Plaintiffs, M\/s Osram GmbH and Osram Lighting Private Limited [\u201cOLPL\u201d] filed a suit against Mr. Tejmeet Singh Sethi and Mr. Hartej Singh Sethi (Defendants) claiming their rights in the registered Trademark \u201cOSRAM\u201d. This mark was adopted by OLPL internationally in 1906 and later registered in India in 1945 by General Electric Company Limited. Plaintiffs were engaged in manufacturing a range of products comprising Lumilux Plus Fluorescent Lamps, CFL lamps and other related products. Plaintiffs found that Defendants, who were engaged in the business of manufacturing and selling coolants and filters for automobiles, had applied for the registration of the trademark \u201cOSRAM\u201d which was identical to the Plaintiffs\u2019 mark. Thus, to protect their registered Trademark from infringement, Plaintiffs sought for a permanent injunction against the Defendants along with other reliefs.<\/p>\n
The Plaintiffs contended that they owned trademark registrations for \u201cOSRAM\u201d across various classes in India as well as a number of foreign countries such as Austria, Belarus, Canada, China and many more. The mark \u201cOSRAM\u201d had been uniquely derived by the Plaintiffs from the name of two materials which are needed to produce filaments, namely, \u2018OSmium (name of a metal) and WolfRAM (the German word for tungsten). The use of a similar trademark as that of the Plaintiffs would lead to confusion among consumers at large and thus would amount to trademark infringement. The Plaintiffs also contended that the Defendants were habitual infringers of various well-known marks and had filed more than 400 trademark registrations before Trademark Registry. The Defendants in their defence contended that they were advised by some lawyers to file for the said trademarks in order to continue their business which initially suffered a loss. That they were now willing to withdraw all the trademarks that were identical to third parties.<\/p>\n
The Court relied on the evidence produced by the Plaintiffs in this case and issued a permanent injunction against the Defendants retraining them from using the Plaintiffs\u2019 trademarks and any deceptively similar marks. The Court also ordered that the Defendants\u2019 trademark applications for the OSRAM mark and other deceptively similar marks were to be cancelled\/withdrawn. The defendants were ordered to pay a sum of Rs.10 lakhs towards litigation costs of the Plaintiffs within two weeks. The Court permitted the Plaintiffs to seek revival of the present suit and also pursue their claim for damages of Rs.2 crores as also complete costs of litigation and exemplary cost if the amount of Rs. 10 lakhs was not paid by the Defendants in the stipulated time.<\/p>\n
Citation: Osram Gmbh & Anr. vs Tejmeet Singh Sethi & Anr., decided by Delhi High Court on 3rd June 2022, available at https:\/\/indiankanoon.org\/doc\/165916514\/<\/a> , last visited on 23rd June 2022.<\/em><\/p>\n <\/p>\n <\/p>\n <\/p>\n \u00a0<\/span><\/p>\n <\/p>\n This post is brought to you by BananaIP’s Consulting & Strategy Department<\/p>\n BananaIP\u2019s Consulting & Strategy Department has the experience of helping companies use IP for business and competitive advantage. Companies regularly seek their assistance, advise and opinions on identifying\/mining inventions and creations, conducting IP audits, protecting IP assets appropriately, launching risk free products, managing litigation for business benefit, resolving disputes out of Court, making money out of IP, enforcing IP, and licensing transactions. If you have any questions, or need any clarifications, please write to contact@bananaip.com<\/a>.<\/p>\n
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