Biswanath Hosiery Mills Limited And Anr vs Micky Metals Limited

Background:

Biswanath Hosiery Mills Limited (Plaintiff no. 1) and its subsidiary (Plaintiff no. 2) have been using the trademark "LUX" since 1957 for their hosiery products. They have extensively used and registered this mark in various classes in India and internationally. In 2019, they discovered that Micky Metals Limited (Defendant) had applied for the registration of a similar mark, "LUX TMT," and was using it in their business. The plaintiffs objected to this, arguing that the defendant's mark was deceptively similar to theirs and that it constituted passing off, exploiting the goodwill and reputation of the "LUX" brand.

Issue of the Case:

The central issue in the case was whether Micky Metals Limited's use of the "LUX TMT" mark constituted an act of passing off, infringing on the trademark rights of Biswanath Hosiery Mills Limited and its subsidiary. The case also addressed the legal principles governing passing off, the rights of prior users, and the role of registration in trade mark disputes.

Contention of Parties:

The plaintiffs argued that they were the prior user of the "LUX" mark with continuous and extensive use since 1957. They claimed that the defendant's use of "LUX TMT" was an attempt to pass off their goods as those of the plaintiffs, causing confusion among the public. The defendant did not contest the suit, and after being served with a notice to desist, they claimed to have made changes to their logo, which the plaintiffs deemed insufficient.

Issues Dealt with by the Court:

The court considered the principles of passing off, the rights of a prior user of a trademark, the role of confusion and deception in trade mark infringement, and the broader remedies available in passing off actions compared to infringement actions. It also examined the significance of the defendant's goods being in a different class from the plaintiffs' and whether this precluded a passing off action.

Reasoning and Final Decision:

Justice Sugato Majumdar ruled in favor of the plaintiffs, stating that the defendant's use of the "LUX" mark was an act of passing off. The court reasoned that the defendant's mark was deceptively similar to the plaintiffs', visually and phonetically, and that this was likely to create confusion among the public. The court emphasized that the defendant's actions constituted commercial piracy and exploited the plaintiffs' goodwill. The court granted a permanent injunction restraining the defendant from using the "LUX" mark and ordered the defendant to account for profits earned from the unauthorized use of the mark.

Case Citation:Biswanath Hosiery Mills Limited And Anr vs Micky Metals

Limited: 06.09.2024:IP-COM/9/2024: Calcutta High Court: Sugato Majumdar J

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 9990389539

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