31 August, 2019
In 1982, the Indian automobile market welcomed Suzuki Motor (hereinafter also referred to as the “Plaintiff”), a Japanese automobile company which collaborated with the Government of India and Maruti Udyog Limited to manufacture cars in India. This remarkable market entry of a Japanese pioneer received a strange welcoming as an Indian company registered itself by the name of Suzuki (India) Limited (hereinafter referred to as the “Defendant”) in the year 1982 which marked the beginning of a long-going battle.
In 2005, Suzuki Motor (i.e. the Plaintiff) filed a suit for permanent injunction for restraining the defendants from infringing their trademark, passing off and rendition of accounts in the Delhi High Court. The plaintiff received some relief in the form of an interim order dated 12th December, 2005 wherein, the Delhi High Court vide an interim order restrained the defendants from using the name Suzuki as part of their trading name/corporate name.
Thereafter, the Plaintiff sought a decree under Order XII, Rule 6 of the CPC against the defendant on the ground that the defendant had not raised any defence in its written statement barring the challenge to the territorial jurisdiction of the court.
Submissions made by the Plaintiff
The Plaintiff extensively established its association with the name SUZUKI, which it claimed is the most principle feature of its corporate name and trading style since 1909. Considering its long-standing position in the industry, the Plaintiff affirmed that it enjoys tremendous goodwill, reputation and brand recall in respect of its trademark SUZUKI. The Plaintiff submitted that it is the registered proprietor of its trade mark Suzuki in about 169 countries worldwide (with multiple registrations in most of the countries), including India. It further stated that by reason of such continuous and extensive advertising, the trade mark Suzuki has become distinctive of the plaintiff all over the world, including India. The plaintiff got its trade mark Suzuki registered in India in the year 1972.
Thereafter, the Plaintiff informed of its introduction in the Indian market in 1982 which was well-advertised in the print media. As per the Plaintiff’s claims, the defendant who ought to have been well aware of the plaintiff’s statutory rights, maliciously adopted the name ‘Suzuki India Limited’ to encash upon the widespread goodwill, name and reputation attached to the plaintiffs name and mark Suzuki and to pass off and mislead the public that the business of the defendant had some connection with the plaintiff.
It further submitted that the word “Suzuki’ is the family name of its founder and thus is not related to the defendant in any manner. The Plaintiff asserted that the defendant had no valid reason for using its trade mark/name and that the same has no connection whatsoever to the infringing party.
Further, the Plaintiff strongly refuted the defendant’s MD claims that the defendant’s trademark was inspired by someone whose name was Suzuki and that the same was a mere afterthought.
Submissions made by the Defendant
On the contrary, the defendant claimed that the present suit was not filed with any cause of action against it. It stated that it has been using the trademark/name ‘Suzuki’ as part of its trade name – Suzuki India Limited since 1982 and has earned substantial goodwill by way of honest concurrent and interrupted use of its trademark.
Its major argument revolved around the delay of over 25 years by the plaintiff in bringing an action against and asserted that the same should be strictly construed as acquiescence on part of the plaintiff under the Trade Marks Act, 1999. It further alleged that the plaintiff had indulged in forum shopping by having filed the present suit before the Delhi High Court.
Further, it stressed that the plaintiff has registered its trademark in respect of a specific category of goods i.e. in the automobiles category which is distinct from the goods claimed by the defendant. It stated the plaintiff can claim reputation in the trademark/name Suzuki only for automobiles and the same would not ipso facto cover other classes of goods.
As regards, its justification for adopting the word ‘Suzuki’, the defendant asserted that the same was adopted by his father on the name of his friend. Moreover, it claimed that the word ‘Suzuki’ is a common surname in Japan; and various companies in India are using the said name as part of their corporate names therefore, the Plaintiff cannot claim monopoly to use the name Suzuki.
Findings
Denials made by the defendant
The court specifically noted that the defendant had chosen not to specifically deny the important submissions made by the plaintiff in its plaint and thus the same are “deemed to have been admitted” under Order VIII Rule 5 of the CPC. The court further stated that such vague/evasive denial of the defendant in its written statement was sufficient to pass a decree against the defendant.
Well-known mark
The court observed that the plaintiff is the proprietor of a well-known trademark which is duly registered with the Registrar of Trademark thus, the defendant had dishonestly adopted the same as part of its company with dishonest intention to encash the goodwill and reputation of the plaintiff.
Placing reliance on the extensive publicity made by the plaintiff of its collaboration with the Government of Indian in 1982, the court rejected the defendant’s contention that it was unaware of the plaintiff’s name/trademark/registration in 1982, when the defendant had adopted the impugned mark. The Court observed that the plaintiff’s trade mark was well-known in 1982 and thus the defendant was deemed to have notice of the plaintiff’s statutory and exclusive right to use its trade mark Suzuki.
