consumers to believe that both plaintiff and defendant are business-wise associated.
• This is the main reason as to why the plaintiff claims that the usage of such a TM by the defendant is dishonest and malicious because the plaintiff had informed the same through print media, well before time.

DEFENDANT:

• The defendant claimed that they have been using this trade name since the commencement of their business in 1982, and have been an honest and a concurrent user who were unaware of any other company that has the same trademark, which is a well-known TM.
• Since 1982, they have earned tremendous goodwill and established their stature in the Indian market. The defendant claimed that the plaintiff has filed the injunction suit or the trademark suit after 25 years that should be strictly construed as unawareness and acquiescence on part of the plaintiff as per the Trademarks Act, 1999.
• The class of goods that the defendant is dealing with is totally different from the class of goods that the plaintiff is dealing. Hence, there is no dishonest trademark infringement by the defendant, as the class of goods are absolutely distinct from each other.
• The defendant also contended that the trade name SUZUKI, although is a Japanese term but is currently being used by many other corporate companies in India, also the trade name has been adopted by his father on his friend’s name.
• Due to all these reasons the plaintiff cannot claim monopoly over this term which is so commonly used many corporate in India.

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DECISION OF THE CASE

• The Court primarily observed that as per Order VIII Rule 5 of CPC, there has been absolutely no denial by the defendant in his written statement, as against the averments claimed by the plaintiff. Due to which the same averments are considered to be accepted by the defendant.
• The Court also stated that the plaintiff is the rightful owner of the well-known Trademark and the defendant has no reliable contention or justification that can prove as to why they chose such a well-known trade name. Hence, such act of the defendant has tarnished the reputation of the plaintiff and also wrongfully associated them with the defendant.
• The defendant should have known that such a trademark is well-known, well-advertised and also registered globally as well as in India, before using and claiming such a trade name.
• The delay in filing a suit by the plaintiff cannot amount to acquiescence because there has been an infringement and harm towards the reputation of the plaintiff by the defendant as to which it is immaterial whether there has been a delay or not.
• The Court also explicitly stated that even if both plaintiff and the defendant deal in different class of goods, it does not imply that the defendant can use such a well-known and internationally registered trademark dishonestly and en cash upon its goodwill. And also stated that the defendant is a “dishonest litigator” and has maliciously used the impugned trademark.
• Hence, the Court made it abundantly clear that even if the usage by the defendant is honest and concurrent in nature, then also he cannot use such a well-known TM.

CONCLUSION

The Court has passed a Judgment that is occupied with reason, logic as well as necessary details as to why one cannot claim usage of a well-known trademark, even if it is for a different class of goods and has been in an honest and concurrent usage. The Court has passed the judgment in favour of the plaintiff as they have this TM both registered as well as they have built their entire reputation based on this TM in the eyes of public. Hence, the defendant although is a concurrent user of this TM since 1982 but is not an honest one as he should have known that such a TM exists globally and has also entered the Indian Market.

BY- SRISHTI AGARWAL