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Ex-parte protection to prior trademark user by Bombay High Court

The Hon’ble Bombay High Court, protects the trademark of prior user by passing ex-parte and ad-interim orders and reiterates a case of infringement and passing is made out if the rival trademarks are phonetically, visually and structurally similar.


BACKGROUND OF THE CASE :


In the matter of Elektromag Devices and Ors v/s Nikhil Ravindra Bhawalkar & Ors., vide an order dated 20th June 2023, the Hon’ble Bombay High Court granted an ex-parte ad-interim order to the Plaintiffs, observing that the impugned Trademark namely “ELEKTROMAGNETISCH” and the device ‘’ (“impugned trademarks”) are deceptively similar to the registered Trademark of the Plaintiffs i.e. ELEKTROMAG” and the device ‘ ’ (“plaintiff’s trademarks”) and the products are also similar to that of the Plaintiffs. The Defendants file the present application for vacating the said order.

M/s. Elektromag Devices and 2 others [Plaintiff No.1, Plaintiff No.2 and Plaintiff No.3] file a suit in the Hon’ble High Court Bombay, claiming to be the licensed / permanent users with respect to the suit trademark. The Plaintiff No.1 is in the business of manufacturing and trading in inter-alia electrical equipment and apparatuses using electromagnets including lifting magnets, magnet separators, metal detectors, construction equipment and the like goods (“the said goods”) and the Plaintiff No.2 and Plaintiff No.3 are companies incorporated under the Companies Act who are the licensed / permanent users of the 1st Plaintiff with respect to the suit Trademarks. They carry on business of manufacturing and marketing the said goods for and on behalf of the 1st Plaintiff. The Plaintiff had applied for and obtained registration of their trademark ‘ELEKTROMAG on or about 23rd December, 1980, under Section 9 of the Trade Marks Act, 1999.

The Plaintiffs claim that they have acquired wide and enviable goodwill and reputation in India and abroad, due to the long, continuous and extensive use of the Trademarks and the trading names and style. They have been granted registered domain name, www.elektromag.com in the year 1998 and the said domain name has been exclusively associated with the 1st Plaintiff, since.

The Defendant No.1 was an ex-employee of the 2nd Plaintiff and claims to be a Director of the 2nd Defendant which in turn claims to be a group entity of the 3rd Defendant. The 4th Defendant is a partner of the 3rd Defendant and claims to be the CEO of the 3rd Defendant.

The Defendants are manufacturing and trading under the Trademark ‘ELEKTRO Magnetisch’ under a composite Trade Mark along with the trading name and style “ELEKTROMAGNETISCH” and the device ‘’ (“the impugned trademarks) and use and operate a website / domain name www.elektromagnetisch.com. The Defendants have filed an application for grant of registration of the trademark under Class 7 of the Trademarks Act, 1999. The Defendants are in continuous use of the impugned Trademark.

FINDINGS AND CONCLUSION OF THE COURT

As one of the defendants is an ex-employee of the plaintiff and the Defendants were aware of the reputation and goodwill of the plaintiff’s registered trademarks, the defendants are not bona fide adopters and honest concurrent users of the impugned trademarks.


The Defendants contentions that “ELEKTROMAGNETISCH” is the name of the technology which literally means “ELECTROMAGNETISM” and both the Plaintiffs and the Defendants, have derived their names from it, so the same are generic and cannot be registered, were rejected by the Court as the defendants too have applied for the registration of the device, albeit under a different Class.


As the plaintiff’s trademarks are already registered, there is a very narrow window available to the defendants to challenge registration thereof as set out by the Full Bench of the Bombay High Court in the case of ‘Lupin Ltd. Vs. Johnson & Johnson & Anr. (2015 (61) PTC 1 (Bom)(FB))’. At interlocutory stage, there is strong presumption in favour of the plaintiff’s registered trademarks. The validity of registration of the plaintiffs’ trademark cannot be challenged at this stage.


The court observed that Plaintiff has established long usage of the mark through several documents and therefore, has been held to be distinctive and the adoption and the use of the impugned trademarks was an attempt to piggy back upon the goodwill and the reputation of the Plaintiff. The court pointed out that it is a settled law that when the whole of the Plaintiffs mark is subsumed in the Defendants’ mark, as it is in the present case, a case is made out for infringement. The Court held that the mark has to be seen as a whole and declared that the defendants’ mark is structurally, visually, and phonetically similar to the plaintiff’s trademark “ELEKTROMAG”.


The Court upheld the ad-interim order and restrained the Defendants and their agents by an order of temporary injunction.

Our Analysis

It is a well-established law that mere likelihood of damage to business or goodwill to the prior user amounts to misrepresentation. In the present case, the Courts have taken into consideration the fact that the defendants inspite of being well aware of the long-standing good will and the reputation of the Plaintiff, have chosen to use and attempt to register a mark which was similar to that of the Plaintiffs, prima facie infringing the mark of the Plaintiffs.


The Courts’ willingness to entertain and to grant an injunction in an ex-parte application, is a clear indication of the seriousness with which the courts are approaching infringement and passing off violations. As the Defendants failed to provide a plausible explanation for adopting similar trademark to the Plaintiffs, not only were they were restrained by an order of temporary injunction, the court also refused to vacate the same.


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