Hengst Se Anr vs. Tejmeet Singh Sethi And Anr

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 indulge in trafficking and hoarding of these marks, especially as they stated they were not doing genuine business under them. The Court noted the Defendants' history of similar conduct, including a previous instance where they paid Rs. 2 lakhs in costs. Consequently, the Court directed a decree of permanent injunction against the Defendants in terms of paragraphs 48(i) and (ii) of the plaint. The Defendants' trademark applications/registrations for the mark 'HENGST' and deceptively similar marks were ordered to be withdrawn or cancelled. The Defendants assured the Court that they possessed no products bearing the mark 'HENGST'. The Defendants were also ordered 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 and pursue claims for damages and costs. The Court also noted that six cancellation petitions filed by the Plaintiffs had resulted in the cancellation of various registrations obtained by the Defendants.

Facts

The Plaintiffs, Hengst SE and Hengst Luman India Pvt. Ltd., who own the trademark 'HENGST' since 1958 and have extensive registrations and use in India since 2012, filed a suit for permanent injunction. Their grievance was that the Defendants, Tejmeet Singh Sethi and U We India, had applied for or obtained registrations for deceptively similar trademarks such as 'HENGST', 'HENGEST', 'HANXXET', and 'HENGST AUTOMOTIVE' across various classes, including those related to filtration solutions and automotive chemicals. The Plaintiffs also filed six cancellation petitions against these registrations. The Defendants were engaged in manufacturing and selling coolants and filters for automobiles. The Court noted a pattern of alleged trademark trafficking by the Defendants, referencing a previous instance where they paid Rs. 2 lakhs in costs for similar conduct.

Key Issues

1. Whether the Defendants' trademarks 'HENGEST', 'HANXXET', and 'HENGST AUTOMOTIVE' are deceptively similar to the Plaintiffs' registered trademark 'HENGST' and thus infringe upon the Plaintiffs' rights under trademark law? Petitioner's Argument: The Plaintiffs argued that the Defendants' marks were deceptively similar to their well-established 'HENGST' mark, leading to confusion in the marketplace. They contended that the Defendants' actions constituted trademark infringement and dilution of their brand's goodwill and reputation. The Plaintiffs relied on their extensive use and registrations of the 'HENGST' mark since 1958 and in India since 2012. Revenue/State's Argument: The judgment does not record any specific arguments made by the revenue or state. The proceedings appear to be between private parties concerning trademark rights.