During 1901, the first Royal Enfield motorcycle was produced by The Enfield Cycle Company Limited at Redditch, England. The motorcycle was designed by Bob Walker Smith and Frenchman Jules Gobiet and was launched in the f

CS Professional · Intellectual Property Rights - Laws and Practices · PYQS · June 2024
During 1901, the first Royal Enfield motorcycle was produced by The Enfield Cycle Company Limited at Redditch, England. The motorcycle was designed by Bob Walker Smith and Frenchman Jules Gobiet and was launched in the famous Stanley Cycle Show in London in November, 1901. The motorcycle was advertised in the newspapers including in The Autocar newspaper dated 21st December, 1901. In 1913, the first India Tourist Trophy race, Royal Enfield had won the first prize. After first Indo Pakistan war and considering the continued hostilities along the Cease-Fire Line (now known as Line of Control ('LOC'), the Government of India ('GOI') during 1951 looked out for the 'seize-proof motorcycles for Indian army to carry out patrolling at the inaccessible tracts along the Cease-Fire Line. The Plaintiff's Royal Enfield Bullet 350 was chosen as the most suitable bike for the job. Immediately, during 1952, 500 of such bikes were ordered by the GOI. The Royal Enfield Bullets gave a sterling service on the tough terrain of Kashmir and in scorching desert of Rajasthan. Thereafter, subsequent orders were issued by GOI, with requirement to manufacture such bikes in India. An industrial license was granted with provision for the company to manufacture upto 5000 units per annum provided it followed a phased programme of making an ever-increasing number of components in India. This was the beginning of a relationship of paramount importance to Royal Enfield-with Indian Army and other armed forces. In 1955, the Redditch company partnered with Madras Motors in India to form 'Enfield India' to assemble, under licence, the 350 cc Royal Enfield Bullet motorcycle in Madras and The Enfield India Limited ('The Enfield India') was incorporated. Initially, it started with the assembling of Royal Enfield Bullets shipped from the Enfield Cycle Co. Ltd. of Redditch, at its plant in Madras, India. By 1962, all components were made in India. From 1977, Enfield India begins exporting the 350cc Bullet to the UK and Europe, since the year 1955, the plaintiff has been continuously, extensively and widely manufacturing and marketing their motorcycles in India under the distinctive trademark ROYAL ENFIELD. All plaintiff's products bear the house mark ROYAL ENFIELD and are sold across India and the globe. The plaintiff's ROYAL ENFIELD motorcycles are sold under several well-known brands like Royal Enfield, Bullet, Enfield, Royal Enfield Continental GT, Royal Enfield Thunderbird, Classic, Royal Enfield Himalayan, Royal Enfield Interceptor, Royal Enfield Hunter, Royal Enfield Meteor etc. The plaintiff's ROYAL ENFIELD motorcycles and accessories are sold extensively all over India and are also exported to over 70 countries viz. USA, Europe, Brazil, Thailand, Nepal, Australia, Colombia, etc. The plaintiff's motorcycles sold under the mark ROYAL ENFIELD by reason of their excellent quality and volume of sales have garnered enviable reputation and goodwill amongst the members of the trade and public and the mark ROYAL ENFIELD is always associated with that of the plaintiff only and to this day its Royal Enfield motorcycles stand as a symbol of power, toughness, elegance and to put it in a few words it still represents the legacy of "Royal Enfield-Made Like A Gun!". The plaintiff's manufacturing operations go through a series of modernization and improvement efforts, with a number of automated processes. Its products are known for their reliability, quality and toughness. The plaintiff has a state-of-the-art infrastructure to manufacture its vehicles and has an active in-house research and development wing (one in India and another one in United Kingdom) constantly at work to meet the changing customer/ market preferences. At present, the plaintiff operates via various subsidiaries across multiple countries namely in the United Kingdom, Thailand, North America, Brazil and Canada. It operates through its dealers and distributors and by means of more than 1088 large format stores and 1024 studio format stores in major cities and towns across India and exports to multiple countries worldwide. Through its distribution network, the plaintiff has 187 exclusive stores in 22 countries and sells through about 724 multi-brand outlets and has over 1000 dealers/retainers around the world. The plaintiff has more than 1088 authorized dealers in India, all maintaining a similar Brand Retail Identity (BRI) and are operating outlets that are uniquely designed with distinguishing features which include distinctive interiors, exteriors, colour scheme and get-up which has become inalienably associated with the goods and business of the plaintiff apart from using the trademarks vesting with the plaintiff. This is an exercise done at considerable cost and effort, and with a uniform standard across the country and abroad, it was further claimed by the plaintiff that apart from selling the motorcycles, it also sells "bike care products, apparels and other products such as riding gear, rain suits, caps, T-shirts, readymade garments, jeans, trousers, jackets, gloves, helmets, head gears, boots and shoes, mugs, key-chains, bike covers etc." under its various trademarks. The plaintiff came to know that the defendant is using the identical name "ROYAL ENFIELD" for selling cosmetic items. This act of defendant is creating deception, confusion in the minds of the general public and creates an assumption that the products are those of the plaintiff company. The plaintiff thus, filed the suit for restraining the defendant from using the mark. The defendant put forth his defence by stating that plaintiff mark is not registered for cosmetic items under Trademark Act and hence the plaintiff is not entitled to restrain them for using the mark of ROYAL ENFIELD. Based on the above facts answer the following: Will the plaintiff succeed ? Substantiate your argument with the help of decided cases.

