In a trademark dispute between Biswanath Hosiery Mills Limited (“Plaintiffs”) and Micky Metals Limited (“Defendant”), the Calcutta High Court ruled in favor of the Plaintiffs, granting a permanent injunction and other remedies against the Defendant for passing off the Plaintiffs’ well-known trademark “LUX.” The judgment, emphasized upon the Plaintiffs’ prior and continuous use of the trademark “LUX” since 1957 in connection with hosiery products.
The Plaintiffs alleged that the Defendant’s use of “LUX TMT” in connection with steel products constituted passing off by creating a likelihood of deception among the public and exploiting the goodwill associated with the Plaintiffs’ trademark. The Plaintiffs provided extensive evidence, including oral testimony and documentary records of trademark registrations, widespread use, and international reputation of the “LUX” brand. The Court observed that the Plaintiffs had registered the mark “LUX” across multiple classes and jurisdictions and had demonstrated substantial goodwill and market recognition.
Despite serving summons, the Defendant did not contest the suit, leaving it undefended. The Plaintiffs contended that the Defendant’s mark “LUX TMT” was deceptively similar to the Plaintiffs’ “LUX” trademark, both visually and phonetically, and that the similarity could mislead consumers into believing a connection between the two brands. The Plaintiffs argued that passing off occurs even when the goods in question belong to different categories, citing the principles established in several judicial precedents, including Sony Kabushiki Kaisha v. Mahaluxmi Textile Mills and Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd.
The Court upheld the Plaintiffs’ claims, stating that the Defendant’s use of “LUX TMT” amounted to passing off, as it was likely to cause confusion among consumers and was an act of commercial piracy. It further held that such use misrepresented the origin of the Defendant’s products and unfairly capitalized on the Plaintiffs’ reputation and goodwill.
The Court decreed a permanent injunction restraining the Defendant from using “LUX” or any similar mark in connection with its products. Additionally, it ordered the Defendant to account for profits earned from using the mark since October 1, 2009, until the decree’s date. The suit was thereby disposed of, along with any pending applications.
Citation: Biswanath Hosiery Mills Ltd. v. Micky Metals Ltd., IP-COM/9/2024, Calcutta High Court, Judgment dated Sept. 6, 2024. Available on https://indiankanoon.org/doc/145098059/
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