Delay in filing action cuts at the root of the case
The Delhi High Court while considering an injunction application highlighted the importance of initiating timely action when safeguarding one’s rights. The Plaintiff, MEX Switchgears Pvt. Ltd (MEX) filed the suit against the Defendants, Omex Cables Industries and Ors alleging trademark infringement, passing off, damages etc. MEX filed the suit to safeguard its rights in the registered trademark MEX.
MEX in support of its case contended:
- The trademark MEX is registered in classes 7, 9 and 11 and is being used in relation to electric switchgears, switches, ignition switches, electric capacitators, electric meters, etc, and other electrical goods.
- The mark MEX has been used since the year 1960 continuously, extensively and exclusively and also forms an integral part of their corporate name.
- MEX produces high quality products and enjoys enviable reputation and the public associate the trademark MEX with them and none else.
- MEX has always vigilantly protected its rights and initiated appropriate action against parties using similar or deceptively marks in relation to their business.
- Omex Cables Industries has adopted the trade name with the word “OMEX” which is identical to MEX.
- MEX has filed opposition against the trademark OMEX GOLD and the proceedings are pending.
- Use of the expression OMEX as a trademark or trade name will cause confusion among the trade and public who will wrongly assume a connection with MEX.
- The word OMEX is visually, phonetically as well as structurally similar to the well-known trademark MEX and addition of the word GOLD as a suffix makes no difference. Thus, MEX prays for an injunction against OMEX.
OMEX has filed counter contending:
- OMEXGOLD has no resemblance either visually, phonetically or structurally with the trade mark MEX.
- They are using the trade mark OMEXGOLD since the year 1995. MEX is also well aware of this fact but has concealed this from the court. Thus, MEX has not approached the court with clean hands and the applications needs to be dismissed on this ground alone.
- MEX is a common word and no one can claim any exclusivity over the same.
- MEX had opposed the OMEXGOLD mark in the year 2006 and not initiated any action thereafter and thus accepted its use.
- Products bearing trade mark OMEXGOLD has acquired goodwill and reputation amongst customers on account of its quality and they have also filed documents evidencing its yearly turnover.
- There is delay and laches in filing the suit.
Both the sides filed documents to substantiate their case. MEX argued that the rival marks are deceptively similar to cause confusion and deception in the market and there is no delay in filing the action. They have opposed the OMEXGOLD application and as and when they became aware of its use they have initiated action. They also relied on several case laws to support their case.
OMEXGOLD on the other hand maintained that the marks are not similar. Moreover, MEX was aware of the OMEXGOLD mark as early as the year 2006 which is evident from the documents on record and there is inordinate delay in filing the suit.
The Court after considering the pleadings, documents and case laws held as follows:
Apparently, there is no visual similarity between two trademarks MEX and OMEXGOLD. The style of advertisement of the OMEXGOLD mark is different from that of MEX. Further, the trade name OMEX Cable Industries is also entirely different from the trade name of MEX, i.e., MEX Switchgears Pvt. Ltd.
With regard to delay in filing the suit the court observed that MEX had opposed the OMEXGOLD mark in the year 2006. However, MEX waited till the year 2015 to file the court action. The argument that MEX did not find OMEXGOLD branded products in the market is far-fetched. OMEXGOLD has filed documents evidencing sale of their products from the year 2003-2004 which further tilts the balance in their favour.
In view of the inordinate delay in filing the action as well as concealing the factum of their knowledge of the use of OMEXGOLD mark the court dismissed the injunction application filed by MEX.
This order once again stresses the cardinal principle to be diligent of one’s rights and always approach the court with clean hands.