In the case of V. Lakshminarayanasamy and Another vs. Siva Bhaskaren and Another, the Madras High Court ruled in favor of the petitioners, V. Lakshminarayanasamy and Suguna Lakshminarayanasamy, who had sought rectification of the trademark “SUGUNA” registered by the respondent, Siva Bhaskaren, under Registration No. 1171847 in Class 7 for goods such as wet grinders, mixer grinders, and washing machines.
Case of the Petitioners
The petitioners, who had been using the “SUGUNA” mark since 1959 for products including motors and fans, contended that the respondent’s mark was deceptively similar and likely to cause confusion among consumers. They presented evidence of their long-standing and continuous use of the “SUGUNA” mark, asserting that it had gained substantial goodwill and market recognition over several decades. They claimed that the respondent had adopted the mark with dishonest intent, aiming to benefit from the established reputation of the petitioners. They argued that the respondent’s use of the identical mark for overlapping classes of goods was designed to mislead customers and amounted to trademark infringement and passing off.
Response of the Respondent
In response, the respondent contended that he had been using the “SUGUNA” mark since 1994 for wet grinders and related home appliances. He claimed that his mark was distinct from the petitioners’ and argued that there was no likelihood of confusion since the products were different. Furthermore, the respondent maintained that he had lawfully registered the mark and had been using it continuously and in good faith, thus asserting rights as an honest and concurrent user under the Trade Marks Act, 1999.
The Court’s Conclusion
After considering the evidence, the court concluded that the petitioners were the prior users of the “SUGUNA” mark, having obtained their first registration in 1964 and having demonstrated continuous usage since 1959. The respondent, however, failed to substantiate his claim of using the mark since 1994, with documentation showing actual use only from 2001 onwards. The court also found that the respondent’s mark was deceptively similar to the petitioners’ mark, especially given the overlap in trade channels and the identical consumer base. Despite minor visual differences, the court held that the similarities between the marks were likely to confuse consumers, particularly since both parties operated in related industries.
The court rejected the respondent’s defense of honest and concurrent use, emphasizing that the respondent had not provided a legitimate reason for adopting the “SUGUNA” mark, especially in the face of the petitioners’ long-standing prior use. It held that the registration of the respondent’s mark contravened Sections 9, 11, and 18 of the Trade Marks Act, 1999, as it created a likelihood of confusion and misrepresentation. The court further ruled that the petitioners, as the prior users of the mark, were entitled to protection, even though their products primarily differed from those of the respondent. The court underscored that the petitioners’ long-established goodwill extended beyond their specific products and that any deceptive similarity was unacceptable under the law.
As a result, the court ordered the cancellation of the respondent’s trademark registration for the “SUGUNA” mark and directed the Registrar of Trademarks to rectify the register accordingly. The petition was allowed, and the respondent’s registration was expunged. However, the court did not award any costs.
Citation: V. Lakshminarayanasamy v. Siva Bhaskaren, OP (TM) No.165 of 2023 (H.C. Madras Sept. 27, 2024). Available at: http://indiankanoon.org/doc/75184664/, Visited on: 06/10/2024.
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