Bajaj Electricals Limited Vs Metals & Allied Products

The defense of using one’s surname INNOCENTLY in trade could not justify confusion among consumers

Introduction:

This case concerns a dispute between Bajaj Electricals Limited (plaintiff) and Metals & Allied Products and another (defendants) regarding the unauthorized use of the trademark "Bajaj." The core issue revolved around the alleged passing off of the defendant's products as those of the plaintiff, based on the similarity in trade name and branding. The plaintiff alleged that the defendant’s use of the term “Bajaj” created confusion among consumers, causing potential financial and reputational damage.

Factual Background:

Bajaj Electricals Limited, a company incorporated in 1938 (originally as Radio Lamp Works Limited), has been engaged in manufacturing electrical appliances, kitchen wares, and domestic appliances. In 1960, the company changed its name to Bajaj Electricals Limited and began extensively marketing its products under the trademark "Bajaj" since 1961. The mark "Bajaj" with the 'eye' device was registered in 1964 (Class 11) and subsequently under Class 7 and Class 11 in the 1970s.

The plaintiff's sales grew significantly, with revenues climbing to ₹73.94 crores by 1986. Bajaj's products were heavily advertised, gaining substantial market recognition.

The defendants, Metals & Allied Products, began manufacturing kitchen utensils in 1976-77 and allegedly used the "Bajaj" mark since then. In February 1977, they applied to register the mark for stainless steel utensils under Class 21, but this application was deemed abandoned. A subsequent application for registration was filed in 1984. Despite this, the defendants continued using the mark and claimed their surname "Bajaj" entitled them to do so.

Procedural Background:

The plaintiffs initiated a suit seeking to restrain the defendants from using the mark “Bajaj” to prevent consumer confusion and passing off. On February 24, 1987, an interim injunction was granted by the Single Judge in favor of the plaintiffs. The defendants filed an appeal, which was dismissed, and the motion was scheduled for an early hearing.

During this hearing, the defendants claimed their use of the mark since 1976, producing invoices, affidavits, and certificates from traders. The Single Judge eventually ruled against granting a full injunction but ordered the defendants to modify their branding to prominently display the manufacturer’s name along with the “Bajaj” mark.

Issues Involved in the Case:

• Whether the defendants' use of the mark "Bajaj" constituted passing off.
• Whether the defendants had established prior use of the mark dating back to 1977.
• Whether the defendants’ use of the mark, even if honest, was likely to cause deception or confusion.
• Whether the defendants' claim of using their family name in trade was legitimate.

Submissions of the Parties:

The plaintiffs argued that:

• They had established significant goodwill and reputation for their products under the "Bajaj" mark.
• The defendants had deliberately adopted the mark to take advantage of this reputation.
• The defendants' use of the mark, combined with misleading statements in their brochure, was evidence of bad faith.
• The invoices produced by the defendants were dubious and possibly fabricated.

The defendants contended that:

• They had been using the mark “Bajaj” since 1976 and had made applications for its registration.
• The mark was derived from the surname of the partners, which entitled them to use it in trade.
• Their products differed from those of the plaintiffs, reducing the likelihood of confusion.
• They had obtained certifications from traders and had been using stickers bearing the “Bajaj” name since 1979.

Discussion on Judgments and Citations:

The court referred to Parker-Knoll Ltd. v. Knoll International Ltd. [(1962) R.P.C. 265], wherein it was held that while individuals may trade under their own names, the use of such names must not cause confusion or deception. The court noted that the defendants were not merely using “Bajaj” as a family name but were employing it as a trade mark to pass off their goods as those of the plaintiffs.

The court also referred to Joseph Rodgers & Sons Ltd. v. W.N. Rodgers & Co. [(1924) 41 R.P.C. 277], which emphasized that even honest use of one’s name could be restrained if it resulted in consumer deception.

The court examined Kerly’s Law of Trade Marks and Trade Names, which highlights that once bad faith or intent to deceive is established, the user cannot claim a defense based on their right to use a family name.

The court found that the defendants’ brochure, which claimed “Bajaj quality is well accepted internationally,” was misleading since the defendants had no presence in international markets. This was considered evidence of deliberate misrepresentation.

Reasoning and Analysis of the Judge:

The court found that:

• The plaintiffs had established substantial goodwill and reputation in the "Bajaj" mark.
• The defendants’ claims of long-standing use were unsubstantiated; the invoices presented were suspicious and lacked credibility.
• The fact that the defendants had issued a misleading brochure in 1987 further evidenced bad faith.
• The defense of using one’s surname in trade could not justify conduct that created confusion among consumers.
• The defendants' attempt to differentiate their mark through changes in font and capital letters was insufficient to prevent consumer deception.

Final Decision:

The appellate court set aside the Single Judge’s order and granted a permanent injunction restraining the defendants from using the “Bajaj” mark in connection with domestic appliances and kitchen wares. The court held that the defendants’ continued use of the mark would cause irreparable damage to the plaintiffs' established reputation.

Law Settled in This Case:

This judgment reaffirmed the principle that a party cannot pass off its goods under a mark identical or similar to one associated with a competitor, even if the mark represents their own family name. The decision emphasized that in cases of established intent to deceive, the right to use a family name in business is not absolute and may be restricted to prevent consumer confusion.

Case Title: Bajaj Electricals Limited Vs Metals & Allied Products And Anr.

Date of Order: 4 August 1987

Neutral Citation: AIR 1988 BOM 167

Name of Court: Bombay High Court

Name of Judge: Hon'ble Justice Shri Pendse, J.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi