The Delhi High Court has granted a permanent injunction in favor of FMI Limited, a leading manufacturer of measuring tapes, against Midas Touch Metalloys Pvt. Ltd., restraining the latter from using a deceptively similar trademark, "INDEED," for its measuring tapes.

The Single-Bench of Justice Amit Bansal, noted that the "INDEED" mark was phonetically, visually, and structurally similar to FMI’s "INDI" mark.

The Bench further observed that FMI’s established sales figures of Rs. 67.85 crore and Rs. 76.63 crore for FY 2022-23 and FY 2023-24, respectively, demonstrated significant goodwill and reputation.

FMI Limited, one of the largest manufacturers of measuring tapes, spirit levels, and measuring wheels in the Indian subcontinent, has been using the trademark "INDI" since 2015. The company alleged that Midas Touch Metalloys Pvt. Ltd. launched a range of measuring tapes in July 2024 under the "INDEED" mark, bearing an identical trade dress and color scheme of blue and white.

In August 2024, the Court had issued a temporary injunction restraining the defendants from selling products bearing the impugned mark. The present proceedings addressed the question of making the injunction permanent.

The Court rejected the defendant's arguments that:

1. The word "INDI" was merely a short form for "India" or "Indian," stating that no reliance could be placed on such a claim supported solely by AI-generated results.

2. The "INDEED" mark was a sub-brand used alongside "SCOTTS," noting that this was immaterial under the Trade Marks Act.

3. The adoption of the "INDEED" mark was to emphasize superior quality and affordability, which the Court found lacked bona fide intent.

Additionally, the Court highlighted that the defendant’s use of the same blue-and-white color combination as FMI was deliberate and deceptive, as its other products did not use the same design. "...a prima facie case of passing off is made out on behalf of the plaintiff. The competing marks are phonetically, visually and structurally similar and are used by the parties in relation to identical goods having an identical and overlapping trade channels, which is likely to cause confusion and deception among the consumers who are ordinary persons of average intelligence and imperfect recollection," the Court said.

The Court held that the defendant’s use of the "INDEED" mark was likely to cause confusion and deception among consumers, given the similarities in the marks and the identical nature of the goods.

Consequently, the Court made the ex-parte ad interim injunction permanent, restraining Midas Touch Metalloys Pvt. Ltd. from selling, displaying, or advertising any measuring tapes or allied goods bearing the "INDEED" mark or any other deceptively similar mark. "...the ex-parte ad interim order passed on August 28th, 2024 is made absolute and the defendant, its proprietors, partners, directors, officers, servants, agents, distributors, dealers, retailers, representatives and anyone acting for and/ or on its behalf is/are restrained from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing in under the impugned trade mark ‘INDEED’ and/ or any other mark which may be phonetically/ deceptively/ structurally similar and/ or identical to the plaintiff’s mark ‘INDI’ and its variants in relation to the impugned goods being measuring tapes and/or any other allied/ related/ cognate goods till the final adjudication of the suit. Consequently, I.A. 37456/2024 filed on behalf of the plaintiff under Order XXXIX Rules 1 and 2 is allowed and I.A 40948/2024 filed on behalf of the defendant under Order XXXIX Rule 4 is dismissed," the Court ordered.

Cause Title: FMI Limited vs. Midas Touch Metalloys Pvt. Ltd. [CS(COMM) 721/2024 with I.A. 37456/2024]

Appearance:-

Petitioner: Senior Advocate J. Sai Deepak, Advocates N.K. Bhardwaj, Bikash Ghorai, Neeraj Bhardwaj, Rahul Maratha, V. Awasthi, Luv Virman

Respondent: Senior Advocate C.M. Lall, Advocates Kapil Midha, Garv Singh, Samiksha Gupta, Muskan Garg

Click here to read/download the Judgment


Justice Amit BansalDelhi High Court

Sukriti Mishra

    Sukriti Mishra was a Legal Correspondent at Verdictum. She covered the Supreme Court. She completed her graduation with BA. LL.B (Hons.) from The ICFAI University, Dehradun. Sukriti started covering courts in March 2022. She had previously worked with another legal news portal, where she covered the Delhi High Court and Trial Courts.