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 that the Defendants' intent was to traffic or hoard these marks, as they were not conducting genuine business under them. This conduct was deemed an illegality that the Court could not ignore. The Court noted a previous instance where the Defendants were ordered to pay Rs. 2 lakhs in costs in a similar matter involving 18 trademark applications. Based on the Defendants' undertakings to withdraw/cancel their marks and their assurance that they possessed no products bearing the 'HENGST' mark, 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 The Defendants' trademark applications/registrations for the impugned marks were ordered to be withdrawn/cancelled.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 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

The Plaintiffs, Hengst SE and Hengst Luman India Pvt. Ltd., filed a suit for permanent injunction against the Defendants, Tejmeet Singh Sethi and U We India, claiming rights in the trademark 'HENGST', adopted in 1958. The Plaintiffs are manufacturers of filtration solutions with a global turnover of approximately 435 million Euros in 2018 and have extensive use and registrations for their mark in India since 2012. The Plaintiffs' grievance was that the Defendants had applied for and obtained registrations for deceptively similar trademarks, including 'HENGST', 'HENGEST', 'HANXXET', and 'HENGST AUTOMOTIVE' across various classes related to automotive parts and chemicals. The Plaintiffs subsequently filed cancellation petitions against these registrations. The matter was heard by the Delhi High Court.

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, indicating an intent to misuse the trademark system? Petitioner/Appellant Arguments: The Plaintiffs argued that the Defendants' marks were deceptively similar to their well-established 'HENGST' mark, leading to confusion among consumers. They contended that the Defendants' conduct suggested an intent to traffic in trademarks, as they were not engaged in genuine business under these marks. The Plaintiffs relied on their extensive use, reputation, and prior registrations of the 'HENGST' mark. They also pointed to previous instances where the Defendants had been penalized for similar conduct. Revenue/State Arguments: The judgment does not record specific arguments from the revenue or state. However, the Defendants' counsel acknowledged the Plaintiffs' rights and agreed to withdraw/cancel their marks.