Bombay High Court declares ‘ATOMBERG’ as a well known trademark in India

bombay high court

Bombay High Court: A suit was filed by the plaintiff seeking a permanent injunction restraining the Defendants from infringing the Plaintiff’s registered trademarks, copyright, passing off, and other reliefs. R I Chagla, J. declared the Plaintiff’s ATOMBERG trademark as a ‘well-known’ trademark in India as defined in Section 2(1)(zg) of the Trade Marks Act, 1999.

The Plaintiff also sought a decree of declaration that the plaintiff’s trademark ATOMBERG is a well-known trademark in India. An ex parte interim order dated 31-10-2023 was passed against the Defendants. As per the plaintiff, the Plaintiff is a company engaged in manufacturing marketing and selling a wide variety of home appliances, such as ceiling fans, pedestal fans, wall fans, exhaust fans, mixer grinders, smart door locks, and accessories thereof, such as fan remote, fan motor, fan canopy, fan blades, etc. and has been carrying on business in respect of the same under the trade mark/trade name ATOMBERG since the year 2012. The Plaintiff’s said trademark/ name ATOMBERG has two components, i.e., ATOM and BERG. “Atom” is the smallest unit of a matter, and “Berg” comes from iceberg, which is at times bigger than mountains.

The Plaintiff’s trading name and style also contains the said trademark ATOMBERG as its leading, essential and prominent part/feature. The said trademark ATOMBERG is prominently displayed / depicted / used on all its products, packaging’s, brochures, etc. The recognition, reputation and goodwill of the Plaintiff’s said well-known trademark ATOMBERG is associated with the Plaintiff across all classes of goods and services. The Plaintiff’s said trademark ATOMBERG has come to enjoy a personality that is beyond the mere products/services sold / rendered under the said trademark ATOMBERG.

The Court noted that the Plaintiff’s trademark ATOMBERG has garnered a significant and enduring reputation and goodwill throughout India. Further, Plaintiff has diligently safeguarded its rights in the ATOMBERG trademark by initiating appropriate actions including obtaining restraining orders from the Bombay High Court and Delhi High Court. It is a settled principle of law that a trademark is capable of being protected if either it is inherently distinctive or has acquired distinctiveness. In this spectrum of distinctiveness, the first category of marks is arbitrary, fanciful, coined or invented marks, which are of absolute distinctiveness.

The Court further noted that the trademark ATOMBERG is a coined trademark, the same is inherently distinctive and therefore, deserves the highest degree of protection. The material also shows that the Plaintiff’s trademark ATOMBERG has acquired an immense and long-standing reputation and goodwill throughout India. There can be no doubt that the trademark ATOMBERG is associated with the Plaintiff and no one else. The trademark ATOMBERG has surpassed the scope of merely encompassing products/services sold or rendered under the said trademark. The recognition, reputation, and goodwill of the Plaintiff’s well-known trademark ATOMBERG, now extends beyond any specific class of goods or services, encompassing all classes.

The Court concluded that the Plaintiff’s ATOMBERG trademark satisfies the criteria and tests of a well-known trademark as stipulated in Sections 11(6), 11(7), and other provisions of the Trade Marks Act, 1999. Thus, the Plaintiff’s ATOMBERG trade mark qualifies as a ‘well-known’ trade mark in India, as defined in Section 2(1) (zg) of the Trade Marks Act, 1999.

[Atomberg Technologies Private Limited v Jogaram Sirvi, 2023 SCC OnLine Bom 2665, decided on 14-12-2023]

Advocates who appeared in this case :

Mr. Hiren Kamod a/w Mr. Vaibhav Keni, Ms. Neha Iyer, Mr. Rohan Lopes i/by Legasis Partners for the Plaintiff.

Mr. Rajesh S. Upadhyaya i/by RSU Legal for the Defendants.

Ms. Charushila M. Vaidya, 2nd Asstt. to Court Receiver.

Buy Trade Marks Act, 1999   HERE

trade marks act, 1999

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