Lex Orbis
Manisha Singh Nair
manisha@lexorbis.com
In a lawsuit for trademark infringement, the principal remedy that you can seek is an injunction preventing the other party from continuing to use the infringing mark. In some situations you can also seek monetary relief, punitive damages or exemplary damages for damages, and can also request the court to order the other party to destroy its infringing materials or deliver them to you.
In the present case, Larsen & Toubro Ltd. V. Chagan Bhai Patel 2009(39) PTC 538(Del.), which was decided on September 1 2009, section 28 of the Trademark Act has been evoked. As per this section, the registration of a trademark gives the registered proprietor the exclusive right to use the trademark in relation to goods and services. The registered proprietor can also obtain relief in respect of infringement. The Honourable High Court awarded punitive damages in the sum of Rs.500,000 (US$10,750) as a relief to the aggrieved party.
The plaintiff, Larsen & Toubro, is a registered proprietor of the trademark/ trademark name LARSEN & TOUBRO. It is engaged in a large number of businesses and services including construction related businesses. The mark LARSEN & TOUBRO is well known and the company carries on its business in Delhi. Meanwhile the defendant, Chagan Bhai Patel, carries on its business in Chattisgargh. The jurisdiction of case was Delhi.
This case arose as a result of an application filed by Chagan Bhai Patel for registration of the mark LARSON. This was in relation to plywood, veneer wood, veneers, wood paneling, wood pulp board, timber, non-metallic partitions, mould-able wood, non-metallic door frames, door panels and doors, building timber, and non-metallic boards in class 19.
On coming to know of the application by Chagan Bhai Patel for registration of the mark LARSON, Larsen & Toubro instituted a suit for permanent injunction as the registered proprietor of the trademark/ trademark name LARSEN & TOUBRO. This suit was to restrain Chagan Bhai Patel from using the mark LARSON or any other similar mark or name deceptively similar to that of Larsen & Toubro. It was also designed to restrain Chagan Bhai Patel from passing off its goods and business as that of Larsen & Toubro. Larsen & Toubro also claimed ancillary relief of damages.
Chagan Bhai Patel was restrained from using the mark LARSON or any other similar mark or name deceptively similar to LARSEN & TOUBRO in relation to any of its business/ goods/ services/ products in Class 19 vide ex-parte Order. A court commissioner was also appointed to visit the premises of Chagan Bhai Patel to seize and take infringing material into custody.
Despite being served with a summons of suit Chagan Bhai Patel failed to appear and remains ex parte. A perusal of the application by Chagan Bhai Patel, advertised before acceptance in the Trademark Journal (and known as Exhibit PW1/6), showed that the Chattisgargh-based company intended to write the name LARSON in capitals. The plaintiff, which also writes LARSEN in capitals, submitted a notarised copy of its certificate of registration which it is permitted to do.
The Court concluded that the use by Chagan Bhai Patel of the name/ mark LARSON in relation to building related goods only is an attempt to take advantage of the reputation and goodwill of Larsen & Toubro. As LARSEN & TOUBRO is well known, the Court concluded that it may lead a person to believe that LARSON alone may also be related to Larsen & Toubro.
The Court held that, as Chagan Bhai Patel failed to give any explanation for use of the name/ mark LARSON in relation to building related goods, Chagan Bhai Patel adopted the mark to take advantage of the reputation and goodwill of Larsen & Toubro.