“SHAKTI” Prevails: Division Bench Upholds Plaintiff’s Trademark Rights

“SHAKTI” Prevails: Division Bench Upholds Plaintiff’s Trademark RightsThe Appellant/ Defendant filed two appeals before the Madras High Court, contesting two orders dated July 19, 2023, of the Single Judge. These two orders relate to a lawsuit filed by the respondent/plaintiff seeking an interim injunction against the appellant/defendant.

The case of the plaintiff was that it filed a commercial suit against the defendant against their use of the mark “SHAKTI” or any variations thereof. The plaintiff, a major player in the steel and iron industry since 2009, has an annual turnover of Rs. 200 crores and specialises in manufacturing various steel pipes. Additionally, they hold trademark registration No. 1067572 for the trademark “SHAKTI” under class 6.

The plaintiff claimed to have invested significant resources in promoting its mark “SHAKTI” through extensive advertising across various media platforms and has incurred substantial costs for sales promotion.

Sometime around December 2022, the plaintiff came to know about the defendant’s trademark application numbers 5386311 for ‘MS SHAKTI’ and 5461588 for a device mark in Class 6. The plaintiff claimed that the adoption of the mark by the defendant was dishonest, and it is phonetically and visually similar to that of the plaintiff.

Consequently, on December 28, 2022, the plaintiff sent a cease-and-desist notice to the defendant. In their response, the defendant acknowledged the use of the contested mark but claimed that their adoption of the mark was honest.

The plaintiff argued that any customer with average intelligence and imperfect recollection would likely get confused with the defendant’s mark as that of the plaintiff. The mere addition of the prefix ‘MS’ did not change the primary characteristic of the mark. The plaintiff further contended that despite registering their product under the name ‘MIEPL’ with the Bureau of Indian Standards, the defendant deliberately imitated the plaintiff’s mark to benefit from its reputation and goodwill, aiming to profit unfairly from the confusion.

The defendants argued that they were part of the MS Agarwal Group of Companies and have several brands with the ‘MS’ prefix. They stated that their mark ‘MSSHAKTI’ and its device primarily feature ‘MS,’ representing their company’s name. They have registered this mark under class 35 and applied for registration in class 6.

The Defendants pointed out that many third parties also use ‘SHAKTI’ in their marks, and it was not exclusive to the plaintiff and ‘SHAKTI’ has become a common term in trade. They emphasised that ‘MS’ is their dominant feature and argued that it differed significantly from the plaintiff’s mark.

However, the Single Judge recognised the plaintiff as the prior user of the mark “SHAKTI” having registration under Class 6. Citing common law principles, the Judge temporarily restrained the defendant from further use of the mark.

Against this order, the defendant filed an appeal and argued that the plaintiff claimed they were continuously using their mark “SHAKTI,” but in 2009, the plaintiff filed a trademark application no. 1886591. According to this application, the plaintiff began using the mark on September 28, 2009. Therefore, the plaintiff’s claim that they have been continuously using the trademark “SHAKTI” within the oval device is not true. Hence, the plaintiff has abandoned that use of its registered mark and has been trying to adopt another mark and, by virtue of this abandonment, the plaintiff cannot file a suit for infringement.

The defendant argued that the term ‘SHAKTI’ has become a common term in the trade and is used by many others with different prefixes and suffixes. Furthermore, they claim that there was no similarity between the plaintiff’s and the defendant’s marks. The defendant, a well-known company, asserts that the ‘MS’ prefix, which is part of their group’s corporate name, holds its own reputation, and the customers will only associate the defendant’s product with them, ruling out any confusion.

While deciding the appeals, the Division Bench held that there is no dispute that the plaintiff owns the trademark “SHAKTI,” while the defendant does not. As the registered owner, the plaintiff has the right to take legal action against any similar marks for infringement. The defendant’s first defence was based on abandonment or non-use. The plaintiff provided evidence, which includes invoices showing continuous use of the mark since its adoption in 2009. The fact that the plaintiff may have experimented with different styles of the mark doesn’t mean they stopped using the original style during this relevant period. Simply applying for a variation of the mark doesn’t imply abandonment of the original mark.

The Division Bench also noted that it was hard to see how the word “SHAKTI” relates to steel pipes or describes the trade in any way. There is not enough evidence to show that it is commonly used by all businesses in the market. The only argument presented by the defendant was that others in the market use similar types of marks, but this argument alone could not prove that the mark was generic in nature. At this stage, there was no evidence to suggest that “SHAKTI” is generic in the trade. On the question of distinctiveness and the difference between the marks, the Division Bench disagreed with the defendant’s argument that the prefix “MS” is the most essential part of the mark.

The Division Bench concluded that the Single Judge had considered all the relevant factors and had exercised discretion to arrive at a finding of prima facie case and balance of convenience in favour of the plaintiff and had granted an interim injunction. The Division Bench refrained from interfering in the order of the Single Judge merely because an alternative view is possible, unless and otherwise, the findings of the learned Single Judge are perverse in nature and cannot stand the scrutiny of law.

Authors: Manisha Singh and Gautam Kumar

First Published by: Lexology here