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

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 were not conducting genuine business under them. This was further supported by past instances where the Defendants faced penalties for similar conduct. Consequently, the Court directed a permanent injunction against the Defendants in terms of paragraphs 48(i) and (ii) of the plaint. The Defendants' trademark applications/registrations for the impugned marks were ordered to be withdrawn or cancelled.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 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., claim rights in the mark ‘HENGST’, adopted in 1958, used extensively in India since 2012 for filtration solutions. They possess trademark registrations for ‘HENGST’ in various classes. The Defendants, Tejmeet Singh Sethi and U We India, applied for and obtained registrations for marks including ‘HENGST’, ‘HENGEST’, and ‘HANXXET’ in classes related to chemicals, vehicle parts, and industrial oils. The Plaintiffs filed a suit for permanent injunction and cancellation petitions against these registrations, alleging infringement and deceptive similarity. The Defendants were engaged in manufacturing and selling coolants and filters. The Court noted previous instances where the Defendants were penalized for trademark hoarding.

Key Issues

1. Whether the Defendants' trademark applications/registrations for marks such as ‘HENGST’, ‘HENGEST’, and ‘HANXXET’ are deceptively similar to the Plaintiffs' registered mark ‘HENGST’, infringing upon the Plaintiffs' rights under trademark law? Petitioner's Argument: The Plaintiffs argued that the Defendants' marks are identical or deceptively similar to their well-established ‘HENGST’ mark, leading to confusion among consumers. They contended that the Defendants were engaged in trademark trafficking and hoarding, as evidenced by their business activities and previous legal encounters. They relied on their extensive use and reputation in the market. Revenue/State's Argument: 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.