Local company enjoined from using name of London-based retail giant
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In an action for trademark infringement and passing off, the District Court of Ernakulam (Kerala State) has granted a permanent injunction restraining Selfridges Private Limited from using 'Selfridges' as its trade name and trademark.
In 2008 London-based retail giant Selfridges Retail Limited filed suit for trademark infringement and passing off against Selfridges Private, an Ernakulam-based firm selling consumer electronic products. The infringement had come to the knowledge of Selfridges Retail through the publication of the mark SELFRIDGES, in the name of Selfridges Private, in Class 35 of the Nice Classification. Selfridges Retail subsequently opposed the registration of the mark and also filed the present suit after its efforts to settle the issue amicably failed.
Selfridges Retail alleged that, as the nature of the services offered by the parties was similar, the purchasing public was likely to assume that there was a connection between the two businesses. Selfridges Retail relied on:
- various international registrations for the SELFRIDGES mark, the oldest of which dated back to 1935; and
- extensive use and goodwill worldwide (including in India where Selfridges Retail had previously organized high-profile exhibitions and festivals).
In its defence, Selfridges Private argued that it had adopted the mark because its business was initially confined to "selling fridges". Relying on its registration with various government authorities since 1991 and its incorporation under the Indian Companies Act, Selfridges Private claimed prior use of the name in India. Further, it argued that the mark was not affixed to the goods, packaging or labels. Therefore, its adoption of 'Selfridges' as a trading name was not infringing.
The court heard witnesses for both parties and, after reviewing the evidence, held as follows:
- Both parties used the name or mark SELFRIDGES in the course of trade.
- Selfridges Retail used the mark in connection to electronic consumer goods, as well as other goods, while Selfridges Private used it only in relation to electronic consumer goods.
- Selfridges Retail conducted business in England, while Selfridges Private conducted business in different parts of India.
- Selfridges Retail owned a valid registration for the SELFRIDGES mark in India (Registration 669991), while Selfridges Private had no such registration.
- Selfridges Retail had filed an opposition to the registration by Selfridges Private of the SELFRIDGES mark for services in Class 35.
Based on these facts, the court concluded as follows:
- Selfridges Retail was an internationally well-known establishment which owned a valid trademark registration in India. It was not proper to compare the types of goods sold through the outlets of the parties.
- Selfridges Retail's reputation had spread to India and, therefore, consumers were likely to be misled into believing that there was a connection between the parties. In cases of passing off, the main consideration is whether there is a likelihood of confusion or deception - deliberate or otherwise.
- Selfridges Private's contention that it had chosen the SELFRIDGES mark because it sold fridges was without merit, as it sold other electronic items. The name Selfridges had no particular relevance to the business of Selfridges Private.
Observing that the quality of the goods sold in an outlet directly influences the confidence of consumers, the court held that Selfridges Retail had the exclusive right to use the name and mark SELFRIDGES. In light of this finding, Selfridges Retail was granted an injunction restraining Selfridges Private from using the mark.
Gauri Kumar, Ranjan Narula Associates, associate firm of Rouse Group, Delhi
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