Hawkins vs Murugan. The Unsuitable Trademark? Big Corporation vs Ancillary Industry.

A Division Bench of Delhi High Court yesterday set aside a judgement dated January 4, 2008 of a Single Judge which allowed a manufacturer of gaskets for pressure cookers to write the following quote on packaging of one such type of gasket:

Suitable for Hawkins.

The judgement of the Division Bench, comprising Their Honours Nandrajog and Mridul, can be accessed here and that of His Honour Sanjay Kishan Kaul can be accessed here. The Bone of contention of the Hawkins’ civil suit for trademark infringement was the said quote. The counsels of both sides addressed extensive arguments in this unique matter of primary infringement of trademark for ancillary goods.

The Plaintiff, hereinafter Hawkins, came to know in January 2000 that the defendant was using the trademark HAWKINS/Hawkins in respect of parts of pressure cooker and thus served a Cease and Desist Notice (C&D) on the defendant raising grievances. Hawkins further claimed  that it  did not see the product subsequently in the market till October, 2004 when it again noticed the defendant’s gaskets being sold in the market and thus again issued a C&D which was disputed by the defendant vide its letter.

The chief defense in the action was that the Defendant  adopted its own  trademark MAYUR and only state on their product/gasket that it is suitable for Hawkins Pressure Cookers. Thus there was no chance of deception or infringement of Hawkins’ trademark  since the trademark of the defendant MAYUR has been used prominently on the packing of their product/gasket.

Hawkins stressed on potential confusion and deception for the consumers who might just read its trademark without noticing if it was being, which it was indeed, not manufactured by Hawkins.

The Defendant countered it by alleging unfair and monopolistic practices by Hawkins.

His Honour Kaul framed various issues in the suit.

Hawkins conceded that it did not dispute that the defendant can use the trade name to indicate that the spare part is fit for use in a particular machinery but not without being accompanied with a disclaimer that the spare part is not manufactured by the original manufacturer.

The argument, according to His Honour Kaul, boiled down to sole decisive factor: Whether the Defendant is using the trademark Hawkins as a trademark to sell the gaskets.

While dealing with this issue, His Honour Kaul summarised the matter in the following analogy in para 55:

(1) The first party has to be owner of the registered trademark;

(2) The second party uses the mark in the course of trade which is identical with or deceptively similar to trademark in relation to goods and services in respect of which the trademark is registered;

(3) The use is in such a manner as to render the use of the trademark by the second party likely to be taken as being used as a trademark.

In para 61 of the judgement, His Honour Kaul dealt with the style and manner of packaging of the Defendant and in para 62, His Honour held that no consumer can be deceived by such a packaging even if there is a sticker with the impugned quote since the Defendants have their own trademark and packaging and are not trying to take advantage of Hawkins’ goodwill. The matter ended right then and there once His Honour Kaul held that the Defendant was not using Hawkins as a trademark. There was, therefore, no confusion, deception and more importantly, infringement of Hawkins trademark.

There was another important factor too.

The defendant in the evidence stated that the gaskets manufactured by them were specifically made for them to be fitted in the Hawkins pressure cookers. This fact weighed with His Honour and he held in para 64 of the judgement that Hawkins was indulging in monopolistic practices through the instant litigation and denied relief.

Naturally, Hawkins appealed the matter. Their Honours sitting in the Division Bench, (DB), totally agreed with the law laid down by the His Honour Kaul on the aspect of ancillary products using the trademark of other companies.

However, what the DB specifically noted was the premise of judgement below was erroneous that the gaskets were specifically manufactured for Hawkins pressure cookers. In para 19 of the ruling, the DB categorically noted that the gaskets of the Defendant were not specific to Hawkins and would fit on pressure cookers of such size of various other manufacturers as well. Per the DB it would mean:

that it is not reasonably necessary to indicate, for the benefit of the consumer, that the adaptable goods relate to only one particular brand of pressure cookers.

Another aspect which the DB considered was the packaging of the Defendant giving more prominence to the trademark Hawkins to catch the eye of a consumer. The DB allowed the Defendant/Respondent to exhaust the impugned packaging within three months and use a phrase to indicate on the packaging material of the gasket that the gasket is suitable for all pressure cookers, as is being done by other manufacturers of gaskets.

The impugned judgement was set aside and the Defendant, therefore, is restrained from using the quote “suitable for Hawkins” in the said circumstances.

What emerges from the two ruling in such a unique situation is that, to sell his goods / services, any person within the parameter of reasonableness can use another’s trademark as long as the following test is met out:

(a) The trademark is essential to be used to sell the specified product;

(b) No confusion/deception is intended with such use;

(c) No undue–read extra–emphasis is given to the trademark on the packaging / promotion; and

(d) The goods / services have been specifically designed to become a cognate goods of the trademark.

What is also interesting in the approach is that the law laid down is in support of, and not against, promotion of the ancillary industry. As is desirable that the ancillary units progress along with the big corporation, it is essential that the latter does not feel cheated or wronged by the product / campaign of the former.


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