In the case between Biswanath Hosiery Mills Limited (“Plaintiffs”) and Micky Metals Limited (“Defendant”), the Calcutta High Court ruled in favor of the Plaintiffs in an undefended suit for passing off of the trademark “LUX.” The Plaintiffs, engaged in manufacturing and distributing hosiery products under the well-known “LUX” trademark since 1957, contended that the Defendant had unlawfully used a deceptively similar trademark, “LUX TMT,” for their steel products, causing confusion among the general public.
The Plaintiffs’ trademark “LUX” was first registered in 1972, and they have continued to use it both in India and internationally. The Plaintiffs learned in 2019 that the Defendant had applied for registration of the “LUX TMT” trademark and had launched products under the same. Despite a notice from the Plaintiffs asking the Defendant to cease using the mark, the Defendant continued to use a slightly modified version of the “LUX TMT” logo, prompting the Plaintiffs to file the present suit.
The Court held that the Plaintiffs, as prior users of the “LUX” trademark, enjoyed superior rights, and the Defendant’s use of a visually and phonetically similar mark constituted passing off. The use of the “LUX” mark by the Defendant in a different class of goods (steel products) did not absolve them from liability, as passing off can occur even if the goods are dissimilar, particularly when the trademark has acquired significant goodwill and reputation. The Court found that the Defendant’s actions were calculated to mislead the public into believing that their products were associated with the Plaintiffs.
The Court granted a decree of permanent injunction against the Defendant, restraining them from using the mark “LUX” with any prefix or suffix. The Defendant was also ordered to account for all profits earned from the use of the “LUX” mark since 2009. The suit was thereby disposed of.
Citation: Biswanath Hosiery Mills Ltd. v. Micky Metals Ltd., IP-COM/9/2024 (H.C. Calcutta Sept. 6, 2024). Available at: https://indiankanoon.org/doc/145098059/
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