This case revolves around a trademark dispute between a globally renowned toy and games manufacturer, Lego Juris (the Petitioner) seeking to cancel the registered marks containing LEGO of a confectionery producer, Gurumukh Singh (the Respondent). The Respondent has registered the marks LEGO CUTEHEART and LEGO COFFYBOND in class 30. This note discusses the contentions raised by the parties and the order passed by the High Court.

The Petitioner contends:

1. Founded in the year 1930, they are a globally recognized leader in the toy and games industry and first adopted the LEGO mark in 1934.
2. The name LEGO is derived from the Danish words, ‘leg’ and ‘godt’ meaning ‘play well’.
3. They operate in over 40 countries, including India, where it has been present since 1987 and the products are available in many premium toy stores as well as online platforms like Amazon, Flipkart etc,.
4. They have received numerous awards and enjoys goodwill and reputation globally, including India. LEGO has been declared as well-known mark in several countries of the world. In India the LEGO mark is registered since 1967 in class 28 and the earliest registration in the world dates to the year 1954.
5. Respondent has been using the LEGO mark for its confectionary products, LEGO CUTEHEART and LEGO COFFYBOND, which amounts to infringement of its trademark.
6. A suit was filed before the City Civil Court at Secunderabad, where the Court ruled that LEGO has a transborder reputation and is a well-known mark. However, the Respondent has preferred an appeal before the Telangana High Court which is pending.

Respondent countered the contentions raising the following:

1. They manufacture and market confectionery goods and adopted the LEGO trademark in December 2000.
2. They coined the term LEGO from ‘LE’ (meaning ‘take’ in Hindi) and ‘GO’ (meaning ‘to leave’). They had conducted a trademark search and finding no use of LEGO for confectionery products adopted the same.
3. The Petitioner enjoys a registration only in Class 28, whereas the impugned marks are registered in class 30 which are unconnected.
4. The Petitioner is engaged only in the trade relating to toys whereas the Respondent is engaged in the food industry and the trade channels and target customers differ.
5. Petitioner’s mark has not been declared as ‘well known’ and the rival marks compared as a whole are not similar negating any chances of confusion and thus the rectification petition ought to be dismissed.

Issues culled out by the Court:

1. Whether the Respondent’s marks are liable to be removed from the register.
2. Whether the Petitioner is entitled to claim ‘well-known’ mark status for LEGO in India.
3. Whether the use of Respondent’s marks is likely to cause confusion and deception among consumers.
4. Whether the adoption of the impugned marks by the Respondent is honest and bonafide.

Gist of Petitioner’s arguments:

1. Confusion is imminent as both the Petitioner and Respondent target the same audience—children. The Respondent has not disputed the Petitioner’s prior use of the LEGO mark.
2. During the pendency of this case the Petitioner’s mark has been declared as a well-known mark and thus entitled to broader and wider protection.
3. Respondent’s adoption of a near-identical mark, incorporating the Petitioner’s distinctive and well-known LEGO mark, entitles them to relief in the rectification petition.

Gist of Respondent’s arguments:

1. At the time of filing the Rectification petitions, the Petitioner’s LEGO mark had not been declared well-known, and therefore, the aforesaid claim lacks merit.
2. Their adoption of the LEGO mark has been properly explained and their sweets, sold widely across the country, do not cause confusion or deception as alleged.
3. The intention of the legislature in classifying the goods and services into different Classes was to give protection in those classes, and registration does not give the Petitioner a broad right over all goods and services.

Court’s findings

1. The Court found that the Respondent does not dispute the Petitioner’s prior use of the LEGO mark. The Court also noted that the Petitioner’s mark had been declared well-known in various jurisdictions worldwide, even though it was not declared as such in India at the time of filing the petitions. The Court clarified that well known status would have a prospective effect only. However, the Petitioner has shown that it deserved the “well known’ status at the time of filing of the application.
2. The Court held that the Petitioner is entitled to protection under Section 11(2) of the Trade Marks Act, which provides protection across all classes of goods and services for well-known marks.
3. The Court found that the Respondent’s adoption of the LEGO mark was not honest and bonafide, as they were aware of the possibility of LEGO being used in other classes and conducted a search only for traders dealing in confectionaries.
4. The Court concluded that the Respondent’s use of the LEGO mark is likely to cause confusion among consumers, especially children, who are the target audience for both parties’ products.
5. The court noted that a) the Respondent has failed to provide a convincing explanation for adopting a similar mark, which suggests a dishonest intent b) the Respondent does not dispute the Petitioner’s global reputation and goodwill c) their claim of honest and concurrent use of the LEGO mark lacks merit.
6. The Court observed that the Respondent cannot argue that their registration under Class 30 (for confectionaries) and not under Class 28 exempts them from infringement. It is well-established that class distinctions in trademark registration are for the convenience of the Registry and cannot serve as a defence against infringement or passing off.

Given the above the Court held that the Petitioner has established sufficient grounds for rectifying the trademark register by removing the Respondent’s marks, LEGO CUTEHEART and LEGO COFFYBOND.

Comment

The Court’s ruling reinforces that broader protection must be granted to ‘well-known marks’ and the difference in goods has to be approached from the point of view of target audience for the products.