Grandlay Electricals (India) Ltd. & Ors. v. Vidya Batra & Ors.
1998 (18) PTC 646 (Del)
Plaintiff No. 1 was a partnership firm involved in manufacturing wires, cables/electric cables and insulated wires. Plaintiff No. 1 enjoyed goodwill for its quality products under the registered trademark “Grandlay Cables”.
Plaintiff No. 2 and four others partners in Plaintiff No. 1 were carrying on the business of manufacturing wires and cables under the name and style of Plaintiff No. 1. Disputes arose between the partners and thereafter, the same was referred to an Arbitrator. As per the consent award rendered by the Arbitrator, the said trademark fell into the share of Plaintiff No. 2 and one of the 4 persons (hereinafter ‘A’).
Later, Plaintiff No. 2 and 3 entered into a partnership with ‘A’ and his son for carrying on the business under the name and style of Plaintiff 1. After 3 years, ‘A’ and his son retired from the above partnership relinquishing all their rights and interests in the partnership party including the said trademark in favour of Plaintiff No. 2 and Plaintiff No. 3. Post the above incident, Plaintiff No. 2 and Plaintiff No. 3 became the proprietors of the said trademark with exclusive right to use the same.
The remainder of the erstwhile partners, i.e. Defendants floated a new firm under the name and style of Batra Henlay Cables and used the trademark “Grandlay” and another deceptively similar trade mark “Henlay”.
Plaintiffs had filed two suits one was with respect to the “Henlay” and the other was with respect to “Grandlay”. This was due to the fact that the Defendants were earlier using “Henlay” and later also started using “Grandlay”. The interim applications in the said suits were decided in the present case.
Arguments on behalf of the Plaintiff:
• Plaintiffs’ are the owners of the trademark “Grandlay” and therefore have exclusive right to use the same.
• Usage of the identical/deceptively similar trademark by the Defendants would cause deception among the public and may lead to passing off Defendants’ goods and that of Plaintiffs. Such usage, as contended by the Plaintiff, amounts to an infringement of the Plaintiffs’ trademark.
Arguments on behalf of the Defendants:
• Plaintiffs are neither the proprietors of the trademark “Grandlay” nor the firm Grandlay Electricals. Plaintiffs are not the registered user of the trademark “Grandlay” and hence debarred from bringing the suit for infringement.
• It is within their right to use the words “Grandlay Groups” as per the arbitration award.
• “Batra Henlay” is neither identical nor deceptively similar to “Grandlay”.
Observations made by the Court:
It is manifest from the evidence and the facts canvassed that the trade mark “GRANDLAY” fell to the share of the Plaintiff No. 2 vide the arbitration award. Subsequently through the retirement deed rights and interests in the partnership property including the trade mark “GRANDLAY” were relinquished in favour of the Plaintiff No. 2 & 3. The Plaintiffs herein have further applied to the Registrar of Trade Marks for their names being entered in the registered of Trade Marks as a proprietor of the impugned Trade Mark. The said matter is still sub judice and no order thereon has so far been passed. Thus if no action has been taken by the Registrar of Trade Marks on the application of the Plaintiffs the plaintiffs cannot be blamed thereof.
Plaintiffs have virtually become the owners and proprietors of the trade mark as per the consent of the other partners.
If the Plaintiffs have become the owners of the impugned trade mark which has fallen to their share and that, too, with the consent of the Defendants, whereunder they have got a right to carry on their business, it would be highly unjust and improper to allow the Defendants to object to the suit on the ground that the Plaintiffs cannot be permitted to maintain an action for infringement off their trade mark and for passing of the goods of the Defendants as that of the Plaintiffs under the said trade mark and trade name.
The only issue to be looked into is whether there is a visual similarity or phonetical similarity in between the trademarks of the plaintiffs and that of the Defendants.
Trade mark of the Defendants “HENLAY” is phonetically and deceptively similar to the trade mark “GRANDLAY” inasmuch as the last three letters in the two trademarks are same. Furthermore, there is a striking similarity of the sound in the two trademarks. It should also be considered that both the parties to the present suit are Batras. The said word cannot be a distinguishing feature of the trade mark of the Defendants in order to clothe it with a distinctive trait and personality.
Plaintiffs have provided evidence to show and prove that the Defendants are carrying on their business under the name and style M/s. Grandlay Electrical (India), Grandlay Complex, New Friends Colony, Mathura Road, New Delhi. Thus it is clear that the Defendants are using the words “GRANDLAY” as well as “BATRA HENLAY” in connection with their electrical goods.
Injunction was granted in favour of the Plaintiffs.
Author: Aadhya, National Law University, Odisha