The plaintiffs, proprietors of the well-known trade mark and trade name “A.O. SMITH” used globally since 1874 and in India since 2006 for water heaters and purification products, sued the defendants for infringement and passing off arising from the defendants’ use of “STAR SMITH” as a trade mark, trade name and domain name for identical and allied goods.
An ex-parte ad-interim injunction was initially granted in 2022 restraining use of the impugned marks, though limited protection was given to the corporate name and domain name pending adjudication; this injunction was later made absolute in 2024, save for those two aspects, which were revived on review.
The Court held that “SMITH” constituted the dominant and essential feature of the competing marks, that the defendants’ adoption in 2020 was prima facie dishonest and intended to ride on the plaintiffs’ goodwill, and that the plaintiffs’ registrations carried no disclaimer, entitling them to full statutory protection. Rejecting the defence that “SMITH” was generic or common to trade, the Court found the defendants estopped from such a plea having themselves sought registration of marks containing “SMITH”.
Applying Section 29(5) of the Trade Marks Act, 1999, the Court held that use of the registered mark as part of a trade name for identical goods constituted infringement per se, and further held that the impugned domain name caused initial interest confusion and passing off. Consequently, finding a strong prima facie case, balance of convenience in favour of the plaintiffs and likelihood of irreparable harm, the Court granted an interim injunction restraining use of the impugned trade name and domain name in addition to the marks.
Law settled:
Use of a registered trade mark or its essential feature as part of a trade name for identical or allied goods constitutes infringement under Section 29(5) of the Trade Marks Act, 1999, and once statutory conditions are met, injunction must ordinarily follow: paras 16–17.
Where a trade mark is registered without disclaimer, exclusivity must be determined from the registration certificate alone, and prior examination replies or alleged concessions before the Registry are irrelevant: paras 12–13.
A defendant who has applied for registration of a mark containing a particular element is estopped from contending that the same element is generic or common to trade (principle of approbate and reprobate): paras 14–15.
Adoption of a deceptively similar domain name for allied goods giving rise to initial interest confusion amounts to passing off and is injunctable even though the Trade Marks Act does not expressly provide for domain names: paras 18–20.
Case Title: A.O. Smith Corporation Vs. Star Smith Export Pvt. Ltd.:24.12.2025:CS(COMM) 532/2022:2025:DHC:11885:DHC:Hon’ble Mr. Justice Tejas Karia
[Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]
[Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi]
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