Automatic Electric Limited Vs. R.K. Dhawan & Anr.
1999 (19) PTC 81
Plaintiff adopted in the year 1945, the trade mark ‘DIMMERSTAT’ in relation to variable voltage auto transformers. Plaintiff was also the registered proprietor of the trade mark ‘DIMMERSTAT’ in Class 9.
The case of the Plaintiff was that the Defendants had adopted the trade mark ‘DIMMER DOT’ in relation to variable voltage auto transformers and the said mark is likely to cause confusion or deception amongst the members of the public as it was deceptively similar with the trade mark ‘DIMMERSTAT’ of the Plaintiff. The Plaintiff had obtained an ex-parte injunction. Thereafter, the Defendants filed an application for vacation of injunction.
• ‘DIMMER’ being a generic word is incapable of serving a trade mark function. According to him, the product in question is an auto variable transformer which is also called in trade a ‘DIMMER’ as it serves the function of dimming or regulating various parameters like heat, light, motor speed etc.
• ‘DIMMER’ signifies and connotes an auto variable transformer, Therefore, no trader could monopolise the use of this word in relation to auto variable transformer
• Products in question are extremely sophisticated electrical instruments and thus the buyers of these products are extremely discerning and would not be confused.
• There is a honest concurrent user by the Defendants since 1980 of it’s mark ‘DIMMER DOT’.
• Plaintiff was aware of the Defendants’ mark since their advertisements featured in the same trade magazines and thus the Plaintiff has acquiesced use of the trade mark ‘DIMMER DOT’.
• ‘DIMMER DOT’ of the Defendants is not a registered trade mark although the documents of the Defendants indicate that they are using the trade mark ‘DIMMER DOT’ as a registered trade mark. This amounts to commission of offence. No application has also been filed by the Defendants for cancellation of the registration of the trade mark ‘DIMMERSTAT’.
• The trade mark ‘DIMMERSTAT’ is registered without any disclaimer to the exclusive use of the word ‘DIMMER’.
• The good involved is a variable auto transformer. The word ‘DIMMER’ as is understood in the common parlance is connected with an arrangement for regulating the supply of the electricity, but, the product here is not a ‘DIMMER’, but, a variable transformer. Auto transformers have several applications including voltage and current control in experimental and development work in laboratories and R&D departments testing and calibration of indicating instruments etc. Thus variable auto transformers cannot be strictly called a ‘DIMMER’ and both are not interchangeable for auto transformer has many other functions.
• The Defendants got their trade mark ‘DIMMER DOT’ registered in Australia. The fact that the Defendant itself has sought to claim trade proprietary right and monopoly in ‘DIMMER DOT’, it does not lie in their mouth to say that the word ‘DIMMER’ is a generic expression.
• Merely because in a particular magazine advertisement of the Defendants was published on the cover page, cannot by itself be a case to deduce that the Plaintiff was aware of the advertisement of the Defendants’ trade mark. However, even if such a presumption could be made, the same cannot deprive the registered owner of a trade mark from getting his rights established.
• First syllable of a word mark is generally the most important and thus, when the Defendants are using a similar prefix with that of the Plaintiff with a little variation in the suffix part of it, the trade marks are deceptively similar and cause of action for prima facie infringement is complete.
The injunction was confirmed.