The court specifically mentioned the defendant’s Managing Director’s oath on record wherein he had admitted that if a consumer deals with the defendant company, he may wrongly think that he is dealing with the Japanese company.
The Court further stated that the defendant had no justification for using Suzuki as part of its corporate name as the same is Japanese name and is not associated with any Indian name, place, object or term.
Further, the defendant’s submission that impugned name was inspired by a friend named Suzuki was regarded as far-fetched and unacceptable. The court deemed the defendant's explanation for adopting the impugned mark to be an after-thought. The court made an interesting comment on infringing parties, stating that such parties often try to explain their conduct and look out for means to explain derivation of the words so adopted.
The court strongly emphasised that if a trademark having element of prior continuance and use, has been copied, no amount of explanation is capable of defending such infringement of trademark of such prior user.
The court noted that the use of trade mark Suzuki by the defendant is not bona fide and is a colourable imitation of the plaintiff's trade mark. Since the adoption of the mark was dishonest, the alleged use of the same from 1982 onwards will not be of any consequence.
The court observed that by virtue of long term use, the plaintiff's name has acquired distinctiveness and a secondary meaning in the business or trade circles and thus any attempt to use such name business and trade circles is likely to create an impression of a connection with the plaintiff. It further observed that such unauthorized adoption would lead to undesirable and highly prejudicial consequences which will harm the plaintiff's reputation and goodwill as well as dilute the distinctiveness of the plaintiff's trade mark and the exclusivity attached to it.
Acquiescence
As regards the defendant's claim that the plaintiff had filed the suit after a delay of 25 years, amounting to acquiescence, the court stated that being a fraudulent infringer, the defendant cannot complain and hide behind the defence of delay.
The court emphasised that mere defence of concurrent user is not sufficient as the same must be honest as well. Due to the dishonest adoption of mark by the defendant, the court dismissed its defence of delay.
The court further noted that once infringement of trade mark has been concluded, then delay is immaterial on account of the statutory rights granted under Section 28 of the Act.
Passing off
In respect of the passing off action, the court stated that a trademark which has acquired a wide reputation, transcending international boundaries cannot be violated by another person, even by those whose goods belong to a different category. While stating that the concept of passing off no longer requires both the parties to trade in the same field, the court noted that defendant has no real prospects of defending the claim.
The court referred to the defendant as “a dishonest litigant” who has raised frivolous defence with the intention to blackmail the plaintiff. Further, it also mentioned that the defendant had demanded an exorbitant amount of money from the plaintiff to change their name which clearly demonstrated their mala fide intention.
Territorial jurisdiction
The Court dismissed the defendant’s false plea of territorial jurisdiction made on the ground that they have no office in Delhi, which was refuted by its Managing Director himself, who admitted on oath that the defendant indeed has an office in Delhi.
Placing reliance on Order XII Rule 6 of the CPC, the court ruled that since the admissions of the defendant were sufficient to pass a decree, it does not deem necessary to consider any other objection of the defendant.
False claims
In view of the aforementioned findings, the Court concluded that the defendant had raised false claims pertaining to the territorial jurisdiction of the court as well as in relation to its knowledge of the plaintiff’s name, trade mark and registration in 1982, when it adopted the impugned mark.
The Court prima facie observed that aforementioned acts of raising false claims by the defendant before the Court is a punishable offence under Section 209 of the Indian Penal Code. However, in the interest of justice, the Court granted the defendant three weeks time to issue an unconditional apology, failing which the defendant shall be liable to pay the actual cost incurred by the plaintiff on litigation.
Conclusion
The court has passed a well-reasoned and detailed judgement that has discussed certain important aspects of pleadings, trademarks and false claims.
Regardless of the duration of this trademark battle, the Plaintiff received more reasons to rejoice; as along with a successful verdict, the Plaintiff’s trademark was recognised as well-known by the Delhi High Court. Throughout its judgement, the Court advocated for the protection of prior trademarks from infringing parties who seek to encash the goodwill and reputation of genuine proprietors.
Other than the issue of trademark, the Court substantially dealt with the issue of specific denials. In the absence of specific denials, the Court ruled that the averments made in the plaint would deem to have been admitted by the defendant.
As far as the defence of delay was concerned, the Court noted that where the use is fraudulent, an inordinate delay would not be a cause of concern as in case of continuing tort, fresh period of limitation begins to run every moment of time during which the breach continues and thus due to the dishonest intention of the defendant, a mere delay in bringing action would not be defeated.
In addition to this, a significant observation was made in the judgement with regards to the false claims raised by the defendant. The Court held that such action of raising false claims amounted to a punishable offence under Section 209, the Indian Penal Code; however in the interest of justice the Court granted three weeks’ time to the defendant to issue an unconditional apology, failing which the defendant shall be liable to pay the actual cost incurred by the plaintiff on litigation.
For further information, please contact:
Smrita Sinha, LexOrbis
mail@lexorbis.com
