Trademark Registration misuse
Issue involves a trademark ‘OSRAM’ which is registered proprietary mark of General Electric Company Ltd. since 1945; and put to use extensively by GEC in India through its subsidiaries. Not only in India but the mark ‘OSRAM’ is also registered in a number of foreign countries. ‘OSRAM’ is an invented mark derived from 2 materials of filaments, namely, ‘OSmium (name of a metal) and WolfRAM (the German word for tungsten).
Defendants are engaged in the business of manufacturing and selling coolants and filters for automobiles, have applied for the registration of identical trademark ‘OSRAM’ under no. 3745515 in class 1 (chemical for use in the automotive industry) and 3745556 in class 3 ( bleaching preparations and other substances for laundry use). Defendant was temporarily injuncted in this suit.
Most importantly, Plaintiff have cared to pointed out gross misconduct of Defendants being habitual infringers of various well known marks including Britannia, Marks & Spencer, Fitbit, WhatsApp, iPhone, Micromax, Apple, etc. Adoption of OSRAM brand is also one such act of defendant. Being habitual offender, in an earlier suit defendant suffered a cost of Rs. 2 lakh for his such illegal activity in Valvoline Licensing and Intellectual Property LLC v. Tejmeet Singh Sethi. [CS(COMM) 1280/2018]
Delhi High Court called for a full list of all the trademarks applied for, registered, withdrawn, and abandoned by the Defendant on record considering the fact that in a previous litigation also the Defendants had been found to be infringing third party marks and were directed to pay costs.
Defendant has made shocking revelations in his affidavit, which goes like, ‘…..I have studied B.Com (Hons.) from Sri Guru Tegh Bahadur Khalsa College, University of Delhi. Since 1988, I have been engaged in automobile parts business but due to losses I have closed it down. I used to have some automobile parts and electronics business in relation to which I frequently travelled to China. I have filed a total of 416 trademark applications. I was told by some lawyers that if I register these marks I could do business using them on products from China. “
“…….. I started filing these trade mark applications in 2015. Several of these marks have been registered by the Trademark Registry……I have spent more than Rs.20,00,000/- in filing these trade mark applications. I have not used any of the brands for which I have applied. I was under legal advice that if I register these marks, I will be entitled to use them and, therefore, I applied for these marks. I am willing to withdraw all the trademark applications which I have filed except those which are not violating any third party rights. I was earlier the owner of the property located at 13/78, West Punjabi Bagh, New Delhi -110026. This property has now been sold by me as of March, 2022 due to losses. I undertake not to adopt/apply for registration of any third party trademarks, including the mark ‘OSRAM’ and ‘HENGST’, in future or use the same for business’.
It was found that 378 applications out of a total 416 trademark applications/ registrations which the Defendants have filed are potentially infringing/ violating third party rights and the same have been abandoned, refused, removed or applied for withdrawal by the Defendants.
Court went on to observe further that the list of trademarks applied for/ registered by the Defendants leaves no manner of doubt in the mind of the Court that the intent of the Defendants is to indulge in trafficking/hoarding in these marks. As per Defendants’ statements they are not doing any genuine business under any of these marks and Court cannot turn a blind eye to such large-scale illegality.
- Court passed a decree of permanent injunction against the Defendants;
- Ordered that Defendants’ trade mark applications/registrations for the mark OSRAM and deceptively similar marks bearing nos. 3745515 and 3745556 shall stand withdrawn/cancelled;
- Ordered defendant to pay of Rs.10 lakhs towards part litigation costs of the Plaintiffs and in event of failure to pay cost within stipulated time, Plaintiffs would be at liberty to seek revival of the present suit and also pursue its claim for damages of Rs. 2 crores as also complete costs of litigation and exemplary costs.
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