MRF Ltd. v. Nr Faridabad Rubbers & Ors.

CITATION1998 (18) PTC 485 (Del)
COURTDelhi High Court
JUDGES/CORAMJustice D.K. Jain
DATE OF JUDGEMENT09.07.1998

Introduction

Intellectual Property Rights (or IPR) has importance in legal, regulatory as well as tax matters, which is the very reason for its protection by proprietors. To ensure the protection, owners of artistic works, copyrights, trademarks, etc. approach the courts. But in India, where court cases stretch over a period ranging from 5 years to 20 years, it becomes very important for the plaintiff to obtain an interim injunction until the disposal of the suit. These injunctions are granted by courts under Order XXXIX of the Code of Civil Procedure, 1908 but are most of the time contended by defendants. In the present case, an ad-interim injunction was contested by the defendant, when clearly the plaintiff was suffering damage.

Facts

The facts of the case are: The plaintiff, MRF Limited, is amongst the largest and most reputed automotive tyres/tubes companies of India, operating since 1961. The company has a country-wide reach and uses “MRF” as its company name as well as a trademark. “MRF” is now synonymous with quality and reputation. Owing to its features, the mark “MRF” is identified in foreign markets as well and gets the company enormous sales turnover year after year. The trademark “MRF” is registered by the plaintiff for various classes of goods. Along with the trademark, the company also uses a logo of a muscleman lifting tyres. Having been in business for more than 20 years, the trademark and logo are used to identify the company, by the customers.

On the other hand, the defendants were a proprietorship concern, NR Faridabad Rubbers Ltd. They were engaged in manufacture, sale, and distribution/retailing of automobile tyres since 1994. The defendants owned a factory in Faridabad and carry on their business under the name “NRF”.

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A suit was filed by the plaintiff to obtain a perpetual injunction against the defendants. The injunction was to restrain the defendants from passing off the plaintiff’s goods and business by the mark “NRF”, or any deceptively similar mark, on any of the defendant’s products along with a rendition of accounts. The plaintiff applied for a temporary injunction to the same effect till the disposal of the suit. When an ex-parte ad interim injunction was granted to the plaintiff, it was challenged by the defendant through an application. The judgment given in this case by Justice D.K. Jain granted a temporary injunction to the plaintiff and dismissed the defendant’s opposing application to the ex-parte ad interim injunction granted earlier.

Issues         

The main issue in the case is: Whether or not the ex-parte ad interim injunction given to plaintiffs, against defendants, is liable to be set aside.

Contentions of the Defendants

The following were the arguments advanced by the defendants:

  1. Defendants had been using the trademark honestly since 1994.
  2. Defendant’s logo had Swastik on either side which is visibly different from the plaintiff’s logo.
  3. Defendant’s products had a blue line in the inner circle of their tubes, which the plaintiff company’s products did not possess.
  4. Construction of alphabets ‘M’ and ‘N’ in both trademarks was different.
  5. ‘N’ and ‘F’ in NRF make a fluttering flag, which was not the case with “MRF”.
  6. Defendants’ raw materials differ from those of the plaintiff

Summary of court decision and judgment

The learned single judge on the case heard both sides thoroughly and considered all aspects of the case. In his final judgment, he stressed upon the fact that the plaintiff has suffered irreparable loss and damage and due to prior use of the disputed mark, the plaintiff was entitled to an ad-interim injunction.

Analysis

The onus to prove that the defendant is deceitfully passing off goods of the plaintiff lies on the latter[1]. To prove the same, plaintiff has to establish the following:

  1. The similarity of trademarks of the plaintiff and defendant.
  2. There is bound to be confusion created in the minds of customers by the usage of both trademarks simultaneously.
  3. The plaintiff has been using the trademark prior in time than the defendant.
  4. Plaintiff’s business or goods have acquired a reputation, i.e., showing that his trademark has become distinctive in his goods and the purchasing public at large associates the plaintiff’s name with them.
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The trademarks “NRF” and “MRF” are phonetically similar which creates a greater degree of confusion. Special weightage in this case needs to be given to the class of purchasers. They would not keep the products side-by-side and compare, every time they buy the products. So the importance of the Swastik logo and the blue lining become irrelevant. The consumers are bound to get confused when hearing “MRF” and “NRF” as ‘N’ can be pronounced/heard as ‘M’ and vice versa. Thus, the trademarks were similar, phonetically as well as visually.

As regards to the second requirement, the test to be applied is, whether a man of average intelligence and of imperfect recollection would be confused, i.e., it is to be seen through the eyes and ears of an unwary customer on the first impression. Especially, in the present case bearing in mind the class of purchasers of the defendant’s tube, there could be confusion between the two trademarks which sound similar to the ears.

Further, there was no dispute regarding prior use of trademark “MRF” by the plaintiff. Owing to sales figures of the plaintiff and their super quality, their reputation had been very much established in India as well as abroad, as much as it was a household name. From the above analysis, it can also be seen that there is nothing that relates to the registration of the trademark, to prove the offence of passing off. Hence, the point advanced by the defendant about the non-registration of the trademark to defeat the suit was irrelevant. Thus, the offence of passing off is clearly established and proven. So it can be said that the case has been correctly decided, keeping in view all aspects.

Defendant No.1 displayed gross dishonesty in adopting the mark “NRF” in relation to tubes in such a manner that the same could be mistaken for the plaintiff’s trademark and products: as the goods of the plaintiff and defendant are of the same class and description, sold through same channels, across the same counters and to the same class of customers.

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Conclusion

In the present case, the defendant’s marks were so made to mislead consumers. This malpractice is harmful for competitors and the consumers as well. In today’s time when all corporates and businesses are blinded by their aim to earn profits, such infringement activities have become very common. It remains the aim of IPR to reduce these practises and punish the law-breakers with hefty damages and fines.


[1] Chhattar Extractions Ltd Vs .Kochar Oil Mills Ltd., AIR 144 (Delhi: 1996)

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