Non Mentioning of Defendant's Trademark Registration in different class is not material suppression
Introduction: This case concerns a dispute between FMI Limited (Plaintiff) and Midas Touch Metalloys Pvt. Ltd. (Defendant) over the alleged trademark infringement and passing off involving the trademarks "INDI" (owned by the Plaintiff) and "INDEED" (used by the Defendant). The Plaintiff claimed that the Defendant's mark was deceptively similar and likely to confuse customers.
Background: FMI Limited is a well-established company specializing in measuring tools, operating since 1950, with significant domestic and international presence. It uses the trademark "INDI" for its measuring tapes and related tools, a brand developed since 2015. The Defendant launched a similar range of products under the mark "INDEED" in July 2024, prompting FMI to seek legal action. FMI alleged that Midas Touch Metalloys' mark "INDEED" not only infringed upon its rights but also copied its trade dress and color scheme (blue and white), potentially leading to confusion among consumers.
Plaintiff’s Position: FMI Limited owns registered trademarks for "INDI" and its variations under Class 9 (tools and measuring instruments). It has invested heavily in marketing, gaining recognition and goodwill for "INDI," supported by substantial sales figures. Defendant's "INDEED" mark is deceptively similar to "INDI," phonetically and structurally. Defendant also adopted a similar trade dress, including the blue-and-white color scheme.
Defendant’s Position: Defendant argued that it is the registered proprietor of "INDEED" in Classes 7 and 8, and these registrations predate some of FMI’s applications. Claimed FMI’s mark "INDI" is generic or short for "India," thus lacking exclusivity. Asserted that their use of "INDEED" was accompanied by their brand identifiers ("Midas Touch" and "SCOTTS"), which sufficiently distinguish it. Alleged suppression of material facts by FMI, including information about other trademark registrations and oppositions.
Issues Involved: Trademark Infringement: Whether the Defendant’s use of the mark "INDEED" infringes upon FMI Limited's registered trademark "INDI." Passing Off: Whether the Defendant’s use of a similar mark and trade dress causes deception or confusion in the market. Suppression of Facts: Whether the Plaintiff concealed material facts regarding its trademark and the Defendant’s registrations in other classes. Bona Fide Use: Whether the Defendant’s adoption of "INDEED" was bona fide.
Plaintiff’s Submissions: Strong goodwill and reputation exist for "INDI" due to its consistent and long-standing use since 2015.The Defendant adopted "INDEED" deceptively, with no justification for the mark or trade dress.Plaintiff does not claim exclusivity over the color combination, but its use in conjunction with "INDEED" creates confusion.
Defendant’s Submissions: "INDEED" was adopted to emphasize product quality and is distinct from "INDI." No exclusivity exists for "INDI," as it is generic. Plaintiff suppressed material facts about third-party oppositions and trademark history. Reasoning and Analysis by the Judge.
Court's Finding:Misrepresentation and Suppression of Facts: The Court found no merit in the Defendant's allegations of suppression, as the Plaintiff disclosed relevant trademark registrations related to Class 9 (the applicable class for measuring tapes).Trademark Infringement:Both marks, "INDI" and "INDEED," are registered under Class 9, covering identical products.Phonetic and structural similarities were found between the marks. The difference introduced by the letter "D" in "INDEED" was deemed insufficient to distinguish it.Passing Off:The Defendant's adoption of a similar trade dress (blue-and-white) and design elements was not bona fide.Consumer confusion was likely, especially as the competing products could be displayed side by side in stores.Goodwill and Reputation:The Plaintiff demonstrated extensive goodwill through significant sales figures and long-standing use of the "INDI" mark since 2015.Defendant’s Bona Fides:The Defendant failed to provide a satisfactory explanation for adopting "INDEED," despite having used other marks like "CUBIT" and "ALCOR" previously.Balance of Convenience:Favored the Plaintiff due to its prior use, established goodwill, and the Defendant’s recent entry into the market with "INDEED."
Decision:The Court upheld the ex-parte ad interim injunction restraining the Defendant from using the mark "INDEED" or any similar mark.The Defendant’s plea to release seized goods bearing the infringing mark was denied.The Defendant was prohibited from using the blue-and-white trade dress or other elements likely to confuse consumers.
Conclusion:This case emphasizes the importance of prior use and goodwill in trademark disputes. The Court relied heavily on principles of passing off and consumer confusion, concluding that the Defendant’s actions lacked bona fide intent and were likely to harm the Plaintiff’s goodwill. The decision reflects the judiciary's robust protection of established trademarks against deceptive practices.
Case Title: FMI Limited vs. Midas Touch Metalloys Pvt. Ltd.
Date of Order: January 8, 2025
Case Number: CS(COMM) 721/2024
Neutral Citation: 2025:DHC:32
Court: High Court of Delhi, New Delhi
Judge: Hon'ble Justice Amit Bansal
Advocate Ajay Amitabh Suman
IP Adjutor
[Patent and Trademark Attorney]
High Court of Delhi
Email: ajayamitabhsuman@gmail.com
Phone: 9990389539
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