Delhi High Court Restrains Sona Mandhira from using Trademark ‘Sona’
Delhi High Court Restrains Sona Mandhira from using Trademark ‘Sona’
The Delhi High Court by its single judge Justice Navin Chawla granted an interim injunction ordering Sona Mandhira Pvt. Ltd. to refrain from using Sona BLW Precision Forgings Ltd. (Sona BLW)'s registered trademark “SONA” in any manner or any other trademark/trade name/logo containing “SONA.”
The Court observed, “the balance of convenience is also in favor of plaintiffs Sona BLW Precision Forging Ltds and against the defendants Sona Mandhira. The plaintiffs are likely to suffer grave irreparable harm if the defendants are not restrained from using the word 'Sona' as part of the corporate name and/or as a trademark during the pendency of the present suit.”
In the present case plaintiff no. 1- Sona Blw Precision Forgings Limited that it is a part of the “SONA Group” which was founded in the year 1984. The plaintiff no.1-Company was renamed as “Sona BLW Precision Forgings Ltd” in the year 2013.
It was the case of the plaintiffs that the plaintiff no.1 only just before the filing of the Suit discovered that the defendants- Sona Mandhira Pvt. Ltd. & Ors had adopted the corporate name and trade mark “SONA” as part of its own corporate name/ trade name. It was further asserted that the defendant no.1 was doing business since the year 2011 under the name “Mandira Marketing Private Limited” and changed it to “Sona Mandhira Pvt. Ltd.” only on 22nd June, 2020.
The plaintiffs contended that the defendants were also engaged in a similar trade as that of the plaintiff no.1, which left little doubt that the defendants were in fact aware of the plaintiff no.1 registration as well as the long and uninterrupted use of the trade mark/corporate name “SONA”, and had deliberately and dishonestly adopted the mark “SONA” as part of its corporate name, so as to pass off its goods as that of the plaintiff no.1.
As far as the dispute between the parties on merit was concerned, the plaintiffs were aggrieved of the change of the corporate name of the defendant no.1.
The plaintiffs claimed that not only plaintiff no.1 is the owner and assignee (pending registration) of the trademarks and trade names of which “SONA” forms a predominant part, but also various group companies of the plaintiffs have been incorporated with the said name.
On the other hand, the defendants pleaded that as the word “SONA” has been disclaimed in the registration granted in favor of the plaintiffs under Registration, the plaintiffs cannot claim any exclusivity over the said word. It further contended that the registrations being in device marks, even otherwise, no separate claim was possible against the word ‘SONA’.
The learned senior counsels for the defendants further submitted that in the present suit, the application seeking interim relief, was liable to be dismissed on account of suppression of material facts in the Plaint.
The learned senior counsel for the plaintiffs explained that the non-disclosure of the disclaimer was unintentional as the present suit was filed when the Covid-19 pandemic lockdown was at its peak.
The Judge at the outset emphasized that only because the plaintiffs were unable to obtain an exparte ad interim order because of the presence of the defendants, who pointed out the above concealment on the first date of hearing, could not absolve the plaintiffs from the repercussions of such concealment.
The judge opined that concealment remains unpardonable even where the plaintiff does not succeed in misleading the Court thereby, or where the defendant appears and is able to highlight such concealment on the first date of hearing, thereby preventing an adverse order being passed against it. However, having suffered the consequence of non-disclosure, the plaintiff cannot be condemned indefinitely.
In this regard the Court stated, “the concealment made by the plaintiffs in every case would not result in an automatic dismissal of the Plaint and/or of the applications filed by the plaintiffs seeking interim relief. In law, an injunction against infringement and passing off is granted not only to protect the proprietary rights of the plaintiffs but also to protect an ordinary unwary consumer who may be deceived due to adoption of a similar mark for similar goods by the defendant. There is, therefore, an element of public interest also to be protected.”
The judge with respect to Effect of Disclaimer held that merely because a mark has been registered with a disclaimer, the right of a proprietor over the mark or part thereof, if there was any, is not affected and continues to exist.
The Court with respect to the issue of ‘Mark as a Whole’ asserted that for the test of passing off, the marks are to be tested on the standard of a person of average intelligence with imperfect recollection. It is the overall impression of the mark created on the consumer that would be the governing factor to determine likelihood of confusion or deception. In such determination, therefore, the Court may also identify elements or features of the mark that are more or less important for purpose of making the comparison between the competing marks.
The Court noted that the plaintiffs have registration in their favor, of which the word “SONA” which is a predominant part. It has registrations in the word mark “SONA BLW” as well.
While applying the ratio of M/s. South India Beverages Pvt. Ltd, this Court in its judgment dated 2nd August, 2022 passed in Sona BLW Precision Forgings Ltd. vs. Sonae EV Private Limited, held that “SONA” forms a dominant part of the plaintiffs Trade Mark, thus was entitled to protection.
Next the Court relied decision passed in Pankaj Goel v. M/s. Dabur India Ltd, wherein it was held that mere presence of a mark on the Register does not signify its use.
The Court propounded that in any case, the plaintiff is not expected to sue all small type of infringers who may not be affecting the plaintiff’s business. In any case, such incorporation cannot come to the aid of the defendants unless the defendants are able to make out a case for use of the said word/mark in their independent right.
The learned senior counsel for the plaintiffs had also drawn Court’s attention to the “Brand Ownership Agreement,” whereby inter-alia the plaintiff no.2 assigned all its rights in the trade marks in favor of the plaintiff no.1.
Though, the said assignment has still not been registered by the Trade Marks Registry, the Court stated, this shall not affect the rights of the plaintiff no.1 in such registrations.
The Court while rejecting the plea of the learned senior counsel for the defendants stating that the mark “SONA” was being used by the defendants even earlier to the change of the corporate name, and, therefore, the plaintiffs have acquiesced to such use, observed, “the defendant no.2 was acting as a sales agent for the products manufactured by the plaintiff’s group of companies. There was an association between the companies, that is, the plaintiffs and the defendant no.1. In such circumstances, even if the defendant no.1 individually and for its own goods used the mark of the plaintiffs, the same would only enure to the benefit of the plaintiffs and not the defendants. This was a case of permissive use rather than a use wherein the defendant sets up an independent title to the trade mark. By such usage, the defendant no.2 cannot claim any independent rights over the said mark.”
While referring to the decision passed in Eaton Corporation and Anr. v. BCH Electric Limited, Court held, an ex-licensee cannot claim ownership of a trademark in his name either during the licensing period of agreement or after expiry thereof.
Furthermore, the Court noted that the incorporation of the word “SONA” as part of its Corporate Name by the defendant no. 1 prima facie appeared malafide. The same is intended to show a relationship between the plaintiffs and the defendant, while now there is no such relationship. The Corporate Name itself, therefore, can lead to confusion and deception in the minds of a third party of such continued association/relationship between the plaintiffs and the defendant no. 1, stated the Judge.
In view of the aforesaid reasons the Court restrained the defendants from using the word “SONA” as part of their Corporate Name/Trade Mark/Trade Name/Logo/Domain Name, in any manner, in relation to any goods or services during the pendency of the present suit.
