Havells India Limited & Anr. v. Havai Home Products Pvt. Ltd. & Ors.

Relevant Acts and provisions

Trade Marks Act, 1999

Section 2(1)(zg)Section 27(2)Section 28(3)Section 29Section 29(8)Section 30(2)Section 34

Provisions considered: Sections 2(1)(zg), 27(2), 28(3), 29, 29(8), 30(2) and 34 of the Trade Marks Act, 1999.

Brief facts

The Plaintiffs are proprietors of the trade mark HAVELLS, registered since 1955 and declared a well-known trade mark by the Delhi High Court. They are a prominent Fast-Moving Electrical Goods company with substantial sales and advertising expenditure. Defendant No. 1 manufactures and sells similar electrical goods and is the registered proprietor of the mark HAVAI in Class 11, along with related marks in other classes. The Defendants used a stylised version of their registered mark in which the last letter 'I' was represented to resemble the letter 'L', so that it appeared and sounded similar to HAVAL and closely resembled HAVELLS. They failed to explain the deviation in font and stylisation from their registered mark. The Plaintiffs sought an ad interim injunction restraining use of the marks HAVAI and its device variants.

Issues before the Court

1. Whether there is deceptive similarity between the Plaintiffs' HAVELLS marks and the impugned HAVAI marks as actually used by the Defendants.
2. Whether a registered proprietor can be restrained in a passing-off action despite having a valid trade mark registration.
3. Whether the Plaintiffs showed a prima facie case, balance of convenience and possibility of irreparable harm justifying a temporary injunction.

Court's findings

Registration of a trade mark is not a defence to an action for passing off, as passing off is a common-law remedy independent of statutory registration. Where registered proprietors are in conflict, the Court may examine their respective common-law rights, including prior use and goodwill, to determine the superior right. Trade marks must be compared as a whole in accordance with the anti-dissection principle, but their overall visual and phonetic impressions are relevant in determining deceptive similarity. The relevant class of consumers may not exercise a high degree of discernment and may be susceptible to confusion arising from imperfect recollection. The identity or similarity of the goods further increased the likelihood of confusion. The initial interest confusion test is relevant to both infringement and passing-off actions.

Decision

The Court upheld the Plaintiffs' claim, finding that the Defendants' actual use of HAVAI with a stylised 'I' resembling an 'L' caused confusion and exploited the goodwill and reputation connected with the Plaintiffs' trade marks. The interim injunction was directed to operate during the pendency of the suit.

Keywords

Anti-Dissection Rule Deceptive Similarity Dishonest Adoption Passing Off Phonetic Similarity Well-known Mark