HC rules in favour of Suzuki Motor; says Suzuki India’s use of the mark was malafide and further says that inordinate delay in filing a claim does not defeat action for permanent injunction when use of mark by defendant is fraudulent.
Suzuki Motor (Plaintiff) filed a case suit for permanent injunction for restraining Suzuki (India) Ltd. (Defendant) from infringing their trade mark Suzuki, passing off and rendition of accounts. HC passed an interim order restraining Defendant from using the word ‘Suzuki’ as part of their trade name/corporate name. Plaintiff states that Defendant adopted the name “Suzuki India Limited” with the malafide intention to capitalise on the goodwill that Plaintiff has generated over many years. Defendant contends that the suit is not maintainable as there is a delay of over 25 years in filing the suit and such delay in exercising its legal remedy should be construed as acquiescence on part of the Plaintiff under the Trade Marks Act, 1999. Defendant places reliance on Wockhardt Ltd. v. Torrent Pharmaceuticals Ltd., (2018) SCC OnLine SC 1778, Khoday Distilleries Ltd. v. Scotch Whisky, (2008) 10 SCC 723 and Power Control Appliances v. Sumeet Machines Pvt. Ltd., (1994) 2 SCC 448. Defendant further submits that the suit is barred by way of territorial jurisdiction.Plaintiff is seeking a decree under Order XII Rule 6 of the Code of Civil Procedure against Defendant on the ground that Defendant has not raised any defence in the written statement except the challenge to the territorial jurisdiction of this Court on the ground that the Defendant has no office in Delhi.
HC observes that in the absence of specific denial by the Defendant, the averments made in the plaint are deemed to have been admitted as provided under Order VIII Rule 5 of the Code of Civil Procedure. HC observes that Plaintiff is the proprietor of a well known trade mark Suzuki duly registered with the Registrar of Trade Marks and the Defendant dishonestly adopted the name Suzuki as part of their company with the malafide intention to encash the goodwill and reputation of the Plaintiff. HC rejects the contention of Defendant that it was unaware of Plaintiff’s name, trade mark and registration in 1982 as there was widespread advertisement of the collaboration of Plaintiff with the Government of India. HC states that the mark of the Plaintiff is well known. HC further rejects the contention of the Defendant that they adopted the impugned mark because they had a friend named Suzuki as farfetched and unacceptable. HC observes that the adoption of the mark Suzuki by the Defendant was dishonest and consequently, the alleged use of the same from 1982 onwards i.e prolonged use over a period of time will be of no consequence. HC states that Plaintiff hasn’t given a valid reason for the adoption of the mark and places reliance on Aktiebolaget Volvo v. Volvo Steels Limited, 1998 PTC (18) (Bom) and Bata India Limited vs. M/s Pyare Lal Co., AIR 1985 Allahabad 242.
HC states that the Defendant is a fraudulent infringer who has knowingly and deliberately violated the rights of the Plaintiff and hence, cannot complain and hide behind the defence of delay, laches or acquiescence as the infringement at the very initial stage itself was fraudulent and the delay and laches by itself would not bestow fraud with character of legality. HC observes that, “ inordinate delay would not defeat an action for the grant of a temporary injunction especially where the use by the defendant of the mark was fraudulent. HC states that once there is a dishonest intention to adopt the mark, a mere delay in bringing action cannot be defeated because in case of continuing tort, fresh period of limitation begins to run every moment of time during which the breach continues.”
HC notes that the changed concept of passing of makes it material that the plaintiff and the defendant should trade in the same field and places reliance on Honda Motors Company Ltd. v. Charanjit Singh, 2003 (26) PTC 1 (Del). HC observes that Defendant is a frivolous litigant as it has been recorder to demand Rs. 10 crores from the Plaintiff to change its name. With regards the contention of territorial jurisdiction raised by the Defendants on the ground that they have no office in Delhi, HC rejects the same as the Managing Director of Defendant admitted to having an office in Delhi.
HC notes that raising a false claim before the Court is an offence under Section 209 of the Indian Penal Code punishable with punishment of imprisonment upto two years and fine, and places reliance on H.S. Bedi v. National Highway Authority of India, 2016 (155) DRJ 259. HC prima facie opines that the case warrants prosecution under Section 209 of Indian Penal Code against the Defendant for raising false claims and grants three weeks time to the defendant to introspect and file an unconditional apology failing which the defendant shall be liable to pay actual cost incurred by the plaintiff on this litigation.