Full Text
HIGH COURT OF DELHI
Date of Decision: 22nd November, 2022
H.S. SAHNI, SOLE PROPRIETOR M/S M. K. AUTO SALES
CORPORATION ..... Plaintiff
Through: Mr. Pankaj Kumar & A. Srivastava, Advocates. (M:9811596201)
Through: Mr. Akhil Sibal, Sr. Advocate with Mr. Prahhu Tandon, Ms. Kripa Pandit, Ms. Navreet Kaur, Mr. Christopher and Ms. Asawari Jain, Advocates. (M:9810013453)
JUDGMENT
1. This hearing has been done through hybrid mode. I.A. 18693/2022 (Seeking stay on behalf of the Counter-Claimants)
2. This is an application on behalf of the Counter-Claimants / Defendants (hereinafter ‘Defendants’) under Order XXXIX Rule 1 and 2 seeking an interim order restraining the Plaintiff in the suit- Mr. H.S. Sahni, sole proprietor of M/s M.K. Auto Sales Corporation from using the marks ‘M.G.’, ‘M.G.I.’, or ‘M.G. (device)’ (hereinafter ‘M.G. marks’).
3. The Defendants in the present suit are Defendant No.1- M/s Saic Motor Corporation Limited, Defendant No.2- M/s Saic Motor International Co. Ltd. and Defendant No.3- M/s M.G. Motor India Pvt. Ltd. Both the Plaintiff and the Defendants claim rights in ‘M.G. marks’. The Plaintiff claims to be the prior user of the said marks since 1989 and the Plaintiff also has registrations in India in respect of the said marks since 1998. The Defendants claim global rights in the ‘M.G.marks’ since 1924 when the business was established in the U.K.
4. The Plaintiff’s sales tax registration dates back to 1989 and he claims to have been continuously using ‘M.G. marks’ as well as the corporate logo The word marks ‘M.G.’ with application no. 809098 and ‘M.G.I’ with application no. 809099, are registered in favour of the Plaintiff since 1998. The explanation for having adopted the said mark by the Plaintiff as has been set out in the plaint is that the mother of the Plaintiff, Mrs. Mohinder Kaur Sahni, was affectionately referred to as ‘Mohinder G’ by her family.
5. Both the parties are vehemently contesting each other’s claims in the Trade Mark Registry where oppositions and applications are pending. In the written statement, the case of the Defendants is that the mark was adopted in
1924. As of 2021, the Defendants are the second largest automobile company in China and the 12th largest automobile company in the world by production.
6. Today, ld. counsel for the parties have brought to the notice of this Court another litigation being FAO(COMM) 88/2021 titled H.S. Sahni v. Mukul Singhal and FAO(COMM) 89/2021 titled Mukul Singhal v. M/s M.K. Auto Sales Corporation involving the present Plaintiff wherein the ld. Division Bench of this Court vide a common judgment has already injuncted the Plaintiff herein from using the mark ‘M.G.’ and ‘M.G.I.’ in the following terms:
7. The question before the Court would be as to who has superior rights in the ‘M.G. marks’ and whether the Defendants have trans-border reputation in respect of the ‘M.G. marks’. The Defendants’ ‘MORRIS GARAGES’ mark was founded in 1920 in the U.K. The said ‘MORRIS GARAGES’ name was, thereafter, abbreviated as ‘M.G.’. The documents on record show that there is substantial usage of the mark ‘M.G.’ globally by the Defendants for more than 100 years now. The Defendants also launched their cars in India in 2018-19 on a commercial scale. The Plaintiff is in an identical business as that of the Defendants i.e., automobile parts and accessories. The competing marks and logos are set out below: Plaintiff’s device mark Defendant’s device mark
8. A perusal of the order passed by the Ld. Division Bench shows that there is serious doubt as to the user claimed by the Plaintiff. Moreover, the Court cannot lose sight of the fact that cars under the mark ‘M.G.’ have been sold by the Defendants in India on a large scale for the past 3-4 years now. The Plaintiff is selling automobile accessories which also concern the safety of automobiles and passengers using those automobiles. Thus, even remote chances of confusion ought to be obviated between the products of the parties as the marks in question are identical in nature and fall in an identical class. Confusion is bound to occur.
9. Considering these facts, and the fact that the Plaintiff already stands injuncted by the ld. Division Bench in the appeal as extracted above, it is directed that the Plaintiff shall stand restrained from using the mark ‘M.G.’, ‘M.G.I’, ‘M.G. (device)’ or any other confusingly similar mark in word, logo or device form in respect of automotive parts or accessories till the next date of hearing. I.A. 8714/2022
10. Let the rejoinder to the application be filed within 4 weeks.
11. List both the applications for hearing on 7th February, 2023.
PRATHIBA M. SINGH JUDGE NOVEMBER 22, 2022/dj/sk