India: Delhi High Court Critiques Bare Denials And Decrees A Suit, Finding Suzuki A Well-Known Mark

Last Updated: 5 August 2019
Article by Adheesh Nargolkar, Smriti Yadav and Sunaina Brahma

Most Read Contributor in India, July 2019

In its latest judgment on trade mark infringement, the Delhi High Court (Court) in the case of Suzuki Motor v Suzuki (India) Limited1, passed a decree under Order XII Rule 6 of the Code of Civil Procedure, 1908 (CPC) against Suzuki (India) Limited (Defendant), as the Defendant in its written statement had failed to specifically deny the facts in the plaint, thereby, deeming the averments in the plaint to have been admitted. Order XII Rule 6 of CPC inter alia empowers the court to pass a decree if the admissions of the Defendant are sufficient to pass a decree.

Background

In and around December 2005, Suzuki Motor (Plaintiff) filed a suit along with an interim application seeking injunction against the Defendant and other co-defendants from infringing their trade mark/ trade name/ corporate name Suzuki. By virtue of interim order dated 12 December 2005, the Defendant and the other co-defendants were injuncted. Later, during the trial stage, the other co-defendants were removed as they were not necessary parties. Thus, the Defendant was the only disputing party during the trial stage. The Plaintiff sought a decree under Order XII Rule 6 of CPC against the Defendant, as the only defence raised by the Defendant in its written statement was challenging the territorial jurisdiction of the Court on the ground that the Defendant has no office in Delhi, which it failed to prove.

The Plaintiff's contentions were as follows:

  1. the Plaintiff has been using the trade mark Suzuki as part of its corporate name since its inception/incorporation in 1909. Suzuki, being the family name of the founder of the Plaintiff, is not connected to the Defendant in any manner;
  2. the Plaintiff is the registered proprietor of the trade mark Suzuki in several countries of the world, including India; its earliest Indian registration dating back to 1972;
  3. in 1982, the Plaintiff entered into a joint venture with the Government of India and also licensed its technology to the joint venture company, Maruti Suzuki India Limited; extensive efforts towards promotion and publicity of the same was undertaken by the Plaintiff;
  4. by reason of continuous and extensive use and advertisement of the mark Suzuki, it has become distinctive of the Plaintiff all over the world including India;
  5. around 1982, the Defendant adopted its corporate name Suzuki India Limited in relation to its finance and investment business with a mala fide and dishonest intention of encashing upon the tremendous goodwill, name and reputation garnered by the Plaintiff and to pass off and mislead the public that the business of the Defendant had some connection with that of the Plaintiff;
  6. there is no justification on the part of the Defendant to use a Japanese surname and the Defendant ought to have knowledge of the Plaintiff's statutory and exclusive right to use the trade mark Suzuki;
  7. the explanation provided (during the hearing) by the Managing Director of the Defendant that his father knew someone by the name of Suzuki is an afterthought;
  8. as per the provisions of the CPC, pleadings in the written statement should be specific and an evasive denial of a fact alleged in the plaint would be deemed to be an admission under Order VIII Rule 3 and Rule 5 of the CPC and thus the Court should pass a decree under Order XII Rule 6 of CPC against the Defendant.

The Defendant's contentions were as follows:

  1. the Defendant is an honest and concurrent user and on account of its continued and uninterrupted use of the trade mark/name Suzuki as part of its trade name Suzuki India Limited since 1982, the Defendant has earned substantial goodwill;
  2. the present suit filed in 2005 is after a delay of over 25 years; thus, amounting to acquiescence on the part of the Plaintiff;
  3. the Plaintiff has indulged in 'forum shopping' by filing a suit in this Court as the Defendant is incorporated in Kolkata and no part of cause of action has arisen in the jurisdiction of this Court;
  4. the name Suzuki was adopted because the father of the Managing Director of the Defendant knew someone by the name of Suzuki;
  5. that the Plaintiff's use of Suzuki is only in relation to automobiles and hence it cannot be allowed to claim monopoly over all classes of goods;
  6. that a decree is not warranted under Order XII Rule 6 of CPC as the Defendant has not made any admission in the written statement.

Decision

The Court observed that in the present case, the Defendant has chosen not to deny the Plaintiff's claim that the Defendant's adoption of the mark Suzuki is dishonest, calculated to deceive and that the Defendant had constructive notice of the Plaintiff's statutory and exclusive right over the mark Suzuki. The Defendant has also failed to deny that it was fully aware of the Plaintiff's mark Suzuki at the time of adoption of its mark and that the illegal use by the Defendant of the mark Suzuki will cause prejudice to the Plaintiff and its goodwill and reputation painstakingly developed at significant cost over the years by the Plaintiff. The Court relied on M/s Gian Chand Brothers v Rattan Lal2 and Badat & Co v East India Trading Co3 and observed that a vague/evasive denial of a fact alleged in the plaint is sufficient to pass a decree against the Defendant.

The Court found no justification on the part of the Defendant to use the mark Suzuki as part of its corporate name and held that adoption of the same is fraught with mala fide and dishonest intention to trade on the Plaintiff's reputation and goodwill. The explanation provided by the Defendant for adopting the mark Suzuki was not accepted for two-fold reasons:

  1. Since Suzuki is a Japanese surname and is not associated with any Indian name, place, object or term, this explanation was completely far-fetched. Thus, there was no connection between the name Suzuki and the Defendant.
  2. The explanation behind the adoption of the name Suzuki was not even pleaded in the written statement. Thus, the Court found no merit in the submission and rejected the same. The Court observed that since the Defendant's adoption of Suzuki was dishonest, the alleged use of the same from the year 1982 was of no consequence.

On the defense of 25 years delay and concurrent user, the Court observed that the Defendant, being a fraudulent infringer, cannot complain of delay and hide behind the defence of delay, laches or acquiescence as the infringement at the very initial stage itself was fraudulent. The delay and laches by itself would not bestow fraud with character of legality. Since the adoption of the mark was dishonest, a delay in bringing an action is not sufficient to defeat the grant of injunction. The Court further observed that mere concurrent user is not sufficient in law and that the same must be in conjunction with honesty. Thus, since the Defendant's adoption itself is dishonest, delay in bringing action is not sufficient to defeat injunction.

On the defense that the Defendant's nature of business is different, the Court observed that with the changing concept in the law of passing-off, it is not necessary that the Plaintiff and the Defendant should trade in same field of business. The Court observed that Plaintiff had placed sufficient material on record (news articles/publications since June 1982) to show that the Plaintiff's mark Suzuki was a well-known mark in India way back in 1982 when the Defendant adopted the same. The name Suzuki has acquired distinctiveness and secondary meaning in the business or trade circles.

Accordingly, the suit was decreed in favour of the Plaintiff under Order XII Rule 6 of CPC with a finding that Suzuki is well-known mark.

Comment

This judgment underlines the importance of specific denials in a suit. The judgement also highlights that once the Court comes to a conclusion that there is dishonesty on the part of Defendant, delay is immaterial.

Footnotes

1. CS (COMM) 235/2018 & I.A. 8507/2019

2. MANU/SC/0015/2013

3. AIR 1964 SC 538

The content of this document do not necessarily reflect the views/position of Khaitan & Co but remain solely those of the author(s). For any further queries or follow up please contact Khaitan & Co at legalalerts@khaitanco.com

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions