Delhi District Court
Lumax Industries Limited And Ors vs Hindustan Auto Industries on 6 December, 2024
~1~
In the court of Sh. Umed Singh Grewal, District Judge-
Commercial Court-02, North District
Rohini Courts, Delhi.
CS (Comm) No.: 311/21
In the matter of :
Lumax Industries Limited
2nd floor, Harbans Bhawan - II,
Commercial Complex, Nangal Raya,
New Delhi - 110046
Through Mr. Pankaj Mahendru (Authorised Signatory)
.... Plaintiff No. 1
Lumax Auto Technologies Limited
2nd floor, Harbans Bhawan - II,
Commercial Complex, Nangal Raya,
New Delhi - 110046
Through Mr. Anil Tyagi (Authorised Signatory)
.... Plaintiff No. 2
D. K. Jain Family Trust
2nd floor, Harbans Bhawan - II,
Commercial Complex, Nangal Raya,
New Delhi - 110046
Through Mr. Raajesh Kumar Gupta (Authorised Signatory)
.... Plaintiff No. 3
Vs.
Hindustan Auto Industries,
(Through Sh. Sanjay Gupta )
J-3163, Narela Industrial Area,
New Delhi - 110040
CS (COMM) No.: 311/21 Page No. 1/34
Lumax Industries Limited and Ors Vs. Hindustan Auto Industries
~2~
also at :
2774/245, Hansa Puri,
Tri Nagar, Delhi - 110035 .... Defendant
Date of Institution : 20.09.2021
Date on which arguments were concluded : 23.11.2024
Date of pronouncement of order : 06.12.2024
Present: Sh. Tejveer Singh Bhatia and Ms. Tanya Arora,
counsels for plaintiff.
Sh. Amit Kumar, counsel for defendant.
JUDGMENT:-
1. This is a suit for permanent injunction restraining infringement of trademark, passing off, unfair competition, misrepresentation and damages.
2. The plaintiff no. 1 is a public limited company listed on Bombay and National Stock Exchanges holding 60% market share in automotive lighting products in India and earned revenue of Rs. 1425 crore in 2020-21. It is continuously in operation since incorporation in 1981 and has been at the forefront of automotive lighting components business with clients such as Toyota, Honda, Maruti Suzuki, Tata, Mahindra, Nissan, MG etc.. The plaintiff no. 2 was founded in 1981 by DK Jain Group and it is in the manufacturing of automotive products like intake systems, integrated plastic modules, 2-wheeler chassis CS (COMM) No.: 311/21 Page No. 2/34 Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~3~ & lighting, gear shifters, seat structure, electrical and electronics components for two, three and four wheelers and it earned revenue of Rs. 1100 crore in 2020-21. The plaintiff no. 3, a registered trust, was incorporated on 07.08.2008 and Mr. D. K. Jain, Mr. Deepak Jain and Mr. Anmol Jain are its trustees and only their legal heirs are beneficiaries. It is owner and registered proprietor of various trademarks and is closely associated with DK Jain Group which has a substantial market share in automobile lighting business. The plaintiff no. 1 is in collaboration with Stanley Electric Co. Limited. Plaintiff no. 2 has technical and financial collaboration with various international players like Jopp Holding Gmbh (Germany), Cornaglia (Italy), Mannoh (Japan), Yokowo (Japan) and Ituran (Israel) in automotive field and has established various joint ventures to manufacture automotive components. The plaintiffs have ten plants in India out of which four are located in Gurugaon, Dharuhera, Manesar and Bawal, two in Pant Nagar & Haridwar (Uttarakhand), two in Pune, one plant each in Sanand (Gujrat) and Bidadi (Karnataka). More than 5500 persons including contractual workers are employed there.
The trademark LUMAX was coined and adopted in 1969 by erstwhile partnership firm namely 'Globe Auto' and was registered in class 12 on 15.09.1969. The partnership firm was converted into a private limited company in 1981 and its businesses was taken over by newly created company 'Lumax CS (COMM) No.: 311/21 Page No. 3/34 Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~4~ Industries Private Limited' i.e. plaintiff no. 1 which was converted into a public limited company in 1984 and the trademark LUMAX was assigned to it on incorporation. Plaintiff no. 3 is owner and registered proprietor of trademarks of other variants such as 'TECHNOMAX', 'LUMAX TECHNOMAX', 'LUMAX TECHMAX', 'NUMAX', 'DKMAX' and device marks and etc. in class 11 and 12. The plaintiffs are registered proprietor of following other trademarks also:-
Application Trademark Class Date of
No. Filing
259394 12 15.09.1969
(User from
01.01.1969)
426009 LUMAX 11 21.08.1984
(User from
01.09.1972)
3634679 11& 12 13.09.2017
3634678 11 & 12 13.09.2017
CS (COMM) No.: 311/21 Page No. 4/34
Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~5~ 3634681 11 & 12 13.09.2017 3634680 11& 12 13.09.2017 3671950 11& 12 07.11.2017 3940924 TECHNOMAX 11& 12 10.09.2018 3940925 TECHMAX 11& 12 10.09.2018 3940926 LUMAX 11& 12 10.09.2018 TECHNOMAX 3940927 LUMAX 11& 12 10.09.2018 TECHMAX 3761245 NUMAX 7 & 12 22.02.2018 4845031 11 & 12 02.02.2021 4821977 7, 11 & 15.01.2021 12 4821978 7, 11 & 15.01.2021 12 CS (COMM) No.: 311/21 Page No. 5/34 Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~6~ The automobile parts manufactured by DK Jain group bearing trademark LUMAX and device mark and are exported to various countries like USA, U. K. and Germany. Due to long use in extensive geographical area, registration thereof, advertisement, promotional campaign, knowledge and recognition of subject marks all over the world, the trademark LUMAX and device marks and have acquired the status of well known trademark under Trademarks Act, 1999. Plaintiffs have social media channels at Facebook and Instagram and also maintain a YouTube channel to connect to their existing and potential customers and have thousand of followers and viewers.
They have always been vigilant about their intellectual property rights and that is why plaintiff no. 1 instituted a suit no. 495/98 titled as 'Lumax Industries Ltd. Vs. Nikhil Goel' in Tis Hazari Court which was decreed on 29.02.2000. Another suit no. 103/2000 titled as 'Lumax Industries Ltd. Vs. Numax Auto Inds. Pt. Ltd. & Anr.' was instituted in Tis Hazari Court which was decreed on 24.01.2002.
CS (COMM) No.: 311/21 Page No. 6/34Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~7~ The defendant is a proprietorship firm in whose favour trademark 'YUCO' was registered in 2019 in class 12 vide application no. 4302068 but he, knowingly and without authorisation of plaintiffs, used their registered device marks and on his packagings and thereby violated the common law as well as Trademarks Act. The defendant launched another brand by the name 'YUCOMAX' which was nothing but a dishonest attempt on his part to associate its goods with the goods of the plaintiff which he did in a malafide manner to ride upon the plaintiffs name, goodwill and trademark by adding the word 'MAX' at the end of its registered trademark 'YUCO' to create confusion in the mind of general public that his products were associated with plaintiffs. The matter was got investigated by the plaintiffs and thereafter came to know that the defendant was well aware of their trademark and deliberately copied the same. The box manufactured by him is the replica of plaintiffs' packaging. He used to manufacture the product for a third party namely R.K. Black with the similar packaging as of the plaintiff. The defendant is subsequent adopter of the impugned mark of the plaintiff who is prior registered user as well as proprietor.
CS (COMM) No.: 311/21 Page No. 7/34Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~8~
3. The defendant proprietor came out with the version that his father Mr. R. C. Gupta had started business of marketing and selling automobile light and lamp fittings, spare parts and bike indicators in 1980. In 1995, he joined father's business and in 2014, he started new firm by the name of Hindustan Auto Industries to sell bike indicators and automobile accessories. He adopted device mark YUCO in 2019 and applied for registration on 24.09.2019 vide application no. 4302068 in class 11 and the same was registered in his favour. He adopted the trademark YOCOMAX and applied for registration on 02.03.2022 vide application no. 5351430. He has been regularly doing business by advertising products under the trade device YUCO and trademark YUCOMAX which is written predominantly on all goods and packaging material, boxes and advertisement material. He promotes his business and products on websites namely www.indiamart.com/hindustanautoindustries, www.justdial.com/ jdmart/Delhi/Hindustan-Auto-Industries etc.. His mark and device are entirely different and distinct phonetically and apparently from the trademark and packaging material of the plaintiff. Even the meaning of marks of the parties are different having no similarity and hence there is no likelihood of confusion or deception amongst the consumers and traders. The names and getup of both marks are totally different and for deciding whether there is any similarity, those two points are to be seen. His marks and devices are different phonetically, CS (COMM) No.: 311/21 Page No. 8/34 Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~9~ structurally, orally and visually. On the other hand, the plaintiffs' mark is descriptive and generic in nature and they cannot claim exclusivity and hence they have no exclusive right to use the word MAX as the said word is generic in nature. The marks which are generic, descriptive or suggestive have lower level of legal protection. Moreover, there are several firms, persons and entities in this country who are using the word MAX as suffix or prefix, for their business and they are doing so much prior to the plaintiffs.
4. Following issues were framed on 17.05.2023 :-
1. Whether the defendant is guilty of infringement of plaintiff's registered trademarks/device marks ? OPP
2. Whether the defendant is guilty of passing off plaintiff's registered trademarks/device marks ? OPP
3. Whether the plaintiff is entitled to decree of permanent injunction as sought for ? OPP
4. Whether the plaintiff is entitled to decree of rendition of accounts/damages as sought for ? OPP
5. Whether the plaintiff is entitled to decree of damages in the amount of Rs. 20 lacs as claimed by it ? OPP
6. Relief.
5. In order to prove the case, the plaintiff examined its AR Mr. Chetan Dhingra as PW1 who reiterated the contents of CS (COMM) No.: 311/21 Page No. 9/34 Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 10 ~ plaint in his affidavit in evidence Ex. PW1/1 and relied upon following documents :-
1. Ex. PW1/2 (OSR) is copy of board resolution/POA.
2. Ex. PW1/5 (OSR) is copy of trust deed dated 07.08.2008 of plaintiff no. 3.
3. Ex. PW1/11 is status page demonstrating registration of mark 'LUMAX' bearing no. '259394'.
4. Ex. PW1/12 is certificate under Section 65B of Indian Evidence Act.
5. Ex. PW1/13 (colly) status pages in respect of trademark nos. 3634678, 3634681, 3940924, 394025, 3940926, 3940927 and 3634680.
6. Ex. PW1/14 (colly) are copies of orders.
7. Ex. PW1/15 is status page of trademark of the defendant being application no. 4302068.
8. Ex. PW1/17 is affidavit of the investigator Mr. Zulfikar Rana along with investigation report.
9. Ex. PW1/19 is report of the local commissioner dated 24.06.2022.
10. Mark A is copy of certificate of incorporation of plaintiff no. 1.
11. Mark B is copy of certificate of incorporation of plaintiff no. 2.
12. Mark C is copy of list of awards conferred upon the plaintiffs.CS (COMM) No.: 311/21 Page No. 10/34
Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 11 ~
13. Mark D is copy of ISO certificate issued to the plaintiffs.
14. Mark E is copy of sales invoices pertaining to plaintiffs' products since the year 2014-15.
15. Mark F is copy of website pages of plaintiff no. 1.
16. Mark G is copy of advertisement and promotion materials of plaintiff trademark, logo etc..
17. Mark H (colly) are status pages in respect of trademark nos. 3634679, 3634680, 3671950, 3761245, 4845031, 4821977 and 4821978.
18. Mark I are copies of status pages of trademark of the defendant being application no. 5351430 and notice of opposition dated 18.08.2022.
19. Mark J is copy of bill of purchase dated 03.09.2021.
Additionally, he deposed that its investigator had visited the premises of defendant on 14.07.2021 and 03.09.2021 where he was found manufacturing and selling impugned goods as reflected by invoice dated 03.09.2021 whereby the investigator had purchased 110 boxes from the defendant. When the local commissioner investigated defendant's premises on 11.06.2022 in Tri Nagar, he seized 3587 products bearing impugned marks. He further deposed that considering the quantity of products seized by local commissioner on 11.06.2022 and the quantity purchased by investigator on 03.09.2021, it can be said that defendant used to sell 3500 products per month and CS (COMM) No.: 311/21 Page No. 11/34 Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 12 ~ so, between the two dates of inspection, the defendant might have sold about 38500 pieces of impugned goods. As per invoice, vide which the investigator had purchased goods from plaintiff, the price of a piece was Rs. 75 and so, the price of total sold pieces comes out to 38500 pieces X Rs.75 = Rs.28,87,500/-. He is entitled to damages to the tune of Rs. 40 lacs also.
6. The defendant examined himself as DW1 and repeated the contents of written statement in his affidavit in evidence Ex. DW1/A and relied upon following documents :-
1. Ex. DW1/4 (colly) is printout of certificate of GST registration certificate.
2. Ex. DW1/5 (colly) is printout of online business status of the defendant products.
3. Ex. DW1/6 (colly) is printout of the income tax return.
4. Ex. DW1/7 (colly) is printout of sale of bills/invoices.
5. Ex. DW1/8 (colly) are invoice nos. INV/177/21-22, 813, 1231, GRMI0003459, 191, 003306.
6. Ex. DW1/9 (colly) is printout of public search report showing the status of several trademark application under the word MAX obtained from the trademark website.
7. Ex. DW1/11 is declaration under the provisions of Order XI rule VI Sub Rule III of the Commercial Courts Act as well as Certificate u/S 65B of Indian Evidence Act.CS (COMM) No.: 311/21 Page No. 12/34
Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 13 ~
8. Mark K is printout of latest report of the trademark applications filed by the defendant alongwith the registration certificate and journal.
9. Mark L (colly) are copy of certificate of registration under Delhi Value Added Tax of the defendant.
10. Mark M is copy of importer-exporter code.
11. Mark N (colly) are copy of invoices.
12. Mark O is copy of packaging of the products of different entities.
Issue nos. 1, 2 and 3
7. These issues are interconnected and hence are being taken up together.
8. Counsel for defendant argued that his client's father Mr. R. C. Gupta was in the business of marketing and selling of automobile accessories since 1980 and defendant joined him in 1995 and in 2014, he started his new firm by the name of M/s Hindustan Autoparts and started manufacturing bike indicators and other automobile accessories. He adopted the device mark , started using the same in business CS (COMM) No.: 311/21 Page No. 13/34 Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 14 ~ and moved an application no. 4302068 on 24.09.2019 for registration of the trademark and the same was allowed in class
11. He adopted the trademark 'YUCOMAX' on 02.03.2022 and applied for registration thereof by moving application no. 5351430 which is still pending. Due to registration of trade device YUCO in his favour, he can use the trademark YUCOMAX as he had adopted the same in 2022 and forms part of his device mark.
Next argument is that defendant's trade device 'YUCO' and word mark 'YUCOMAX' are entirely different phonetically as well as appearance from the trademark and device mark of the plaintiff. Due to both marks not being similar, there is no likelihood of confusion and deception amongst the consumers and traders. Only similarity is of the word 'MAX' but it is the law of the land that whole of the trademark is to be seen and not a part thereof.
He next argued that the word 'MAX' forming part of the trademark of the plaintiff is descriptive and generic in nature and hence, the plaintiffs do not have exclusive right to use it because the judicial protection cannot be extended to generic or descriptive trademarks.
Last submission is that there are various entities and persons not only in Delhi but in the entire country who use the word 'MAX' in their business. In the same way, it is being used CS (COMM) No.: 311/21 Page No. 14/34 Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 15 ~ by the defendant. The word 'MAX' is descriptive one and anybody can use it.
He relied upon following judgments :-
1. 'Phonepe Private Limited Vs. Digipe Fintech Private Limited and Ors.', 2023 SCC OnLine Mad 5626.
2. 'Prasar Bharti Vs. Dist TV India Limited', 2024 SCC OnLine Del 1694.
3. 'J. R. Kapoor vs. Micronix India', 1994 Supp (3) SCC
215.
4. 'M/s Vajiram & Ravi IAS Study Centre LLP Vs. M/s Vajirao & Reddy Institute Pvt. Ltd.', CS (COMM) 43/2019, decided by Hon'ble Delhi High Court on 14.09.2023.
9. Counsel for plaintiffs argued that his clients had got registered the trademark 'LUMAX', device marks and way back in 1980 and since then they are using the same. The sale of plaintiff no. 1 and plaintiff no. 2 in the year 2021 were more than Rs. 1000 crores whereas the defendant used to earn only Rs. 3-4 lacs from his business. The plaintiffs spend a lot of money on the advertisement of their trademark and device mark and due to supreme quality, its headlights, taillights, indicators CS (COMM) No.: 311/21 Page No. 15/34 Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 16 ~ and other lights of the two, three and four wheelers have acquired a distinctive name which is associated with only plaintiff. But the defendant, in order to ride upon the popularity and goodwill of the plaintiffs' product, started wrapping automobile lights in packagings bearing the device marks and suggesting that the goods contained in those boxes were of the plaintiff. Subsequently, he started writing the word 'YUCOMAX' on packaging and thatwords is deceptively similar to the trademark 'LUMAX' of the plaintiff. In this way, the defendant is causing huge loss to the plaintiff.
10. The plaintiff had moved an application no. 259394 under class 12 on 15.09.1969 for registration of 'LUMAX' device and the same was allowed as suggested by status certificate Ex. PW1/11.
The plaintiff had moved another application no. 426009 under class 11 on 21.08.2019 for registration of word mark LUMAX and the same was allowed as suggested by status certificate Ex. PW1/13.
Another application no. 3940924 was moved under class 99 by plaintiff on 10.09.2018 for registration of word mark CS (COMM) No.: 311/21 Page No. 16/34 Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 17 ~ 'TECHNOMAX' which was allowed and the same is valid till 10.09.2028 as shown by Ex. PW1/13.
Plaintiff had moved another application no. 3940925 in class 99 on 10.09.2018 for registration of mark 'TECHMAX' and the same was allowed and it is valid till 10.09.2028 as shown by Ex. PW1/13.
Another application no. 3940926 in class 99 was moved by plaintiff on 10.09.2018 for registration of word mark LUMAX TECHNOMAX and the same was allowed and it is valid till 10.09.2028 as shown by status certificate Ex. PW1/13.
Another application no. 3940927 in class 99 was moved by plaintiff on 10.09.2018 for registration of word mark LUMAX TECHNOMAX which was allowed and it is valid till 10.09.2028 as shown by the status certificate Ex. PW1/13.
An application no. 3634678 in class 99 was moved by plaintiff on 13.09.2017 for registration of device mark and the same was allowed which is valid till 13.09.2027 as shown in status certificate Ex. PW1/13.
An application no. 3634681 in class 99 was moved by plaintiff on 13.09.2017 for registration of device mark CS (COMM) No.: 311/21 Page No. 17/34 Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 18 ~ and the same was allowed which is valid till 13.09.2027 as shown in status certificate Ex. PW1/13.
An application no. 426009 in class 11 was moved by plaintiff on 21.08.1984 for registration of word mark LUMAX with user detail w.e.f. 01.09.1972 and the same was allowed which is valid till 21.08.1984 as shown in status certificate Ex. PW1/13.
An application no. 3634679 in class 99 was moved by plaintiff on 13.09.2017 for registration of device mark and the same was allowed which is valid till 13.09.2027 as shown in status certificate Mark H. Similar are other certificates Mark H which were registered on application nos. 3634680, 4821977 and 4821978.
11. Above certificates show that plaintiffs are not only the prior user of trademark LUMAX TECHNOMAX and their variants and device marks and but also the prior proprietor of those marks as they had adopted them way back in 1969 and 1980.
On the other hand, it is the case of the defendant himself in written statement that he adopted the trade device CS (COMM) No.: 311/21 Page No. 18/34 Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 19 ~ YUCO in 2019 and got it registered in the same year. He adopted the trademark LUMAX in 2022 and he moved application for registration thereof but it has still not been registered. Hence the defendant is subsequent user of the device mark YUCO and trademark YUCOMAX.
12. In order to show that defendant is using the trademark and trade device of the plaintiff on its packaging, the plaintiff is relying upon two types of documents. First is the investigator's report and invoice issued by defendant to investigator when he is said to have purchased some lights from him and photographs of those purchased lights. The other piece of evidence is the local commissioner's report who inspected the premises of the defendant on the order of this court.
13. A person namely Zulfikar Rana is said to have visited the premises of the defendant in Tri Nagar as well as Narela and as per evidence of PW1, he purchased some lights from defendant packagings of which bear the trademark and trade dress of the plaintiff. But the plaintiff did not examine investigator Sh. Zulfikar Rana as a witness and due to that reason, his report Ex. PW1/17 dated 03.09.2021 and his affidavit Ex. PW1/17 cannot be taken into account because the proper person for proving the report was Mr. Zulfikar Rana himself. No explanation has been putforth by plaintiff & why they did not examine the investigator. Page nos. 131, 132 and 133 of the CS (COMM) No.: 311/21 Page No. 19/34 Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 20 ~ investigator's report bear some photographs of the vehicle lights which are said to have been purchased from defendant. Those photographs show that the device marks and and word the YUCOMAX are mentioned on them. But the plaintiff has failed to prove, due to non-examination of investigator, that the goods contained in those packagings were purchased from the defendant and due to that reason, these photographs remain unproved. Hence, it cannot be said that plaintiff has proved, with the help of these photographs, that the defendant had infringed the trademark and trade device of the plaintiff.
14. Two local commissioners were appointed to inspect the premises of defendant on 09.06.2022 pursuant to which one of them namely Dilip Pandita visited the premises no. 2774/245, Hansa Puri, Tri Nagar, Delhi on 11.06.2022 and came to know that the premises had already been vacated and on enquiry, they reached to another premises no. 2707/202, Omkar Nagar - A, Tri Nagar, Delhi where the defendant was found present and disclosed that he was the sole proprietor of M/s Hindustan Auto Industries. During inspection, the local commissioner found various carton bearing trade device and YUCO and YUCOMAX.
CS (COMM) No.: 311/21 Page No. 20/34Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 21 ~ The local commissioner made inventory of impugned goods and released to defendant on supardari. Photograph of the seized goods were also taken. The recovered packagings bear the device mark of the plaintiff and its one line is in red colour and other in blue. Other recovered boxes contain the other device mark of the plaintiff. Almost all packaging bears word YUCOMAX.
15. Comparison of the packaging of both parties show that both have device mark of the plaintiff in the same colour. They further bear another device mark (two slanting lines) and both lines are in the same colours i.e. Red and Yellow.
CS (COMM) No.: 311/21 Page No. 21/34Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 22 ~ Plaintiffs and defendant are in the same kind of business. They manufacture and sell light apparatus for automobile and vehicles, head light, tail light and other light fittings for the vehicles and their distribution network is the same. Their products are mostly purchased by the mechanics directly either from wholesales or retailers to use light or indicators. These mechanics are not learned fellows so as to distinguish between the products of plaintiff and defendant in view of above mentioned similarities. The end users are also the same. So, it is held that packaging used by the defendant is capable of creating confusion in the minds of general public that products contained in them have been manufactured and offered for sale by plaintiffs.
16. In 'Prasar Bharti Vs. Dist TV India Limited' (Supra), the competition was between trademark 'Dish TV' of the plaintiff and 'DD Free Dish' of the defendant and the Hon'ble Delhi High Court held that both trademarks were not the same and one of the probable reason for holding so, as mentioned in para no. 32 of the judgment, was that the word 'Dish' was a commonly used word for dish antenna which was an essential component for receiving the service and hence the trademark was descriptive.
In "J. R. Kapoor vs. Micronix India" (Supra), the competition was between 'Micronix' and 'Microtel' and the CS (COMM) No.: 311/21 Page No. 22/34 Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 23 ~ Hon'ble Delhi High Court did not deem both marks similar holding that the word 'Micro' was descriptive in nature.
In the case in hand, the trademark of the plaintiffs are LUMAX, TECHNOMAX and their variants and the word mark used by the defendant is YUCOMAX. The word 'MAX' is common in both marks. By no stretch of imagination, the said word can be said to be descriptive in nature and rather it is suggestive as held by the Hon'ble Delhi High Court in 'Havells India Limited Vs. L Ramesh', (Supra) in regard to the trademark 'STANDARD'.
So, the judgments relied upon by the defendant are not applicable in the case in hand.
17. In "Pankaj Goel Vs. Dabur India Ltd." 2008 (38) PTC49(Del), competition was between mark 'Hajmola' of the plaintiff and 'Rasmola' of the defendant and the Hon'ble Delhi High Court held both similar in following words :-
"20. We find in the present case the Appellant's and Respondent/ Plaintiff's mark are not only similar but their products are identical and are purchased by the same class of customers and the said goods are sold through the same trading channel. In our view the trinity of factors makes for a case for confusion and consequently for passing off. Appellant's subsequent adoption of a similar mark seems prima facie dishonest and no amount of user can cure it. In case the injunction as granted by this Court is not CS (COMM) No.: 311/21 Page No. 23/34 Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 24 ~ continued, the use of the same mark by the Appellant is likely to deceive the public at large.
23. The Appellant's other argument that the Respondent/Plaintiff has itself permitted the use of the mark SIDHMOLA, SATMOLA AND CHATMOLA, does not impress us. A private settlement executed by the Respondent/Plaintiff cannot offer a licence to the world at large to infringe its mark HAJMOLA. Even otherwise we are of the view that use of similar marks by a third party cannot be a defence to an illegal act of passing off. In CENTURY TRADERS VS. ROSHAN LAL DUGGAR & CO. reported in AIR 1978 Delhi 250 a Division Bench of this Court has held as under :-
"Thus the law is pretty well settled that in order to succeed at this stage the appellant had to establish user of the aforesaid mark prior in point of time than the impugned user by the respondents."
In fact, in CASTROL LIMITED VS. A.K. MEHTA reported in 1997 PTC (17) 408 DB it has been held that a concession given in one case does not mean that other parties are entitled to use the same. Also in PRAKASH ROADLINE VS. PRAKASH PARCEL SERVICE reported 1992 (2) Arbitration Law Reporter 174 it has been held that use of a similar mark by a third party in violation of Plaintiff's right is no defence."
In 'M/s Amar Singh Chawal Wala Vs. M/s Shree Vardhman Rice and Genl. Mills', ILR (2009) VI Delhi 399, the CS (COMM) No.: 311/21 Page No. 24/34 Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 25 ~ competition was between trademarks 'GOLDEN QILLA', LAL QILLA, NEELA QILLA and NEELA QILLA on one side and 'HARA QILLA' on the other side. The hon'ble High Court held both marks similar in following words :-
"17. In the instant case as far as the registered marks in favour of the Plaintiff are concerned, applying the test laid down in Kaviraj Pandit it is seen that the essential feature of the mark is the word „QILLA€. Whether the word is spelt as QILLA or KILLA, or even written in a different style or colour combination. To the customer who seeks to purchase the QILLA brand rice both names would sound phonetically similar. The customer is likely to ask the retailer: "Can I have the QILLA brand rice?" In the considered view of this Court, it is this essential feature of the Plaintiff€s mark, i.e the word QILLA, which has been adopted by the Defendant No.1. That the defendants have also used a pictorial representation of the device in the form of a fort also indicates that the Defendants too intended the same meaning to be assigned to the word, which is an Urdu one meaning "fort". Therefore, though the device QILLA is depicted in a slightly different way by the defendant, it is deceptively similar to the device used by the Plaintiff. Further the use is in respect of the same commodity, rice. Therefore there is every possibility f there being a confusion created in the mind of the purchaser of rice that the product being sold by the Defendant is in fact a product that has emanated from or has been manufactured by the Plaintiff."
In "Amritdhara Pharmacy Vs Satya Deo", 1963 AIR 449, the competition was between 'Amritdhara' and CS (COMM) No.: 311/21 Page No. 25/34 Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 26 ~ 'Lakshmandhara' and the Hon'ble Supreme Court held that the issue was to be examined by applying the test of an unwary purchaser having average intelligence and imperfect recollection. The Apex court held that even though comparison of the two names may disclose some points of differences, yet the unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of two products. In the case in hand also, the two device marks and of the plaintiff appearing on the defendant's packaging can cause the general public to believe that the goods contained in those boxes were of the plaintiff. The situation is further made grim by appearance of the word YUCOMAX on the boxes, because that word resembles with the trademark LUMAX, TECHMAX and TECHNOMAX of the plaintiff. Use of that word by the defendant on packaging with and CS (COMM) No.: 311/21 Page No. 26/34 Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 27 ~ trade devices of the plaintiff have highest degree of probability to influence the mechanics and lesser literate public to buy the products of the defendant taking them to be of the plaintiff.
18. It is no doubt true that there are innumerable entities and persons in this country who do business by using the word MAX but it is not the duty of the plaintiff to sue every such person. Similar were the arguments of the counsel for defendant in "Pankaj Goel Vs. Dabur India Ltd", (Supra)and following was held by the Hon'ble High Court :-
22. As far as the Appellant's argument that the word MOLA is common to the trade and that variants of MOLA are available in the market, we find that the Appellant has not been able to prima facie prove that the said 'infringers' had significant business turnover or they posed a threat to Plaintiff's distinctiveness. In fact, we are of the view that the Respondent/Plaintiff is not expected to sue all small type infringers who may not be affecting Respondent/Plaintiff business. The Supreme Court in NATIONAL BELL VS. METAL GOODS reported in AIR 1971 SC 898 has held that a proprietor of a trademark need not take action against infringement which do not cause prejudice to its distinctiveness. In EXPRESS CS (COMM) No.: 311/21 Page No. 27/34 Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 28 ~ BOTTLERS SERVICES PVT. LTD. VS. PEPSI INC. & OTHERS reported in 1989 (7) PTC 14 it has been held as under :-
"....To establish the plea of common use, the use by other persons should be shown to be substantial. In the present case, there is no evidence regarding the extent of the trade carried on by the alleged infringers or their respective position in the trade. If the proprietor of the mark is expected to pursue each and every insignificant infringer to save his mark, the business will come to a standstill. Because there may be occasion when the malicious persons, just to harass the proprietor may use his mark by way of pinpricks.... The mere use of the name is irrelevant because a registered proprietor is not expected to go on filing suits or proceedings against infringers who are of no consequence.... Mere delay in taking action against the infringers is not sufficient to hold that the registered proprietor has lost the mark intentionally unless it is positively proved that delay was due to intentional abandonment of the right over the registered mark. This Court is inclined to accept the submissions of the respondent No. 1 on this point....The respondent No. 1 did not lose its mark by not proceeding against insignificant infringers..."
In fact, in DR. REDDY LABORATORIES VS. REDDY PAHARMACEUTICALS reported in 2004 (29) PTC 435 a Single Judge of this Court has held as under :-
CS (COMM) No.: 311/21 Page No. 28/34Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 29 ~ "..., the owners of trade marks or copy rights are not expected to run after every infringer and thereby remain involved in litigation at the cost of their business time. If the impugned infringement is too trivial or insignificant and is not capable of harming their business interests, they may overlook and ignore petty violations till they assume alarming proportions. If a road side Dhaba puts up a board of "Taj Hotel", the owners of Taj Group are not expected to swing into action and raise objections forthwith. They can wait till the time the user of their name starts harming their business interest and starts misleading and confusing their customers."
19. As per Section 17 of the Trademarks Act, 1999, if a trademark consisting of several matters is registered, it shall confer upon proprietor exclusive right to use the trademark taken as a whole and it does not confer any exclusive right upon him on matter forming only a part of the whole of the trademark. In the case in hand, the dispute is over the word MAX as it suffixes 'LU', 'TECHNO' and 'TECH' words used by the plaintiff. The defendant uses that word after the word YUCO. In this regard, DW1 deposed in cross-examination that he was well aware that the trademark of the plaintiff was LUMAX, TECHNOMAX and TECHMAX. Despite being aware of that mark, he adopted the trademark YUCOMAX in 2022. It is pertinent to mention that father of defendant was in automotive part business in 1980 and the defendant joined him in 1995. So, defendant is in that CS (COMM) No.: 311/21 Page No. 29/34 Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 30 ~ business since 1995. On the other hand, plaintiffs are manufacturing such lights since 1969 and had a sale volume of more than Rs. 1,000 crores in 2020-21. So, the defendant would be well aware in 2019 that the word mark YUCOMAX adopted by him in 2022 was similar to the trademark LUMAX, TECHMAX and TECHNOMAX of the plaintiff and hence, adoption of that trademark by defendant in these circumstances can be said to be dishonest adoption and he cannot take shelter under Section 17 (2) of Trademarks Act, 1999 as held by Hon'ble Delhi High Court in "Havells India Limited Vs. L Ramesh", 2022 DHC 720.
Moreover, the income tax returns of the defendant show that his total income in the relevant years was not more than Rs. 5 lacs. On the other hand, the sale of the plaintiffs in those years was above Rs. 1,000 crores. The plaintiff nos. 1 and 2 are registered at BSE and NSE. The defendant is nowhere near to that feat.
