This note discusses the final judgement post-trial passed by the Madras High Court in a suit filed by the well-known tyre manufacturer MRF. The Plaintiff, MRF Limited filed the suit against the Defendant, Powermax Rubber Factory and Ors, (Powermax) alleging infringement of trademark, copyright, passing off, damages, etc.

MRF relying on its rights in the PAHALWAN trademark and Muscleman device seeks to permanently restrain Powermax from using the device in relation to their business.

MRF in the suit contended:

1. They have used the trademark PAHALWAN and the “Muscleman Device” logo for many years, since 1961. Due to long and extensive use, they have built goodwill and reputation in the tyre market and the trade and public associate the marks exclusively with them.
2. They are also the registered proprietor of the marks MRF CHEETAH, MRF SAHARA and SAFARI for the past several years which is even prior to the incorporation of Powermax in the year 2003.
3. Prior to filing the suit, they came to knows that Powermax was using the marks CHEETAH, SAHARA and SAFARI in relation to identical goods, i.e., tyres.
4. Powermax on receipt of the cease-and-desist letter stopped using the marks CHEETAH, SAHARA and SAFARI.
5. Adoption of a deceptively similar logo/device of body builder in relation to identical products is dishonest and there is an unexplained disproportionate jump in the turnover of Powermax after they started using the body builder device.
6. They have invested a huge amount of money in advertising the products under the registered trademark and device and violation of its rights will result in substantial financial losses to them.
7. The logo containing a torso of a muscular man holding his hands up is an essential feature of both the devices. Considering prior adoption and long use of the muscleman device it is evident that Powermax has copied the deceptively similar device.

Powermax defended the suit raising the following contentions:

1. In the case of tyre products, it is essential to show the strength of the tyre and manufacturers usually convey this through logos and devices. They adopted the body builder device to show the strength of the tyre and the rival marks are not similar.
2. No one can claim copyright in an idea and copyright violation is confined to the form, manner and expression of idea by the author of the copyrighted work.
3. Similarities may arise since the central idea is the same, but these similarities alone do not constitute piracy.
4. They have not reproduced the artistic work of MRF and there is no question of infringement and passing off.

On completion of pleadings, issues were framed. Both sides examined a witness each to substantiate their case.

After considering the pleadings, depositions, arguments and case laws the Court held:

1. In the instant case both the parties are tyre manufacturers. Admittedly MRF has been in the business since 1961 whereas Powermax has commenced their business in the year 2003.
2. Powermax was earlier using the registered trademarks of MRF, namely, CHEETAH, SAHARA, and SAFARI which they stopped on receiving cease and desist letter prior to the filing of the suit.
3. Due to long use and registration, the Muscleman Device which features a muscular man holding a large tire has been exclusively associated with MRF. They have acquired goodwill and reputation in the ‘PAHALWAN’ mark and Muscleman device which is further evidenced by the sales turn over. Thus, the customers are familiar with MRF’s logo as compared to Powermax who is relatively a new entrant to the tyre manufacturing business.
4. MRF’s reputation, goodwill, and significant sales turnover both in India and abroad would likely lead to deception if any other tyre manufacturer, starting business later is permitted to use the same or a similar Muscleman Device.
5. Documents on record evidence that there has been a sudden increase in the sales turnover of Powermax starting from 2018-19. No documentary or oral evidence is forthcoming to explain this steep rise. MRF contends that the increase in the sales turnover is due to their use of a deceptively similar logo which is substantiated by the absence of any contrary evidence from Powermax.
6. Muscleman Device is a novel logo which is well recognized in the market and is associated only with MRF who has acquired reputation through the usage of the said logo for the manufacture and sale of their tyres. The contention that there are other manufacturers using nearly identical device has no merits as no evidence is forthcoming to prove the same. Being a prior user of the Muscleman Device and having obtained registration under the Trademarks Act, MRF is entitled for protection as prayed for in the suit.
7. In the instant case MRF contends that Powermax has copied the main idea of their Muscleman device with small differences. The contention that the bodybuilder device has appropriated the main elements from the Muscleman device do have merits as there is an overall similarity between the rival devices which is likely to cause confusion among the consumers with regard to origin of goods. MRF has successfully proved passing off and copyright infringement of the registered Muscleman Device by Powermax.

Considering the above, the Court decreed the suit permanently restraining Powermax from using the Muscleman logo and any trademarks identical or deceptively similar to “MRF CHEETAH, MRF SAHARA, SAFARI, and PAHALWAN of MRF. The Court also granted damages of Rs. 5 lacs (approx. US$ 6000) in favour of MRF.

Comment

The High Court’s order clearly lays down that when operating in same industry the duty of care is higher on the company that enters the market at a later point of time. Further the two marks are not to be placed side by side to find out any differences in the design. It is enough if the impugned mark bears an overall similarity to the registered mark which could possibly mislead a person dealing with the junior mark.