Facts

Plaintiffs, M/s Osram GmbH and Osram Lighting Private Limited [“OLPL”] filed a suit against Mr. Tejmeet Singh Sethi and Mr. Hartej Singh Sethi (Defendants) claiming their rights in the registered Trademark “OSRAM”. 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 “OSRAM” which was identical to the Plaintiffs’ mark. Thus, to protect their registered Trademark from infringement, Plaintiffs sought for a permanent injunction against the Defendants along with other reliefs.

Issues

  • Whether the decree of permanent injunction may be granted?
  • Whether the Defendants were registered and honest users of the impugned trademark?

Analysis

The Plaintiffs contended that they owned trademark registrations for “OSRAM” across various classes in India as well as a number of foreign countries such as Austria, Belarus, Canada, China and many more. The mark “OSRAM” had been uniquely derived by the Plaintiffs from the name of two materials which are needed to produce filaments, namely, ‘OSmium (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.

Conclusion

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’ trademarks and any deceptively similar marks. The Court also ordered that the Defendants’ trademark applications for the OSRAM mark and other deceptively similar marks were to be cancelled/withdrawn.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.

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/ , last visited on 23rd June 2022.

 

 

 

 

 


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