Hengst Se, Body Incorporate, Nienkamp 55-85, 489147, Munster De, Germany vs. Tejmeet Singh Sethi, G-10 Udyog Nagar, Delhi-110041

Held

The Court held that the Defendants' marks were indeed deceptively similar to the Plaintiffs' mark 'HENGST'. The Court found that the Defendants' intent was to indulge in trafficking and hoarding of these marks, as they admitted to not conducting genuine business under them. This conduct was deemed a large-scale illegality. The Court noted a previous instance where the Defendants were ordered to pay Rs. 2 lakhs in costs for similar actions. Consequently, the Court granted a decree of permanent injunction against the Defendants. The Defendants' trademark applications/registrations for the impugned marks were ordered to be withdrawn/cancelled. The Defendants assured the Court that they possessed no products bearing the mark 'HENGST'. Additionally, the Defendants were directed to pay Rs. 10 lakhs towards part-litigation costs to the Plaintiffs. 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, used extensively in India since 2012, and registered in various classes. The Plaintiffs are manufacturers of filtration solutions with a turnover of approximately 435 million Euros in 2018. The Defendants had applied for and obtained registrations for marks like ‘HENGST’, ‘HENGEST’, ‘HANXXET’, and ‘HENGST AUTOMOTIVE’ in classes related to chemicals, vehicle parts, filters, and industrial oils. The Plaintiffs filed cancellation petitions against these registrations due to their deceptive similarity to the Plaintiffs' mark. The Defendants admitted to not doing genuine business under these marks and had previously been ordered to pay costs in a similar matter.

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? 2. Whether the Defendants' actions in applying for and obtaining registrations for these marks constitute trademark trafficking or hoarding, given their admission of not conducting genuine business under them? Petitioner/Appellant Arguments: The Plaintiffs argued that the Defendants' marks were deceptively similar to their well-established 'HENGST' mark, leading to a likelihood of confusion among consumers. They contended that the Defendants' conduct amounted to trademark trafficking, as they were not using the marks for genuine commercial purposes but rather to acquire registrations that conflicted with existing rights. They relied on the extensive use and reputation of their mark in India. Revenue/State Arguments: The judgment does not record specific arguments from the Revenue or State. The Defendants, through their counsel, acknowledged the Plaintiffs' rights and agreed to withdraw/cancel their marks.