1 April 2021
A brand’s identity is its most prized possession. Consumers tend to subconsciously look for the designs, labels, colours, words, etc., to verify the authenticity of a brand while buying a product or availing a service. An infringement of the same has far reaching consequences. If similar brands are left on the market and not stopped, the brand faces repercussions by losing legitimacy in the market, the customer’s trust, and future business.
In the case of Freemans Measures Pvt Ltd. versus Mankaran Bhandari & Others, the Delhi High Court passed an order restricting the defendant from using the designs, trade dresses and label marks which were identical to those of the plaintiff.
The plaintiff company, Freemans Measures Pvt Ltd., was established in the 1950s and was one of the first measuring tape companies in India. It held a major stake in the industry and enjoyed a great reputation. One of the defendants, Ambika Overseas, manufactured and supplied different types of tools and measuring tapes in the domestic and international markets.
The plaintiff claimed that the defendant’s measuring tapes, tools, etc., were identical to its registered designs. The label marks and trade dresses were also an almost identical reproduction of the plaintiff’s product packaging and trade dress for the goods sold under the trademarks ‘Hi-Wide’, ‘Hi-16’, ‘Hi-19’, ‘Hi-25’ and ‘Centiflex’ respectively. The plaintiff submitted that the mark ‘Hi-Wide’ was a coined term and had been in use since 1999 and the mark ‘Centiflex’ was in use since 2000. Their products were sold within India and internationally and had acquired reputation, goodwill, and the status of a ‘well-known’ mark.
In 2012, the plaintiff came to know about defendant’s same products bearing the mark and label of ‘Mi-19’, with minor changes but were deceptively similar to plaintiff’s ‘Hi-Wide’, ‘Hi-16’, ‘Hi-19’ and ‘Hi-25’. At another instance, the plaintiff found the defendant’s advertisement which displayed steel measuring tapes identical to the plaintiff’s registered designs under the mark ‘Fiber Plastika’.
They also submitted that the label mark and trade dress of the defendant’s products under the mark ‘Conflex’ was also an infringement of the plaintiff’s mark ‘Centiflex’. They claimed that the defendant had adopted such deceptively similar marks with an intention to ride upon the plaintiff’s reputation and goodwill and to pass off its goods as that of the plaintiff’s. They further argued that upon a mere glance, the design of the defendant’s product bearing the mark ‘Mi-19’ was a fraudulent imitation of the plaintiff’s trademark ‘Hi-16’, and ‘Fibertex’ was also a fraudulent imitation of the registered design of the plaintiff’s products sold under the trademark ‘Fiber Plastika’. The plaintiff contended that this was a clear case of infringement of trademark and copyright along with passing off and dilution. The plaintiff relied on the facts and submitted that since the one of the target markets for both the parties was rural and semi-rural areas, it was easier to confuse and deceive innocent customers.
It is important to note here that the defendant had not begun selling its products, therefore, the plaintiff had filed the suit in anticipation of an infringement, in order to restrain the action before it happens.
On the other hand, the defendants argued that they had never used the mark ‘Conflex’ for any of their products and did not intend to use it in the future, therefore, the question of infringement of the Plaintiff’s mark ‘Centiflex’ did not arise and any action of passing off held no merit. They denied that their measuring tapes were identical to that of the plaintiff’s. They also submitted that the trade dress of their products was not a copy of the plaintiff’s product packaging/ trade dress/ label. It was stated that the designs of the tools bore no resemblance to the plaintiff’s designs and the same were distinct. The defendant constantly maintained that they had never used and did not intend to use the marks ‘Mi-19’ and ‘Conflex’.
Rather, the defendant claimed that they had been using the marks ‘A-13’, ‘A-16’, ‘A-19’ where ‘A’ stood for ‘Ambika’ and the suffixes 13, 16, 19 stood for the width of the steel tape. They claimed that the marks were unique and distinct in appearance and bore no resemblance to that of the Plaintiff’s and therefore, the question of infringement, passing off, dilution or tarnishing held no merit. They also submitted that the shape of the measuring tape manufactured by the plaintiff was not novel or original and had been used by every other measuring tape manufacturer in the world and denied the accusations of false intent and the attempt to ride on the goodwill of the plaintiff.
Moreover, the defendant submitted that they had never launched the alleged infringing products and as a result, the plaintiff company had suffered no loss of business or goodwill in India or abroad. On the contrary, they claimed that the suit had been filed to harass them and that the plaintiff had failed to establish a strong case in its favour.
In reply, the plaintiff submitted that the defendant had published an advertisement in a magazine, The Yellow Pages, which bore products with the impugned designs, label marks and trademarks ‘Mi-19’ and ‘Conflex’. They also contended that the defendant changed their mark from ‘Mi-19’ to ‘A-19’ after an order resolved a similar dispute between the two in 2012. They further submitted that even the modified trademark and trade dress did not solve the purpose and were deceptively similar to its registered intellectual property.
The defendants then deflected the blame on to another company which owned the marks since 2005 and with whom they had an agreement to use the impugned marks. The plaintiff denied this contention and stated that the other company could not assign the use of those marks to the defendants as they belonged to the plaintiff.
Based on the submissions of both the parties, the court sided with the plaintiff and stated that the measuring tapes manufactured by the defendant bore resemblance to the registered design of the plaintiff. It was also held that the defendant’s marks were similar to those of the plaintiff’s marks. The court passed an injunction restraining the defendant from using the marks ‘Mi-19’ and ‘Conflex’.
The consequences of trademark infringement are serious since a lot of forces are at play. In such situations, the courts seek to protect the interest of the consumers, the interest of the IP owner all the while discouraging and disciplining an infringer from committing such an act. Infringement can damage a brand’s reputation permanently, hence the courts adopt a strict approach while dealing with these matters. It is welcoming and reassuring for brand owners that IP courts recognise and uphold the seriousness of copying several brand elements as illustrated in this case.
Manisha Singh and Simran Bhullar discuss the case filed by Freemans Measures, a decades old measuring tape manufacturer, against the infringement of its trademark, trade dress and designs, as decided by the High Court of Delhi.
The article which was 1st published on Lexology.
For further information, please contact:
Manisha Singh, Partner, LexOrbis
manisha@lexorbis.com