Answer & Explanation:

Well-known Trademark plays an important role in global markets and in identifying symbols and sign that are widely known to the significant general public and enjoys a fairly high reputation. All the countries globally have accepted the significance of Well-known Trademark including India. It has given well-known Trademark exceptional rights over registration of identical or deceptively similar marks and also against their abuse. The law makers in India have made specific provisions for safeguarding the well-known trademarks in the Trade Marks Act of 1919. Well known trademark is defined under section 2 (1) (zg) of Trade Marks Act, 1999 as: In relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services. There are many cases in India for protection of Well-known Trademark and one of the most famous cases was of Daimler Benz Aktiegesellschaft & Anr v. Hybo Hindustan AIR 1994 Del 2369 In this case, the plaintiff was a manufacturer of Mercedes Benz cars, and the defendant was using the mark BENZ for selling its undergarments. The Court in deciding the case acknowledged the logo of the plaintiff as a well-known trademark and hence restrained the defendant from using the impugned mark by stating that there was no valid reason as to why the defendant would adopt the name "Benz", which is associated with one of the finest engineered cars in the world and has a trans-border reputation and good will. In another case of Rolex Sa v Alex Jewellery Pvt Ltd. & Ors, 2009 (41) PTC 284 (Del.) The plaintiff filed a case against the defendants who were dealing with artificial jewellery, and using the trade name "Rolex" associated with the plaintiff. The court held that the plaintiff's trade mark was a well-known trademark since the general public using watches recognize the trade name Rolex and the defendant using the same name for dealing with artificial jewellery would create confusion in the minds of the general public and might create an assumption that the products are those of the plaintiff company. Hence, the court granted injunction against the use of the trade name Rolex by the defendants. In Microsoft Corporation & Anr. v Kurapati Venkata Jagdeesh Babu & Anr., 2014 (57) PTC Delhi High Court held that the mark MICROSOFT was a well-known mark since it is being used and known to most of the public throughout the world, while also considering extensive evidence in relation to advertising and publicity for the mark in India. The court held that the defendants were not allowed to use the same mark "either as a trademark or part of its trading style/corporate name in relation to similar or dissimilar business as the said trademark has got a unique good will and reputation". To determine whether the mark is Well-known or not, the registrar will consider the following points: That the general public has knowledge about the said mark and are able to recognize the alleged well-known marks and the recognition obtained by way of promotions. The duration, extent and geographical area of any use or promotion of that trademark. The record of successful enforcements of the rights in that trademark, in particular the extent to which the trademark has been recognized as a well-known trademark by any Court or Registrar under that record. The number of actual or potential consumers of the goods or services. The number of persons involved in the channels of distribution of the goods or services. The business circle dealing with the goods and devices to which the trademark applies. Wherein a trademark has been determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trademark as a well-known trademark for registration under this Act. Section 11(6) & 11(7) of the Trademark Act, 1999 provide protection of Well-Known Trade mark and protection for the marks which are registered in good faith. In view of the above the plaintiff will succeed.

Topics: Trademark Law

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