20. In view of above discussion, all these issues are decided in favour of plaintiffs and against defendant.
Issue nos. 4 & 5
21. Counsel for plaintiff argued that the investigator had visited the premises of the defendant on 14.07.2021 and 03.09.2021 and purchased 110 boxes containing the indicators of CS (COMM) No.: 311/21 Page No. 30/34 Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 31 ~ the motorcycle. When the local commissioner inspected the premises on 11.06.2022, he recovered about 3587 products. The purchase and recovery shows that the defendant easily had sold 38500 pieces between the date of purchase by investigator and recovery by local commissioner. As per invoice issued by defendant to investigator, one piece of light was sold in Rs. 75/-. So, multiplying that amount with the recovered quantity of products i.e. the sold quantity of products i.e. 38500, the total sale made by the defendant between two dates was pieces 38500 x Rs. 75 = Rs. 28,87,500/-. Including everything, the plaintiff is entitled to damages of Rs. 40 lacs from the defendant.
On the other hand, counsel for defendant argued that investigator's report has remained unproved and hence it cannot be said that the defendant had sold investigator the automobile light and indicators bearing the trade device or trademark of the plaintiff. So, investigator's report cannot be taken into account. He further argued that the defendant used to sell one indicator in Rs. 100/- as mentioned in invoices filed by him.
22. It has already been held that plaintiff has failed to prove the investigator's report. So, the report and accompanying photographs cannot be taken into account. But DW1 admitted in cross-examination that the invoice Mark 'J' dated 03.09.2021 was his invoice. Hence that document can be said to be proved by the plaintiff due to admission by defendant. As per that CS (COMM) No.: 311/21 Page No. 31/34 Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 32 ~ invoice, the defendant had sold 110 sets of boxes of indicators but it is no where mentioned in Mark 'J' that the indicators were contained in boxes bearing the trade dress or trademark of the plaintiff. Hence the plaintiff has failed to prove that vide invoice Mark 'J', the defendant had sold investigator the bike indicators which bore the trademark of the plaintiff. Hence Mark J cannot be taken into account for deciding the issue of damages.
23. As per the local commissioner's report and superdginama, several empty boxes and other boxes containing the products were recovered from the premises of the defendant. Empty boxes are not being taken into account. The report shows that following quantity of the impugned goods were recovered :-
1. 37 YUCO big boxes containing 10 small boxes each with product.
2. 30 YUCO small boxes containing products.
3. 20 YUCOMAX big boxes 10 small boxes each.
4. 83 YUCOMAX small boxes containing products.
In all 370 + 30 + 200 + 83 = 683 impugned vehicle lights were seized from the premises of the defendant. Mark J is the invoice vide which investigator is said to have purchased vehicle lights from the defendant. It is mentioned in that document that the plaintiff had sold bike indicators the cost of which per piece ranged from Rs. 44 to 75.
CS (COMM) No.: 311/21 Page No. 32/34Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 33 ~ The defendant has also filed his invoices Ex. DW1/17 in which the prices of indicators/ per piece have been mentioned as Rs. 16, 45.68, 18, 70.98, 53.99, 50, 17.67 etc.. So, as per invoices placed on record by plaintiff as well as defendant, the price of every light ranges from Rs. 16 to Rs. 75. The local commissioner did not report about the price of recovered goods. The photographs clicked by him also do not show the price of the products. So, for guesswork, the mean of maximum and minimum price is taken as the price of one piece of light and it comes out to Rs. 16 + Rs. 75/2 = Rs. 45.5/-. The recovered quantity of light is 683 and in this way, the total value of recovered goods comes out to pieces 683 x 45.5 = Rs. 31,076/-.
Neither plaintiff nor defendant filed their statement of account to show the loss suffered by plaintiff and gain achieved by defendant after adopting the device marks etc. of the plaintiff by defendant.
Taking into account above discussion, fee of the local commissioner and other expenses, the total damages to the tune of Rs. 2 lacs is granted to the plaintiff against defendant.
Issue no. 6
24. Consequent to decision on above issues, following is held:-
CS (COMM) No.: 311/21 Page No. 33/34Lumax Industries Limited and Ors Vs. Hindustan Auto Industries ~ 34 ~
1. Defendant, its associate and agents etc. are permanently restrained from manufacturing, marketing, selling (including on online platforms) the packaging bearing trademark devices and and trademark YUCOMAX or any other variant identical or deceptively similar to the Plaintiffs' trademark "MAX" series including "LUMAX", 'TECHNOMAX', 'LUMAX TECHNOMAX', 'LUMAX TECHMAX', 'NUMAX', 'DKMAX', etc..
2. The defendant is permanently injuncted from passing off its goods as the goods of the plaintiffs.
3. The plaintiffs are entitled to damages of Rs. 2 lakhs from the defendant.
25. Decree sheet be prepared accordingly. File be consigned to record room after necessary compliance.
Announced in open court Digitally
on 06th day of December, 2024
signed by
UMED
UMED SINGH
SINGH Date:
2024.12.06
04:23:24
+0530
(UMED SINGH GREWAL)
District Judge-Commercial Court-2
North District, Delhi.
CS (COMM) No.: 311/21 Page No. 34/34
Lumax Industries Limited and Ors Vs. Hindustan Auto Industries