Biswanath Hosiery Mills Ltd. & Anr. vs. Micky Metals Ltd.

Background

The plaintiffs, Biswanath Hosiery Mills Ltd. and its subsidiary, brought this action against Micky Metals Ltd. for the alleged passing offof their trademark “LUX.” The plaintiffs claimed the defendant’s use of “LUX TMT” for its steel products was visually and phonetically similar, causing consumer confusion and exploiting the goodwill of their long-established “LUX” brand.

Case Summary

1. Trademark History:

? The plaintiffs have been using the “LUX” trademark since 1957, and the wordmark was registered in India in 1972.

? Additional trademarks, such as “LUX COZI” and “LUX MAESTRO,” have also been registered in various categories since 2002 and 2018, respectively.

2. Defendant’s Trademark Application:

? In 2019, the defendant filed for the trademark “LUX TMT” for steel products, claiming no relation to the plaintiff’s business category.

? Despite notice to desist, the defendant continued to use and advertise “LUX TMT,” leading to this legal action.

3. Legal Relief Sought:

? The plaintiffs sought a permanent injunction restraining the defendant from using the “LUX” trademark or any deceptively similar variation.

? They also demanded an accounting of profits earned by the defendant through the misuse of the mark.

Issues Raised

1. Trademark Infringement:

? Whether the defendant’s use of “LUX TMT” constituted infringement under the Trade Marks Act, 1999.

2. Passing Off:

? Whether the defendant’s actions amounted to passing off, creating a false association with the plaintiffs’ goodwill.

3. Deceptive Similarity:

? Whether the “LUX TMT” mark was deceptively similar to the plaintiffs’ trademark.

Key Decisions Referenced

The court relied on several precedents to frame its judgment:

1. T.V. Venugopal vs. Ushodaya Enterprises Ltd. [(2011) 4 SCC 85]:

? Addressed the priority of long-standing trademark users over subsequent adopters.

2. Aktiebolaget Volvo of Sweden vs. Volvo Steels Ltd. of Gujarat [1997 SCC Online Bom 578]:

? Highlighted the broader remedies available in passing-off actions compared to trademark infringement.

3. Sony Kabushiki Kaisha vs. Mahaluxmi Textile Mills [(2009) SCC Online Cal 531]:

? Held that the dissimilarity of goods is not a defense against passing off when the trademark’s goodwill spans multiple categories.

4. Renaissance Hotel Holdings Inc. vs. B. Vijaya Sai & Ors. [(2022) 5 SCC 1]:

? Affirmed that misrepresentation causing damage to goodwill justifies passing-off actions, even when goods differ.

5. Mahindra & Mahindra Ltd. vs. Mahendra & Mahendra Paper Mills Ltd. [(2002) 2 SCC 147]:

? Clarified that longstanding use and reputation are essential factors for protection against passing off.

Court’s Observations

1. Deceptive Similarity:

? The court found “LUX TMT” deceptively similar to the plaintiffs’ “LUX” trademarks, both visually and phonetically. This similarity was likely to confuse consumers and mislead them into associating the defendant’s products with the plaintiffs.

2. Passing Off:

? The defendant’s actions were classified as an attempt to benefit from the goodwill of the plaintiffs’ mark, amounting to commercial piracy.

3. Goodwill and Reputation:

? The plaintiffs’ “LUX” brand was recognized as a household name, with an extensive presence in domestic and international markets since 1957.

4. Dissimilarity in Goods:

? The court rejected the defense that steel products differ from hosiery goods, ruling that the principle of passing off protects goodwill irrespective of the class of goods.

Judgment

1. Permanent Injunction:

? The defendant was permanently restrained from using the trademark “LUX” with or without prefixes or suffixes.

2. Accounting for Profits:

? The defendant was ordered to account for all profits earned through the use of the “LUX” mark since October 2009 and pay them to the plaintiffs.

3. Costs:

? The court awarded costs to the plaintiffs, emphasizing the defendant’s malafide intent.

Significance

This case reinforces the doctrine of passing off as a robust protection against unfair competition, even for dissimilar goods. It underscores the judiciary’s role in safeguarding trademark goodwill and consumer trust against exploitative practices.