Delhi High Court: In a case filed by a US based company for protection of its mark ‘JOHN DEERE’ and ‘TORQ-GARD’, the Single Judge Bench of Prathiba M. Singh, J. held that the defendants are refrained from using the mark ‘JOHN DEERE’, ‘leaping deer’ logo, mark ‘TORQ-GARD’ and awarded actual costs of Rs. 9,28,978 in favour of the US based company.
Background
Plaintiffs were involved in the business of manufacturing and selling of Agricultural Equipment, Commercial and Consumer Equipment, Turf Construction and Forestry and Finance and dealt in various other products of consumers such as Engines and Drive Train Components, Electronic Solutions, Government and Military Sales, Rental Sales, Parts, and Services (Coolants, Lubricants, Engine Oil, Transmission Oil and Greases), Lubrication Equipment Accessories, Engine Parts, and Support Services.
The present suit was filed to protect the mark ‘JOHN DEERE’ which was adopted in 1837 along with the ‘leaping deer’ logo. Plaintiffs operated through domain names www.deere.com, www.johndeereclassic.com and www.deere.co.in. The mark ‘TORQ-GARD’ was used by plaintiffs for engine oil internationally since 1969 and in India since 2012. Plaintiffs claimed to have taken various actions to protect their rights in these marks including in, Deere and Co. v. S. Harcharan Singh, 2015 SCC OnLine Del 14637, where the mark ‘JOHN DEERE’, including its colour and the logo had been held to be well-known marks under Section 2(1)(zg) of the Trade Marks Act, 1999 (Act).
Submissions on behalf of the Plaintiffs
Plaintiffs were aggrieved by the sale of products using the plaintiffs’ marks by the defendants, both through physical sales and through e-commerce, on platforms like ‘India Mart’. Further, plaintiffs submitted that the investigations revealed that the defendants were using the marks ‘TORQ-GARD’ and ‘JOHN DEERE’ with the ‘leaping deer’ logo and the products procured from the defendants had identical mark, logo, colour combination as that of the plaintiffs. During the investigation, samples of the defendant’s products were tested and as per the test report, the quality of the defendant’s products was found to be inferior to the plaintiffs’ products.
Analysis, Law, and Decision
On 8-10-2021, this Court passed an order in Deere and Co. v. Jitender Kumar Gaur, CS (COMM) 498 of 2021, wherein the plaintiff was granted ex-parte interim injunction against the defendants. The Court opined that from the report placed on record, it was clear that the products found with the defendants were not manufactured by them and clearly appeared to be counterfeited products. Further, the Court opined that the nature of engine oil was such that the safety and security of the customers who used this product, was a matter of concern for this Court.
The Court held that the defendants were not permitted to sell the counterfeited products using the mark ‘JOHN DEERE’, ‘leaping deer’ logo, mark ‘TORQ-GARD’ and/or plaintiffs’ trade dress, either physically or through online mode. Further, the Court awarded actual costs of Rs. 9,28,978 in favour of the plaintiffs.
[Deere and Company v. Jitender Kumar Gaur, 2022 SCC OnLine Del 4073, decided 23-11-2022]
Advocates who appeared in this case :
For the Plaintiff(s): Advocate Pravin Anand;
Advocate Karan Kamra;
Advocate Vaishali Mittal;
For the Defendant(s): Advocate Vijay Kasana.