Introduction

Indian laws provide significant protection to well-known trademarks. This protection extends to cases where similar marks are deceptively adopted by other parties with malafide intentions. The case of Crompton Greaves reaffirms the principle that a well-known trademark, when already registered and in prior use, cannot be diluted by other applicants, especially in cases of malafide intentions and likelihood to cause confusion.

Legal Provisions in India

Section 47 of the Trade Marks Act, 1999 addresses the removal of a registered trademark from the register and imposes limitations on the user due to non-use of the mark. It also allows the authorities to remove any mark registered without a bona fide intention or if there has been no bona fide use of the mark.

Section 57 of the Trade Marks Act, 1999, deals with the grounds for rectification of the register. The aggrieved party can file an application for rectification or cancellation of a trademark on the grounds of non-use of the trademark.

Summary of the Case

The petition, Crompton Greaves Consumer Electricals Limited, is a publicly listed company involved in the manufacturing and marketing of consumer electrical goods. It has been using its registered mark “CROMPTON GREAVES” in Class 21 since 1943. The mark is a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999.

The petitioner has filed a rectification application under Section 57 of the Act, seeking the removal of the impugned mark “CROMPTON” registered in the Respondent's name in the same class. The impugned application was filed in 1986, when the petitioner already had a valid registration in the same class. The application was initially filed before the Intellectual Property Appellate Board (IPAB) and was transferred to the Delhi High Court after the abolition of IPAB.

Despite the service, no reply or appearance was made on behalf of the respondents, which resulted in the unrebuttal of the petitioner’s claim.

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Petitioner’s Submissions

The petitioner submitted that the mark “CROMPTON” is identical and deceptively similar to the well-known mark “CROMPTON GREAVES.” Moreover, the petitioner is a prior user and owner of the registered mark and has gained goodwill in the same class. The respondent's adoption of the mark is malafide ab initio, as “CROMPTON GREAVES” was already registered under multiple classes.

Further, he referred to a case mentioning that the respondent's failure to rebut makes the mark liable for removal under Section 47(1)(a) and (b) of the Trade Marks Act, 1999, marking contentions for the wrongful entry of the impugned mark.

Court’s Analysis and Judgment

The Court noted the respondent's lack of response and accepted the petitioner’s averments as true. The respondent’s silence casts a serious shadow of doubt upon his intention other than to gain undue benefits.

Additionally, the existence of the impugned mark will lead to confusion and deception, creating a false association of the respondent with the petitioner. The presence of the impugned mark will cause consumer deception and dilution of the reputed mark. The Court accepted that “CROMPTON GREAVES” is a well-known trademark as a prior user and registered proprietor since 1943.

Hence, the Court accepted that registration of the impugned mark contradicts the provisions of Sections 11(1) and (2) of the Act and thus is liable to be cancelled by the Register of Trade Marks. Thus, allowing the petition and directing the removal of the impugned mark.

Conclusion

The Delhi High Court’s decision in this case highlighted that well-known trademarks and prior users must be safeguarded from dilution and malicious use. The court ordered the removal of infringing mark mentioning the consequences of malafide intentions and non-response in a case.

Author: Bhavpreet Singh Soni

Co-author: Shabadpreet Kaur