INTRODUCTION –
Vide its ruling in the case of Bajaj Electricals Ltd. v. Gourav Bajaj & Anr.[1], a Single Judge Bench of Bombay High Court put significant reliance on the well-known nature of the Bajaj Trademark and deliberated the rights and liabilities arising out of infringement of a registered trademark. In order to contemplate the dispute at hand, issues were framed on the lines of determining trademark infringement and passing off, and if the facet of unfair competition can be inculcated in the proceedings alongside deliberating harm to the reputation of the brand.
COMPREHENDING THE PARTIES INVOLVED & FACTS OF THE CASE –
Renowned Indian manufacturer Bajaj Electricals creates a variety of electrical goods, including fans, lights, and kitchen appliances. The business has established a solid brand and a well-known household name in India over the years. On the other hand, Gourav Bajaj is a local of Punjab who is not related to Bajaj Electricals. In order to pass off items under the Bajaj brand name, Gourav Bajaj has been accused of trademark infringement by Bajaj Electricals, according to the suit. Passing off is the act of selling goods under the guise that they are the property of a different firm, while trademark infringement is the unauthorised use of a registered brand.
As elaborated in the judgment, the present case entails its genesis from a suit filed by Bajaj Electricals against Gourav Bajaj in the Bombay High Court under the provisions listed in the Trademarks Act of 1999. Utilising the facet put forth by Section 29(2) of the Act, which elaborates with respect to curation of confusion in the minds of the public through the infringement of a registered trademark, the said suit was instituted.[2] On the other hand, the Defendant party operates two stores under the banner of “Apna Bajaj Store” and “Bajaj Excellent” in Abohar, Punjab and caters to retail appliance wants.
ARGUMENTS, ANALYSIS & JUDGMENT –
It was categorically contended by the Petitioning party that Gourav Bajaj’s use of the Bajaj name on its products was clearly in the domain of trademark infringement and led to passing off. In order to affirm to this contention, a significant reliance was placed on the judgment of Bajaj Electricals Ltd. v. Metals & Allied Products & Anr.[3], through which ‘Bajaj’ was deemed as a well-known trademark by the Hon’ble Bombay High Court in the year 1987. Accordingly, as per the Petitioner, Gourav Bajaj’s use of a similar trademark is likely to cause confusion amidst the consumers since the domain in which they cater is the same and thus holds a major threat to the reputation of the Bajaj brand. In addition to this, it was argued that the Defendant’s actions significantly contribute to unfair competition and thus violates the rights of the registered trademark holder. Utilising these contentions as a sound basis, the Petitioner sought an infringement against Gourav Bajaj to prevent the unfair utilisation of the Bajaj trademark.
On the other hand, the Defendant put forth the argument that he has been utilising the trademark Bajaj alongside his name and thus hasn’t infringed the Bajaj Electricals trademark. Further, it was argued that the products sold by the Defendant fall under a different category in the market segment and thus, there is no likelihood whatsoever of confusion amongst the customers. In addition to this, the Defendant, Gourav Bajaj, claimed that the mark is being utilised by him for several years and till now no action has been taken against him by Bajaj Electricals. The resonating reasoning of Bajaj being a well-known mark was disputed as well by the Defendants alongside claiming no basis for constitution of unfair competition.
While finalising the suit, Justice Colabawalla of the Hon’ble Bombay High Court took note of the fact that it has been prima facie showcased that the Bajaj trademark categorically belongs to the Petitioner and covers its artistic domains as well. It was noted that there ceases to be any doubt with respect to the fact that the impugned trademark and domain name used with respect to the goods of the defendant are nearly identical, and in any event, similar to the plaintiff’s well-known mark. It was noted that the Petitioner has been utilising the name Bajaj since 1961 and the same has been duly taken into cognizance by the courts as well as the registry. It was noted that thus, the Petitioner is likely to suffer harm if relief is not granted and in the event the defendant's acts of infringement persist, the plaintiff is also likely to sustain irreparable harm.
CONCLUSION –
Through the resonating facet of this judgment, one may take note of the fact that it may not always be problematic to use a common surname or family name as a trademark, but it is vital to consider the overall context of the use of the mark to determine whether it constitutes trademark infringement or not (such as whether the mark has acquired distinctiveness or is well-known mark).
The case serves as an example of how a trademark owner can file a lawsuit for infringement even if their trademark has not exactly been used in the manner in which it is registered, provided that the key components of the mark have been utilised. This case has strengthened fundamental legal concepts controlling trademark infringement and strengthened the protection of well-known brands from being diluted by unaffiliated third parties.
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[1] 2020 (82) PTC 40 (Bom) [2] § 29(2) Trademark Act, 1999 – A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of— (a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or (b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or (c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. [3] AIR 1988 Bom 167
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