The Delhi High Court recently issued a significant decision in the case of Roxtec AB & Anr versus S. Chakravarty & Ors, shedding light on crucial trademark and design disputes. The case primarily revolves around an application under Section 124 of the Trade Marks Act, 1999, filed by S. Chakravarty & Ors (hereinafter referred to as ‘the Defendants’) wherein they sought permission to file rectification/cancellation petitions against the registered trademarks of Roxtec AB (referred to as ‘Plaintiff No. 1’) and Roxtec India Private Limited (referred to as ‘Plaintiff No. 2’).”
Plaintiff No. 1, a Swedish company, serves as the parent entity, while Plaintiff No. 2 is its wholly-owned subsidiary responsible for conducting business operations in India. These entities possess several registered trademarks, including a circular rubber module logo , the slogan “WE SEAL YOUR WORLD,” and a “PEELING HANDS” (DEVICE) mark . The root of the dispute lies in the Defendant’s contention that the Plaintiffs are attempting to monopolize specific trademarks related to cable sealing solutions.
The Defendants argued that the circular rubber module logo cannot be monopolized, as it is commonly employed by numerous manufacturers and sellers of cable sealing solutions. They asserted that it is a generic design element widely used in the industry.
Regarding the slogan “WE SEAL YOUR WORLD,” the Defendants argued that while the entire slogan may be registered as a trademark, there should be no monopoly on the individual words, as they constitute ordinary English language terms. They contended that the Plaintiffs have attempted to extend their trademark protection to generic words.
Additionally, the Defendants filed an application under Order 1 Rule 10 of the Code of Civil Procedure (CPC) seeking the removal of Plaintiff No. 2 from the list of plaintiffs. They argued that the suit for design infringement initiated by the Indian subsidiary cannot be sustained under Section 22 and Section 30 of the Designs Act, 2000, unless the assignment or license is officially registered with the Design office. They placed reliance on Amit Jain v. Ayurveda Herbal & Ors., which asserts that the registration of an assignment is mandatory in law.
In response, the Plaintiffs emphasized that the circular rubber module logo is not a generic design but a distinctive “BULLS EYE” device mark exclusively associated with Roxtec. They argued that the Defendants have copied their design and are misleading the public by implying that their products are equivalent to those of the Plaintiffs.
Regarding the slogan “WE SEAL YOUR WORLD,” the Plaintiffs acknowledged that they do not seek a monopoly on the individual words but on the entire phrase, as it uniquely identifies their products.
With respect to the “PEELING HANDS” (DEVICE) mark , the Plaintiffs claimed that the Defendants have copied their artistic expression, the ‘PEELING HANDS’ (DEVICE) mark , which demonstrates how to peel the central portion of the rubber module device.
Additionally, the Plaintiffs argued that Section 30 of the Designs Act grants discretion to the party concerning whether to register the license or assignment. Furthermore, they assert that the Court has the authority to permit the production of a license under Section 30(5) of the same act.
After careful consideration of the arguments and a review of physical products from both parties, the Delhi High Court issued the following decision:
- The circular rubber module logo (trademark registration no. 1815482) and the “PEELING HANDS” (DEVICE) mark (trademark registration no. 1296552) are deemed vulnerable. The Defendants are permitted to file cancellation or rectification petitions for these trademarks.
- The registration for the slogan “WE SEAL YOUR WORLD” (trademark registration no. 1794058) is confined to the entire phrase, and there shall be no monopoly on the individual words.
- Trademarks bearing registration numbers 1080575, 1080577, and 1080578, when used with the mark , shall include the disclaimer “Registration of this Trade Mark shall give no right to the exclusive use of the DEVICE.”
- The Delhi High Court found that the Plaintiffs not only relied on the design registrations of Plaintiff No.1 but also provided sales figures for Plaintiff No.1 on a global scale and for Plaintiff No.2 specifically in India, including promotional expenses.
As a result, the Delhi High Court declined to remove Plaintiff No. 2 from the list of parties. Instead, an issue is framed to be adjudicated at the final stage: “Whether Plaintiff No.2 is a necessary and proper party in the present suit?” This issue will be decided in due course.