Dishonest Adoption of Well-Known Marks Not Allowed – Delhi HC
The Delhi High Court (“Delhi HC”) on July 17, 2019 decided upon a case of trademark infringement in Suzuki Motor v. Suzuki (India) Ltd.. Suzuki Motor had filed a suit seeking permanent injunction restraining Suzuki (India) Ltd. for infringing Suzuki Motor’s trademark.
Suzuki Motor, the world renowned car manufacturer, started its business in Japan in the year 1909, the current name “Suzuki Motor Corporation” was adopted in 1990. Suzuki Motor is the registered proprietor of the trade mark “Suzuki” in 169 countries and has been registered in India since 1972. Suzuki Motor stated that Suzuki (India) Ltd. had dishonestly adopted its trademark and thus, must be injuncted from doing so.
Whereas, Suzuki (India) Limited was in the business of investment and finance, it submitted that it had been using its trademark since 1982 and has earned substantial goodwill by way of honest concurrent and uninterrupted and concurrent use of the trademark/name “Suzuki “as a part of its trade name. Suzuki (India) Limited also stated that there was a large delay of more than twenty years in filing the suit by Suzuki Motor.
The question before Delhi HC was whether Suzuki (India) Ltd. had infringed the trademark of Suzuki Motor.
Delhi HC ruled that Suzuki(India) Ltd. dishonestly adopted the name “Suzuki” with an intention to encash the goodwill and reputation of the Suzuki Motor. The trademark “Suzuki” has been a well-known mark. Mere concurrent usage is not sufficient in law. It must be honest. Since the adoption of the trade mark was itself dishonest, delay in bringing action is not sufficient to defeat grant of injunction.
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This case has emphasized on the significance of “honesty” in the commonly sought defence of “honest concurrent use” in any infringement suit. A person cannot benefit from dishonestly using the trademark of another, as rightly held by the Delhi HC. This judgment also laid down that delay in filing is immaterial if there is dishonesty on the part of the party against which a suit is filed.
Disclaimer: This post has been prepared for informational purposes only. The information/or observations contained in this post does not constitute legal advice and should not be acted upon in any specific situation without seeking proper legal advice from a practicing attorney.