Factual Background: The plaintiff, Automatic Electric Limited, adopted the trademark “DIMMERSTAT” in 1945 for its variable voltage auto transformers. The mark was registered under Trade Mark Registration No. 178464 dated 14.02.1957 in Class 9. The plaintiff extensively advertised its product and claimed to have built substantial goodwill. It produced sales invoices from 1976-1982 and 1985-1994 as proof of continuous usage.
The defendants, R.K. Dgawan & Anr., adopted the mark “DIMMER DOT” for their variable voltage auto transformers, which the plaintiff alleged was deceptively similar and likely to cause confusion. The plaintiff argued that such use amounted to trademark infringement and passing off. Consequently, the plaintiff filed a suit seeking an injunction to restrain the defendants from manufacturing, selling, or advertising under the mark “DIMMER DOT” or any other mark identical or similar to “DIMMERSTAT.”
Procedural Background:The plaintiff filed an application under Order 39 Rules 1 & 2 of the Code of Civil Procedure, seeking an interim injunction against the defendants. On 9.11.1994, the Delhi High Court granted an ad-interim ex parte injunction, restraining the defendants from using the mark “DIMMER DOT.” The defendants entered their appearance and filed an application under Order 39 Rule 4, seeking to vacate the injunction. The case was heard on the interim reliefs sought by both parties.
Issues Involved in the Case:Whether the use of the mark “DIMMER DOT” by the defendants constitutes trademark infringement under Section 28 and 29 of the Trade and Merchandise Marks Act? Whether the mark “DIMMERSTAT” is distinctive and entitled to exclusive protection? Whether “DIMMER” is a generic or descriptive term, and if so, whether the plaintiff can claim monopoly over it? Whether there was honest concurrent use by the defendants? Whether the plaintiff’s delay in taking legal action amounted to acquiescence?
Submissions of the Parties:The plaintiff argued that its registered trademark “DIMMERSTAT” conferred exclusive rights under Section 28 of the Trade and Merchandise Marks Act. Section 29(1) provides that the use of an identical or deceptively similar mark constitutes infringement. “DIMMERSTAT” and “DIMMER DOT” share the identical prefix “DIMMER,” leading to confusion among consumers. The mark “DIMMERSTAT” was registered without a disclaimer, meaning the plaintiff had the exclusive right to use the mark, including the word “DIMMER.” The defendants falsely represented their mark as a registered trademark, which amounted to an offense under Section 81 of the Act. There was no delay or acquiescence as the plaintiff learned about the defendant’s use in April 1994.
The defendants argued that “DIMMER” is a generic term referring to variable voltage transformers and cannot serve as a trademark. Under Section 9(1)(d), generic and descriptive words are not eligible for trademark protection. The plaintiff could not monopolize the term “DIMMER” as it is commonly used in the industry. The plaintiff was aware of the defendant’s use for over a decade and failed to act earlier, amounting to acquiescence. The defendants had been using “DIMMER DOT” since 1980 and had developed independent goodwill. The plaintiff’s customers were technically knowledgeable and unlikely to be confused. The product packaging of both parties was different, reducing the likelihood of confusion.
Discussion on Judgments Cited by Parties:The plaintiff relied on the judgment in Kaviraj Pandit Durga Dutt Sharma vs. Navratna Pharmaceutical Laboratories, AIR 1965 SC 980, which held that an identical prefix in trademarks can cause deception. The decision in Amritdhara Pharmacy vs. Satya Deo Gupta, AIR 1963 SC 449, established that similarity in the dominant part of a mark is sufficient for confusion. The case Accurist vs. Accutron, (1966) RPC 152, stated that similarity in the initial part of a mark is significant. The judgment in Turbo Torch vs. Turbogaz, (1978) RPC 206, confirmed that prefix similarity can lead to deceptive similarity. Additional judgments supporting the plaintiff’s case included Alka Seltzer vs. Alka Vescent, (1950) 67 RPC 113, 209, Pill Bond vs. Plyopher, (1951) 69 RPC 40, Star Mist vs. Stardust, (1951) 69 RPC 40, Marie Elizabeth vs. Maria Lisette, (1937) 54 RPC 193, and Univocal vs. Unimac, (1979) RPC 469.
The defendants relied on the case Abercrombie & Fitch Company vs. Hunting World, Inc., 189 USPQ 759, which held that generic words cannot be monopolized. The decision in J.R. Kapoor vs. M/s. Micronix India, 1994(3) SCALE 732, held that if a mark is generic for the product, no one can claim exclusive rights.
Reasoning and Analysis of the Judge:The court held that the plaintiff’s mark “DIMMERSTAT” was registered without a disclaimer, meaning the word “DIMMER” formed part of the plaintiff’s exclusive rights. While “DIMMER” may have some descriptive use, “DIMMERSTAT” as a whole was a distinctive mark for auto transformers. The defendants’ mark “DIMMER DOT” was deceptively similar, particularly because “DIMMER” was the dominant prefix in both marks. The defendants themselves registered “DIMMER DOT” in Australia, contradicting their claim that “DIMMER” was generic. The plaintiff’s delay in filing the suit was not inordinate and did not amount to acquiescence. Honest concurrent use was not established as the defendants falsely claimed registration of their mark.
Final Decision: The court made the ad-interim injunction absolute, restraining the defendants from using “DIMMER DOT” or any other deceptively similar mark. The plaintiff’s application for injunction (I.A. No. 8609/1994) was allowed, and the defendants’ application to vacate the injunction (I.A. No. 10285/1994) was dismissed.
Law Settled in this Case:A registered trademark without a disclaimer covers the entire mark, including individual components. The first syllable of a trademark is often the most significant in assessing deceptive similarity. A mark that is not purely descriptive and has acquired distinctiveness is entitled to protection. The use of a deceptively similar mark constitutes infringement even if part of the mark has descriptive elements. Delay in bringing a suit does not necessarily amount to acquiescence unless the delay is inordinate and prejudices the defendant. Claiming a generic defense is not valid when the defendant itself seeks proprietary rights in a similar mark.
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