In Mahashian Di Hatti Ltd (Plaintiff) v Raj Niwas, Proprietor of MHS Masalay (Defendant), the Plaintiff claimed that the defendant's use of the logo "MHS" was done with the sole intention of passing off their goods as those of the Plaintiff's, who sold their products under the "MDH" mark, which amounted to not only infringement of its registered trademark but also passing off the goods.
Both the Plaintiff and the Defendant conduct businesses of production and sale of spices and condiments. The Plaintiff's trademark consists of three identical hexagons placed beside each other, each containing one of the letters 'MDH'. The back ground for such hexagons is red and the letters have been typed in white, with a white border around the hexagons. The Defendant's mark differs from the Plaintiff's in that, the hexagon instead of the letters "MDH" contains the letters "MHS" and in all other aspects it is similar. The Plaintiff came to know of such use by the Defendant through the newspaper "Vyapar Kesar" dated 26th December, 2008.
The Defendant, in their written statement, contested the suit on the following grounds:
i) The suit was not maintainable as there had been no objection from the Plaintiff with regard to the Defendant's application for registration of its mark.
ii) There was no similarity between "MDH" And "MHS" on phonetic grounds and also that the letters MHS denoted the names of family members.
iii) The Defendant used a pretty girl for advertising its products as opposed to the Plaintiff who use Mr. Mahasey (the proprietor of the Plaintiff company) himself.
However, the abovementioned written statement was rejected for non-payment of costs.
By way of ex-parte evidence, the Plaintiff submitted an affidavit which stated, amongst others the following :
That the "MDH" logo was adopted by the Plaintiff company in the year 1949 on an international level and has been used for selling spices and condiments under various titles ever since.
That the said logo has been advertised extensively in newspapers as well as televisions and has thus become a household name not only in India but also in Dubai, United Kingdom, USA, European countries and Pakistan.
The Court opined that it is a well settled principle of law that to constitute infringement the impugned trademark need not be absolutely identical to the registered trademark. It would be sufficient for the Plaintiff to show that the infringing mark resembles his mark to such an extent that it is likely to cause confusion and the impugned trademark is used in relation to goods in respect of which the Plaintiff has obtained registration. The Court further said that no person can be allowed to sell goods either using the mark of another person or its imitation, so as to cause injury to that person and thereby enrich himself at the cost of a person who has spent considerable time, effort and money in building the brand reputation, which no amount of promotion or advertising can create unless the quality of the goods being sold under that brand is also found to be good and acceptable to the consumer. Further, in case of infringement of a registered trademark, the plaintiff does not need to prove anything more than the use of its registered mark by the defendant. In such an event the defendant would be liable for infringement even if they can show that due to use of other words used in conjunction with the registered mark/word of the Plaintiff or on account of packaging, get up and the manner of writing trademark on the packaging, there would be no possibility of deception or confusion in the mind of the consumer.
The Court noted that although the defendant's mark was not similar to the Plaintiff's mark on phonetic grounds, however, the visual similarities between the two was strong enough to not permit the defendant from using the logo being presently used by him. It was further noted that both the parties were engaged in similar businesses. The Court thus stated that the adoption and use of the letters "MHS" in the manner as adopted by the defendant was done so with the intention of confusing the consumer and to encash upon the Plaintiff's goodwill.
The Court also took into consideration, the interest of the consumer and stated that a well-established brand such as "MDH" should not be allowed to be used by another person in a deceptive manner. The Plaintiff's mark could suffer by way of its brand value diminishing, if the quality of the defendant's product is inferior to that of the Plaintiffs. The Court said that the manner in which the defendant had used the Plaintiffs mark in the present case constituted not only infringement but also passing off.
Thus, in the light of the above reasons, the Court restrained the Defendant from manufacturing, selling or marketing any spices or condiments under the logo "MHS" or any other trademark which is identical or deceptively similar to the Plaintiff's registered trademark "MDH".
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