The Hon'ble Delhi High Court in GTZ India Pvt. Ltd. v. Artek Surfins Chemicals Ltd. & Anr., FAO (COMM) 60/2024, dated May 31, 2024, dismissed an appeal against an order granting interim injunction in favor of the respondents. The Court upheld the injunction restraining the appellant from using specific alpha-numeric combinations in their product names, finding prima facie evidence of passing off and potential trademark infringement.
Facts of the Case:
The respondents, Artek Surfins Chemicals Ltd. and its affiliate, filed a suit seeking a permanent injunction against GTZ India Pvt. Ltd. (the appellant) to restrain them from using specific alpha-numeric combinations like "786", "2048M", "2048R", "1085M", "1085R", "511A", "511B", "511C", etc., in their product names. These combinations were claimed to be unique identifiers for the respondents' products
in the electroplating industry. The respondents asserted that they had been using these alpha-numeric combinations as part of their trademarks for several years, with some uses dating back to 1999. They produced invoices to support their claim of prior use.
The respondents argued that these combinations had acquired a secondary meaning and were recognized by customers as source identifiers for their products.
They claimed that it was a common practice in the industry for manufacturers to adopt different alpha-numeric combinations for their products, with a particular combination being unique to a specific brand and product.
GTZ, on the other hand, claimed to have adopted similar alpha-numeric combinations in conjunction with its trademark "ULTRABRITE" since 2018. GTZ contended that it added these combinations to identify categories and varieties of its products. GTZ argued that the respondents could not claim exclusive rights over parts of their trademarks and invoked the anti-dissection rule to contest the action.
The respondents sent a cease-and-desist notice to GTZ on January 2, 2023. When GTZ did not comply, the respondents filed the suit. Initially, the Commercial Court dismissed the respondents' application for interim injunction, but this decision was set aside by the Delhi High Court, which remanded the matter for fresh consideration. Upon reconsideration, the Commercial Court granted the interim injunction in favor of the respondents. GTZ appealed this decision to the Delhi High Court.
Issue:
Whether the use of specific alpha-numeric combinations by a competitor in the chemical industry constitutes trademark infringement and passing off when another company has used these combinations as part of their product identifiers for several years?
Held by the Court:
The Hon'ble Delhi High Court in FAO (COMM) 60/2024 held that:
Court observed that there was no dispute regarding the use of the impugned alpha-numeric combinations to identify specific products and categories in the electroplating industry. The Court held that, prima facie, the respondents had established prior use of these alpha-numeric combinations as part of their trademarks, with evidence dating back to 1999. The Court opined that these combinations had acquired a secondary meaning and were exclusively associated with the respondents' products. It further held that GTZ's adoption of identical alpha-numeric combinations for similar products, without a reasonable explanation, prima facie supported the respondents' claim of passing off.
Court rejected GTZ's contention that the alpha-numeric combinations were common to trade, noting the lack of evidence of similar use by other industry players. The Court held that while the anti-dissection rule generally requires trademarks to be seen as a whole, an exception exists where a prominent part of the mark itself is a source identifier. In such cases, the Court opined, the proprietor of the trademark would be entitled to protection for that part, even if it's not registered as a separate trademark. The Court observed that the competing trademarks 'ULTRABRITE' and 'TECHNOBRITE' bear some similarity, and the additional use of the impugned alpha-numeric combinations unique to the respondents' products was sufficient to establish a prima facie case of infringement.
Court held that the respondents' case of passing off was well-founded, as the use of these alpha-numeric combinations could mislead customers into believing GTZ's products were those of the respondents. The Court referred to the Supreme Court's explanation of passing off in Wander Ltd. & Anr. v. Antox India (P) Ltd., emphasizing that it involves a misrepresentation by a trader to prospective customers, calculated to injure the business or goodwill of another trader. The Court concluded that GTZ's unexplained adoption of identical alpha-numeric combinations used by the respondents was sufficient, at the prima facie stage, to establish that the use of these combinations required protection.
Court observed that out of millions of possible combinations, GTZ chose to copy those used by the respondents, which was prima facie evidence of potential infringement and passing off. Finding no grounds to interfere with the Commercial Court's judgment, the Court held that the learned Commercial Court had exercised its discretion reasonably and in accordance with settled principles. The Court dismissed the appeal, emphasizing that at the interim stage, the respondents had established a prima facie case, and the balance of convenience lay in their favor.
Relevant Sections:
Section 17(2)(b) of the Trade Marks Act, 1999
Section 2(1)(m) of the Trade Marks Act, 1999
Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908
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electroplating chemicals trademark dispute
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