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Passing off Action Succeeded Despite Failed Infringement Claim

Intellectual property disputes often revolve around the protection of trademarks, especially when two entities claim ownership of similar or identical marks. The case at hand involves a passing off action where the Plaintiff sought legal recourse against the Defendant for unauthorized use of a registered trademark. Despite the Plaintiff's inability to establish a case of infringement, the court awarded relief based on the principle of passing off.

The Plaintiff filed a suit centered on their registered trademark 'ELECTRON Label,' registered under class 07 for products like juicers, mixers, grinders, washing machines, pumps, and motors. The Plaintiff claimed usage of the mark since 1998 and also held an abandoned registration under class 09 for wires and cables. The Defendant, on the other hand, contended that they were the registered proprietors of the 'ELECTRON Label' under classes 09 and 11, with usage since 1992 for wire and cables among other products.

Trademark Similarity and User:
The court initially observed  that the trademarks of both parties were similar. Upon scrutinizing the evidence, it was observed that the Plaintiff successfully demonstrated their usage of the 'ELECTRON Label' in connection with wire and cable since 1998-1999. In contrast, the Defendant's claim of usage since 1992 lacked substantiation, as documents revealed usage only from 2004. Consequently, the court recognized the Plaintiff as the prior user of the 'ELECTRON Label' concerning wire and cable.

Prima Facie Invalidity of Defendant's Registration:
The court concluded that due to the Defendant's false claim of usage, their trademark registration was prima facie invalid. This decision implied that the Defendant's trademark registration would not impede the court from granting an injunction under the infringement plea, provided other prerequisites were satisfied by the Plaintiff.

Failed Infringement Claim:
Despite the Plaintiff's establishment as the prior user of the mark, the court denied relief under the infringement claim. The court reasoned that the Defendant's products (wire and cables) were dissimilar in nature to those of the Plaintiff (juicers, mixers, grinders, washing machines, pumps, and motors). Hence, the threshold for establishing infringement was not met.

Passing Off Relief Granted:
The pivotal aspect of this case is the court's decision to grant relief based on the doctrine of passing off. The court acknowledged the phonetic resemblance between the marks, the Plaintiff's prior use of the 'ELEKTRON' mark for electric wires and cables, the Plaintiff's reputation in the market, and other relevant factors. 

These elements collectively led the court to believe that the Defendant's usage of 'ELEKTRON' for wires and cables could potentially create confusion among the general public with imperfect recollection.

Concluding Note:
In a unique legal twist, this case highlights the court's willingness to protect a party's rights through the doctrine of passing off, even when the traditional claim of infringement does not stand due to dissimilarity between products. 

The decision reflects the court's commitment to preserving market integrity and ensuring that consumers are not misled by similar trademarks. This case serves as a reminder that even when infringement claims fail, alternative avenues like passing off can still provide effective remedies to protect trademark owners.

Case Law Discussed:
Case Title: Paragon Cable India Vs Essee Network Pvt. Ltd.
Date of Judgement:03.07.2023
Case No. CS(COMM) 112 of 2023
Neutral Citation No: 2023: DHC: 4359
Name of Hon'ble Judge: Sanjeev Narula 
Name of Court: Delhi High Court

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Md. Imran Wahab, IPS, IGP, Provisioning, West Bengal
Email: [email protected], Ph no: 9836576565

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