Hengst Se & Anr. vs. Tejmeet Singh Sethi & Anr.

Held

The Court held that the Defendants' trademarks were indeed deceptively similar to the Plaintiffs' mark 'HENGST'. The Court found evidence suggesting that the Defendants' intent was to indulge in trafficking or hoarding of these marks, as they admitted to not doing genuine business under them. This conduct was deemed unacceptable. The Court noted a previous instance where the Defendants were penalized with costs of Rs. 2 lakhs in a similar matter involving 18 trademark applications. Based on the Defendants' undertakings to withdraw/cancel their marks and their assurance of not possessing products bearing the 'HENGST' mark, the Court granted a decree of permanent injunction. The Defendants' trademark applications/registrations for the impugned marks were ordered to be withdrawn/cancelled. 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, and have extensive use and registrations for it since 2007, particularly in filtration solutions for automobiles. 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 against these registrations. The Defendants were engaged in manufacturing and selling coolants and filters for automobiles.

Key Issues

1. Whether the Defendants' trademarks ('HENGEST', 'HANXXET', '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, indicating a lack of genuine business intent? Petitioner/Plaintiffs' arguments: The Plaintiffs argued that the Defendants' marks were deceptively similar to their own established mark 'HENGST', leading to confusion in the marketplace. They contended that the Defendants' conduct suggested an intent to traffic or hoard trademarks without genuine commercial use, which is contrary to the principles of trademark law. They relied on their extensive use and reputation in the mark 'HENGST'. Revenue/State arguments: The judgment does not record specific arguments made by the Revenue or State. However, the context implies that the Trademark Registry's actions (granting registrations) were implicitly defended until the Defendants' admissions and undertakings.