The Delhi High Court has allowed the interim injunction application and restrained the defendants and all persons acting on their behalf from selling, marketing, advertising or offering for sale the impugned goods under the trademarks “HAVAI” and the impugned device marks, or any other mark deceptively similar to the plaintiffs’ HAVELLS trademarks and formative marks, insofar as such use amounted to passing off.
The Court held that registration of a defendant’s trademark does not bar a passing off action where the plaintiff establishes prior goodwill, misrepresentation and likely damage. In assessing passing off, the Court will examine the actual marketplace use of the impugned mark, including stylization, commercial impression, colour scheme and overall presentation, and not merely the mark as registered. If the defendant’s manner of use is designed to create an association with a well-known mark and is likely to cause initial interest confusion in relation to identical goods, interim injunctive relief can be granted notwithstanding the defendant’s registration.
Also Read Delhi HC Dismisses Vedanta’s Plea Against Rejection of Offshore Oil & Gas Contract Extension
A Single Judge Bench of Justice Jyoti Singh first noted that Havells is the registered proprietor of the HAVELLS trademark and its formative marks, that it has used the mark prominently and continuously for decades, and that its reputation, sales, advertising, exports, and market presence strongly establish its goodwill. The Court also recorded that HAVELLS has been recognized as a well-known mark and that Havells had earlier secured favourable injunctions against infringing marks, including marks designed to be misread in a manner similar to the present dispute.
The Court rejected the broad defence that registration of the defendants’ mark was sufficient to defeat the action. Relying on Supreme Court precedent, it observed that even if both parties are registered proprietors, a passing off action remains maintainable because passing off is a common law remedy protected under Section 27(2) of the Trade Marks Act, and rights of prior user and goodwill are superior to mere registration. The Court reiterated that the three ingredients of passing off are goodwill, misrepresentation and damage.
On the actual comparison of marks, the Court stressed that what mattered was the mark used in the marketplace, not merely the mark as it stood on the register. It found that the defendants’ registered mark ended in a normal “I”, but the mark actually used on products was stylized in a way that the “I” could be perceived as “L”. Because of that stylization, “HAVAI” could be pronounced as “Ha-va-L”, making it phonetically deceptively similar to “HAVELLS”. The Court treated this as a deliberate and mala fide attempt to sail close to the plaintiffs’ mark.
The Court further observed that the defendants had gone beyond the word mark and had also copied the get-up and colour combinations of the plaintiffs’ device marks. Since both sides were dealing in identical or overlapping electrical goods such as air coolers, fans and immersion rods, and since the purchasing public included ordinary consumers with average intelligence and imperfect recollection, the likelihood of confusion was high. The Court held that the “initial interest confusion” test clearly applied, because a customer could be misled at the first point of contact into believing that the defendants’ goods came from, or were associated with, Havells.
The High Court concluded that this was a classic case of passing off. It found, prima facie, that Havells had established goodwill in HAVELLS, that the defendants’ adoption and market presentation of the impugned marks amounted to misrepresentation, and that such conduct was likely to damage and dilute the plaintiffs’ goodwill and reputation. The Court therefore held that Havells had made out a strong prima facie case, that the balance of convenience was in its favour, and that irreparable harm would follow if injunction were denied.
Briefly, Havells India Limited and another plaintiff approached the Delhi High Court seeking an ad interim injunction against Havai Home Products Pvt Ltd. and its seller/distributor on the ground that the defendants were using the marks “HAVAI” and related device marks for electrical goods such as air coolers, pedestal fans, immersion rods and spare parts, which Havells said were deceptively similar to its long-standing and registered “HAVELLS” trademarks and formative marks. The plaintiffs pointed out that HAVELLS has been used since 1942, has registrations dating back to 1955, enjoys enormous sales and promotional expenditure, and has already been recognized by the Court as a well-known trademark under the Trade Marks Act, 1999.
Havells claimed that the defendants were not merely relying on their registered word mark “HAVAI”, but were actually using a stylized form of the mark in the market in which the last letter “I” was presented in a way that could be read as “L”, making the mark sound and appear close to “HAVELLS”. The plaintiffs also alleged that the defendants had adopted similar device marks, copied the colour scheme, get-up and layout, and sold their products through their own websites and online marketplaces such as Amazon, thereby increasing the likelihood of confusion among consumers.
The defendants resisted the injunction by arguing that “HAVAI” was their registered trademark in several classes, that one registered proprietor cannot sue another for infringement, and that “HAVELLS” and “HAVAI” were not visually, structurally or phonetically similar. They also said that references to “HAVELLS SPARES” had been removed after an undertaking to the Court and contended that the plaintiffs had produced no evidence of actual confusion or deception in the market.
