Hengst Se Body Incorporate, Nienkamnp 55-85, 48147 Munster De, Germany vs. Tejmeet Singh Sethi, G-10, Ydyog Nagar, Delhi

Held

The Court held that the Defendants' trademarks were indeed deceptively similar to the Plaintiffs' mark 'HENGST'. The Court found that the Defendants' intent was to traffic or hoard these marks, as they were not conducting genuine business under them. This was evidenced by their previous conduct in similar trademark disputes, where they had been ordered to pay costs. The Court noted that the Defendants had given undertakings to withdraw/cancel their marks. Consequently, the Court granted a decree of permanent injunction against the Defendants, directing the withdrawal/cancellation of their specified trademark applications/registrations. The Defendants assured the Court that they had no products bearing the 'HENGST' mark. The Defendants were also directed to pay Rs. 10 lakhs towards part-litigation costs to the Plaintiffs by July 31, 2022. Failure to comply would allow the Plaintiffs to revive the suit for damages and costs. The Court cautioned the Defendants against seeking registration of any mark identical or deceptively similar to third-party marks, warning of exemplary damages and punitive costs.

Facts

Hengst SE and Hengst Luman India Pvt. Ltd. (Plaintiffs) filed a suit for permanent injunction against Tejmeet Singh Sethi and U We India (Defendants). The Plaintiffs claim rights in the mark ‘HENGST’, adopted in 1958, and have extensive registrations and use since 2012 in manufacturing filtration solutions. The Plaintiffs' grievance is that the Defendants applied for and obtained registrations for trademarks such as ‘HENGST’, ‘HENGEST’, ‘HANXXET’, and ‘HENGST AUTOMOTIVE’ in various classes related to automotive parts and chemicals. The Plaintiffs filed cancellation petitions for these marks due to their deceptive similarity to the Plaintiffs' mark. The Defendants had previously been penalized with costs in a similar matter involving 18 trademark applications.

Key Issues

1. Whether the Defendants' trademarks 'HENGEST', 'HANXXET', and 'HENGST AUTOMOTIVE' are deceptively similar to the Plaintiffs' registered trademark 'HENGST', infringing upon the Plaintiffs' rights under trademark law? Petitioner's arguments: The Plaintiffs contended that the Defendants' marks were deceptively similar to their established 'HENGST' mark, leading to confusion in the marketplace. They argued that the Defendants' actions constituted trademark infringement and dilution of their brand reputation. The Plaintiffs relied on their prior adoption and extensive use of the 'HENGST' mark, supported by registrations in multiple classes. Revenue/State's arguments: The judgment does not record specific arguments from the revenue or state. However, it notes the Defendants' counsel acknowledging the Plaintiffs' rights and agreeing to withdraw/cancel their marks.