Havells Has it All Against Havai: A Glance at Delhi High Court’s ruling in favour of the Well-Known Mark Havells
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INTRODUCTION
As their name suggests, a “well-known trade mark” of a proprietor is that mark which has gained a reputation of such a stature in the market, that even though it relates to a particular goods or service, a usage of a similar or identical mark by anyone else for a different goods or service would give the public the impression that the latter goods or service belong to the proprietor and not anyone else. The recognition of the “well-known” status of any trade mark elevates it to such a high pedestal, that the mark becomes invincible against all identical or similar marks, even including the registered marks. The recent case of Havells India Limited v. Havai Home Products Pvt. Ltd. & Ors. serves as a classic example for the same.
BACKGROUND
The Plaintiff in the case, Havells, is a leading FMEG (Fast-Moving Electrical Goods) company in India which was incorporated in 1983. It is known for manufacturing and selling home appliances like fans, coolers, lights, geysers. The company has multiple brands and ‘Havells’ is one of the prominent brands amongst them. The company owns right over the trademark ‘HAVELLS’ and its formative marks in both India and abroad for various goods. Moreover, ‘HAVELLS’ had previously been recognized as a well-known trademark in 2014 by the Delhi High Court in a case against M/S TT Plyboard, and has since then been entered into the ‘List of Well-Known Trademarks’ by the Trade Marks Registry.
On the other hand, the Defendant Havai also is a company engaging in the business of manufacturing and selling electrical products like fans, coolers and immersion rods. The defendant had been the registered proprietor for the mark ‘HAVAI’, also its trade name, under Classes 11, 20, 21 and 24, all for applications filed on proposed to be used basis. Further, the other applications of the Defendants for the registration of the ‘HAVAI’ mark were either opposed by Havells or abandoned on account of failure to file the Counter Statement.
Given the above circumstances, Havells proceeded to file a suit against Havai seeking an order of interim injunction against the latter preventing the defendant from using the ‘HAVAI’ mark.
ARGUMENTS
Havells argued that Havai had infringed its well-known trade mark “HAVELLS” by adopting and using marks deceptively similar to its registered marks, owing to the phonetic, structural and visual similarity between the marks, and copying of colour scheme, overall get up and layout of the ‘HAVELLS’ and its formative marks. The Plaintiff alleged that the Defendant company had been also selling spare parts for various companies, including Havells, but without Havell’s authorization and thus, had been unlawfully using the mark ‘HAVELLS SPARES’. It also alleged that Havai was selling products by mentioning incorrect ISI numbers.
Havells argued that registration of a mark is not a defence to passing off. It centred its arguments around three primary issues:
Defendants do not have BIS (Bureau of Indian Standards) registration;
Defendants are infringing Plaintiffs’ mark HAVELLS and its formative marks by use of the mark HAVAI, substituting the letter ‘I’ of the registered mark in a manner that it can be misread and mispronounced as ‘L’; and
Defendants are passing off their goods as those of the Plaintiffs, encashing on their formidable goodwill and reputation.
Havai defended itself by stating that it was not violating the BIS Act and had removed all references of ‘HAVELLS SPARES’ from their website. The defendant based its case largely around the argument that since ‘HAVAI’ mark is duly registered, no case for infringement can lie as it is a settled law that one registered proprietor cannot sue the other registered proprietor. It further used the principle of overall impression to assert that their mark was not similar to the ‘HAVELLS’ marks.
DECISION
Based on the above arguments, the Court noted that registration of a mark is not a defence to passing off and referred to the Supreme Court’s ruling in S. Syed Mohideen v. P. Sulochana Bai, where it was held that an owner of a registered trademark can bring an action against the other party for passing off, even if the other party is a registered proprietor of a deceptively similar mark. The Delhi High Court noted that registration is merely a recognition of pre-existing right in common law and where a conflict arises between two registered proprietors, the Court should evaluate the better right basis the common law rights.
Given the above, the Court tested the adoption and use of the ‘Havai’ mark on the grounds of goodwill; misrepresentation; and damage and harm to the goodwill to ascertain whether a passing off action could be brought against the Defendant by the Plaintiff. Upon comparison of the marks, the Court noted that the Defendants are actually using a stylized variation of the last letter ‘I’ in the ‘HAVAI’ marks on their products, which can be misread and mispronounced as ‘L’, so that an unwary consumer who has a recollection of the mark HAVELLS, buys the goods of the Defendants under an impression that those are the goods of the Plaintiffs.
Thus, the Court held that the Defendant’s goods were passing off the goodwill and reputation of the Plaintiff. And given the identity of the goods, the Court passed an order of interim injunction to protect the well-known trade mark ‘HAVELLS’ of the Plaintiff.
CONCLUSION
This case has reaffirmed that the “well-known” status of a trade mark holds a greater power over a mere registration of a mark. It further shows that registration of your mark does not act as a safeguard against any passing off action undertaken by its proprietor.
Dakshita Sharma Katare
Associate
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