High Court dismisses suit finding delay and acquiescence

Two entities using an identical mark/name ‘Addison’ are at logger heads. The Plaintiff, Addison & Company Limited filed the suit against the Defendant, Addison Cable Pvt. Ltd, before the Madras High Court, alleging trademark infringement, passing off, etc. This note discusses the contentions raised by the parties and the judgement passed by the High Court.

The Plaintiff (Addison & Company) in the suit contended:

  1. They are one of the oldest business establishments in India and has diversified business activities. They are engaged in the business of manufacturing and dealing in GI casting unwrought and partly wrought common metals and their alloys, metal cutting tools including twist drills, reamers, milling cutters, etc.
  2. In the course of trade, they honestly adopted the mark ‘Addison’ and the mark has been in the market since the year 1970. The mark ‘Addison’ is registered in classes 6 and 7. Due to the high quality of the products and promotional activities the mark has acquired a reputation in the market.
  3. In the year 2014, they came to know about Defendant manufacturing and supplying cables and wires under the identical trade name Addison Cable Private Limited. The Defendant had also applied for the registration of the mark ‘Addison’ in classes 9 and 35 which have been duly opposed by the Plaintiff.
  4. As the Defendant continued to use the mark ‘Addison’ for the products a cease-and-desist letter was addressed in the year 2020. The Defendant refuted the contentions and failed to comply with the requisitions which led to the filing of the suit.

The Defendant contends:

  1. They have been using the mark ‘Addison’ since 1990 and the Plaintiff has acquiesced to the use of the trademark and there is delay in filing of the suit.
  2. Even in the trademark application filed in the year 2000 the Defendant has claimed use of the mark ‘Addison’ from the year 1990. The Plaintiff had filed opposition in the year 20005 and was aware of the use of the mark, however, the suit was filed after 15 years.
  3. They deal with electrical wires and cables classified in Class 9 and the trading name is Addison Cable Private Limited. There has been no confusion and deception as the products dealt with by the parties are different.
  4. The Plaintiff has not proved their contention regarding use of the mark since 1970. The documents on record show use only from 1991, which is subsequent to the Defendant’s use of the mark.

Court Ruling

Both sides relied on the documents to substantiate their case, and not led oral evidence. The Court after considering the pleadings, documents, and arguments held as follows:

  • In the instant case both the parties are using an identical mark Addison in relation to their business. Even though the Plaintiff claims use of the mark since the year 1970 the documents evidence the use of the mark only from the year 1991. On the other hand, Defendant has substantiated their use since the year 1990 with cogent documentary evidence. Thus, it is proved that the Defendant has been using the word mark Addison continuously from the year 1990, whereas the documents evidence use of the mark by the Plaintiff only from the year 1991.
  • Moreover, the products dealt with by the parties are distinct. The Defendant is exclusively dealing with electric wires and cable whereas the Plaintiff is dealing with GI castings, unwrought and partly wrought common metals and their alloys machine tools, accessories, parts and fittings, etc., The Defendant has been using the word Addison since 1990 and there is no evidence to show that the usage of the word mark has caused any dent in the Plaintiff’s sales.
  • The other important aspect in the instant case is the defense of delay and acquiescence. The Defendant has produced proof that they have been using the mark Addison since the year 1990. Because the Plaintiff had objected to the application for registration of the Trademark filed in the year 2005, however, not taken any steps to prevent the use of the word “Addison” by the Defendant till the filing of the suit in the year 2021 shows that the former has adopted a “Rip Van Winkle” approach.

In light of the above findings the Court dismissed the suit filed by the Plaintiff.

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