Madras High Court: In a civil suit filed under Order IV Rule 1 of O.S. Rules and Order VII Rule 1 of Code of Civil Procedure, 1908 (‘CPC’) read with Sections 27, 29, 134 and 135 of the Trade marks Act, 1999, (‘ Act, 1999’) and first proviso to Section 7 of the Commercial Courts Act, 2015, praying to grant permanent injunction restraining the defendant, from infringing the registered trademark ‘Royal Enfield’ by the use of an identical mark or any other mark identical or deceptively similar in respect of any goods or services, and for damages , Abdul Quddhose, J. while granting permanent injunction to the plaintiff, held that ‘Royal Enfield’ is a well-known trade mark insofar motorcycle industry is concerned as per the provisions of Section 2(1)(zg) read with Section 11 of the Trade Marks Act, 1999. Consequently, it directed the Registrar to notify the said mark on the register of well-known marks.
Background:
The Plaintiff stated that since the year 1955, the Plaintiff has been continuously, extensively and widely manufacturing and marketing their motorcycles in India under the distinctive trademark Royal Enfield. All Plaintiff’s products bear the house mark Royal Enfield and are sold across India and the globe. Their motorcycles are sold under several well-known brands.
The plaintiff came to know in the month of January 2023, through its authorized dealer that the defendant is using the identical name ‘Royal Enfield’ for its service center. The service center established by the defendant is situated just 4.7 km. away from the authorized showroom of the plaintiff. Therefore, since the showroom established by the defendant is creating deception and confusion in the minds of the public, the plaintiff was constrained to file this suit.
Issue and Analysis:
Whether the plaintiff has proprietary right over the trademark ‘Royal Enfield’?
The Court took note of list of registrations for the mark ‘Royal Enfield’ and its variations obtained by the plaintiff, and said that apart from adopting a unique trademark , the plaintiff has a standard pattern for interiors and exteriors for each and every authorized outlet so as to have the same look and feel/identity for all its outlets to enable its customers to easily identify the plaintiff’s authorized outlets. The authorized outlets are distinctive and are exclusively identified by the trade and public with the plaintiff’s establishments for motorcycles, parts, fittings, etc. Therefore, it was held that the plaintiff has proprietary right over the trademark ‘Royal Enfield’ and its variants.
Whether the plaintiff’s trademark falls within the definition of well-known mark within the meaning of Section 2(1)(zg) of the Trade Marks Act?
After analysing Sections 11(6) and 2(1)(zg) of the Act, 1999 and the Trade Marks Rules, 2017, pertaining to grant of recognition by the trademark registry for a trademark to be recognized as a well-known mark, the Court was convinced that concurrent powers are vested with both this Court as well as the Trade Marks Registry for granting recognition to a trademark as a well-known mark. Further, as per Rule 124 of the Trade Marks Rules of 2017, which empowers the trade mark registry to grant recognition of a trade mark as a well-known mark, also provides that once the Court passes an order recognizing a trade mark as a well-known mark, trade mark registry will have to give due consideration to the said recognition, while adjudicating as to whether the applicant is entitled to be granted the recognition of its trade mark as a well-known mark.
The Court while taking note of the 10 factors which needs to be considered for adjudicating whether a trade mark is a well-known mark or not, said that the trade mark ‘Royal Enfield’ has satisfied all the tests required for granting recognition as a well-known mark. In respect of the motorcycle industry, the trade mark ‘Royal Enfield’ is well-known, not only in India, but also in abroad. Their annual reports also prove that their turnover runs into several hundreds of crores of rupees and they have carved a niche for themselves in the motorcycle industry.
The Court said that defendant’s mark is synonymous to the plaintiff, therefore the plaintiff is entitled to the highest level of protection as the public at large associate the name ‘Royal Enfield’ only with the plaintiff. Therefore, the plaintiff’s trade mark falls within the definition of well-known mark within the meaning of Section 2(1)(zg) of the Act and deserves protection.
Whether the use of the word ‘Royal Enfield’ by the defendant would amount to infringing and passing off the plaintiff’s trade mark?
After taking note of defendant’s outlet, the Court said that the defendant has not only blatantly copied the essential features of the plaintiff’s authorized outlets, but has also unauthorizedly used the plaintiff’s registered trade mark ‘Royal Enfield’ to market its service center. Further, it noted that the exterior of the plaintiff’s outlets has Royal Enfield written in red lettering on a dark grey background with golden yellow lines on either side; and the frontage of the outlet consists of a deceptively similar glass paneling as that of the plaintiff’s outlet. Therefore, the defendant selling its products by using such a deceptively similar/identical trade mark and thereby creating confusion and deception in the minds of the public, would amount to infringement of the plaintiff’s registered trademark ‘Royal Enfield’.
Therefore, the Court granted permanent injunction to the plaintiff , as the defendant has not only infringed the plaintiff’s trade mark, but also committed an act of passing off on account of the fact that the public will be deceived as they will be under the impression that ‘Royal Enfield’ is also an outlet run by the plaintiff, which, in reality, is not true.
[Eicher Motors Ltd v Nitin Service Point and Automobiles, 2023 SCC OnLine Mad 7565, decided on 22-11-2023]
Advocates who appeared in this case :
For Plaintiff: Senior Counsel Vijay Narayanan
Buy Trade Marks Act, 1999 HERE
