Koninklijke Philips Electronics NV v. Smt. Kanta Arora and Ors.
2005 (30) PTC 589 (Del)
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Plaintiff No. 1 was a company established under the Dutch laws in 1891 as “Philips & Co.”. Over 107 years, it had become one of the world’s biggest electronic company, producing a variety of electrical and non-electrical goods. Plaintiff no. 2 was a company incorporated under the Indian laws in which 83% equity shares were held by Plaintiff No. 1. The parent company had permitted its subsidiary to use its registered trademarks ‘PHILIPS’ inside shield device and ‘PHILIPS SHIELD EMBLEM’, adopted by it in 1911 and 1938 respectively.
In June, 1992, Plaintiffs found out that the trademark ‘PHILIPS’ had been advertised in the Trade Marks Journal in the name of M/s. Kumar Enterprises (the Defendants) in respect of pressure cookers. The said trademark application was opposed by the Plaintiffs on the ground of dishonesty. But the Assistant Registrar of Trade Marks dismissed the objections of the Plaintiffs. The Plaintiffs filed an appeal against the said order of the Assistant Registrar of Trade Marks. The Registrar of Trade Marks had granted the registration in favour of the Defendants despite the pendency of the appeal.
While the appeal preferred by the Plaintiffs was pending, Plaintiffs came across the advertisement of the Defendants for pressure cooker being sold under the marks Philips on Cable television.
Thus, Plaintiffs filed a suit against the Defendants seeking a permanent injunction to restrain them from using the mark ‘PHILIPS’.
• Plaintiff no. 1, through Plaintiff no. 2, has been selling goods under the mark ‘PHILIPS’ for over 70 years in India.
• As a result of extensive advertising, the mark has become exclusively associated in the minds of the consumers with the products manufactured by Plaintiffs and has attained a considerable goodwill.
• The use of an identical trade mark by the Defendants in respect of the same/allied goods not only amounts to infringement of the Plaintiffs’ right but also creates confusion and deception in the minds of the consumers.
• Defendants have been extensively using the trade mark ‘PHILIPS’ since 1984.
• The Defendants are the registered proprietors of the mark ‘PHILIPS’. Statutory provisions entitle them to use the trademark so long as it is registered. (Section 28 of the Trade and Merchandise Act, 1958).
• Since the Plaintiffs were not selling pressure cookers, they could not prevent the Defendants from selling the same under the trade mark ‘PHILIPS’.
(i) Whether the Defendants hold a valid registration of the trademark ‘PHILIPS’ and can therefore oppose the prayer for injunction?
(ii) Whether the Defendants can use the trademark ‘PHILIPS’ which is identical to the Plaintiffs’ trademark for marketing their products including kitchen utensils?
The registration of the trademark could not affect the right of the Plaintiffs to bring an action for passing off against the Defendants. Also, the words “subject to the other provisions of the Act” in Section 27 made it clear that the right was not indefeasible.
Two question arise in all cases of passing off – (i) whether the trade mark has been used by the Plaintiff prior in point of time, and (ii) whether the trade mark being used by the Defendants is deceptively similar to that of the Plaintiff.
Mere registration by the Defendants did not in itself prevent the plaintiffs, the prior users, from restraining use of their trademark by the Defendants.
The trademark of the Plaintiffs being globally renowned, use of an identical mark by anybody even in respect of goods not sold by the Plaintiffs would create confusion in the minds of the consumers. This is especially so when the plaintiffs are engaged in the business of allied consumer products like electric pressure cookers. So, it is reasonable to assume that a consumer is likely to believe that the Plaintiffs have extended their activities to non-electric pressure cookers also.
The order of injunction was granted in favour of the Plaintiffs.
Author: Arunima Bishnoi, Delhi Law Faculty