India: Appeal Opposing Injunction On MICO Fails

Last Updated: 2 December 2008

Dealing with an appeal challenging the order of a Single Judge granting an interim injunction is the case of Micolube India Ltd. v. Maggon Auto Centre 2008 (38)PTC 271 (Del.)(DB). Dealing with the trademark 'MICO', the injunction of the use of the mark until the final disposal of the suit was brought into challenge. It was also concluded therein that Micolube India had concealed and suppressed material facts and further that the ingredients of passing off as per settled principles were prima facie not established.

Motor Industries Co. Limited (the co-defendant), a company incorporated under the Companies Act, 1913 had adopted MICO (an acronym of its corporate name) and for nearly 60 years had been using MICO as its distinctive trade mark in respect of all the products manufactured and marketed by them. Engaged in the business of diverse automotive products including spark plugs, fuel injection equipment, hydraulic and pneumatic equipment, car audio systems and security systems they have been the front runners in the market since their inception. Their annual turnover for the year ended December 31, 2006 amounted to Rs.3,783 Crores with about 11,000 personnel including an R&D team of 300 highly qualified engineers and technicians. Being a subsidiary of Robert Bosch BmBll, world leader in automotive parts, they had established presence in terms of set up of infrastructure and manufacturing units in India and have used MICO as a distinctive trademark in India, having been put to use since the 1950s acquiring nationwide reputation and goodwill especially in relation to automotive products. MICO is registered in a number of classes and in different countries being valid and subsisting and have succeeded at contests regarding the same in the past. They claim the mark to be a "well-known mark" amongst the general public and automotive trade circles as under S. 2 (1)(zg) of the Trade Marks Act, 1999.They also produced accounts relating to expenditure on advertising for the last five years. While the suit was initially pressed for injunction on the ground of infringement, on the disclosure that MICO was a registered Trade Mark for the same class of goods, Micolube pressed its case for injunction on the ground of passing off.

Micolube contended that the said mark was being used for lubricants and petroleum products since 1960 however no facts and figures were rendered to indicate the extent of its presence in the market. There was found no material on record to show that the consumers were being misled into believing that the products of Motor Industries were those of Micolube, with no material on record to indicate that the use of the mark in the field of lubricants was calculated to injure the business or goodwill of Micolube.

The Court paying due attention to the arguments advanced and evidences rendered, found that the usage of the said mark for other automotive products by Motor Industries was prior to that Microlube and that the goods of the two are closely related goods and there cannot be a dispute as to this issue because they have identical trading channels and the same class of consumers. The Court noted that by adopting an identical mark, the Micolube had tried to pre-empt the legitimate expansion of the business of Motor Industries under its trade mark to lubricants and petroleum products, which they were legally entitled to on the strength of its existing extensive prior use of the word MICO for spark plugs.

The Court agreeing with the view taken by the single Judge states that when the trademark MICO is employed prospective customers would link it with Motor Industries rather than Micolube owing to its overwhelming market share. Taking into account the prior use rendition of Motor Industries, the Court opined that the ground for passing off was not maintainable The Court also agreed with the view of the single judge on the view that concealment and suppression of material facts had taken place. The appeal was dismissed with costs and on the note that following the computerization of the Trade Mark Registry, the court while considering grant of an ex parte injunction should normally require the plaintiff to disclose whether a search has been carried out in the Trade Mark Registry and that such an insistence on disclosure would facilitate making of the required order in a suit for infringement or passing off.

© Lex Orbis 2008

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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