Using Phonetically & Visually Similar Trademark/Device In Vernacular Language Can Amount To Infringement Of Registered Mark: Madras High Court
The Madras High Court was considering the applications filed to vacate an ex-parte injunction granted earlier.
While making an injunction order absolute, the Madras High Court has held that an attempt to use a phonetically and visually similar trademark/ device in a vernacular language would not entitle a litigant to infringe an already established and registered trademark.
The High Court was considering the applications filed to vacate an ex-parte injunction granted earlier.
The Single Bench of Justice K. Kumaresh Babu held, “This Court prima facie concludes that the plaintiff had been the prior user of the trade mark which commends a good reputation and good will in the market. The defendants attempt to use a phonetically and visually similar trademark/ device however, in a vernacular language would not entitle him to infringe the trademark of the plaintiff which had been established to have a good reputation and good will.”
Advocate Jayesh Kumar Daga represented the Petitioner while Advocate Ramesh Ganapathy represented the Respondent.
Factual Background
The plaintiff is a manufacturer of locks bearing a trademark which has been registered. The case as set up by the petitioner was that the defendant had also adopted a phonetically and visually similar trademark which was wholly deceptive causing confusion in the mind of the end users. The plaintiff claimed that the Court while granting an ex-parte injunction had given a finding that the usage of the trademark by the defendant was identical and deceptively similar to that of the plaintiff.
Arguments
It was the case of the defendant that the trade name was conceived through an independent and deliberate process, keeping in mind the nature of goods and their functional activities. He had also benefited from the registration of the trade name ‘Globe’ in Tamil for its device and therefore could not be injuncted from using the said trade name.
Reasoning
On a perusal of the facts of the case, the Bench noted that the plaintiffs had placed materials on record to substantiate that they had been in use of the trademark that was alleged to have been infringed and also were a prior user of the said trademark. “Even though the defendants claim to be a prior user, as rightly pointed out by the learned counsel for the plaintiff, in the application that had been filed by the defendant for registration of the Trademark they had indicated that they had proposed to use the trademark and the said application had been made in the year 2023”, it added.
The Bench further held, “It is true that a registration of a trademark would give a right to its proprietor to use the trademark. But however the very same Statute also enables a person to get the trademark rectified or removed from the register.”
The Bench noted that the proceedings of opposition/ rectification in respect of the defendant's mark were pending with the Registry.
The Bench thus concluded that the defendant’s attempt to use a phonetically and visually similar trademark/ device in a vernacular language would not entitle him to infringe the trademark of the plaintiff.
Thus, dismissing the applications, the Bench made the injunction granted absolute.
Cause Title: Vikas Mandoth v. M/s.Shanghai Huanqiu Lock Making Company Ltd. (Case No.: A Nos. 446 & 447 of 2026)