No infringement if mark is not used in trademark sense

In Hawkins Cookers Limited v Murugan Enterprises (MANU/DE/0004/2008, January 4 2008), the Delhi High Court has held that there is no infringement under Section 29 of the Trademarks Act 1999 where the defendant does not use the mark at issue as a trademark or in a trademark sense.

Hawkins Cookers Limited is the proprietor of the mark HAWKINS for goods in Class 21 of the Nice Classification. The decision suggested that the registered mark was HAWKINS UNIVERSAL (with a disclaimer for 'universal'), but proceeded on the basis that the mark was HAWKINS. Hawkins manufactured pressure cookers and spare parts, including gaskets, under the mark HAWKINS. Murugan Enterprises manufactured gaskets under the mark MAYUR (and peacock design). Murugan used the legend "Suitable for Hawkins pressure cookers" on its gaskets. Hawkins objected to such use and initiated an action for trademark infringement and passing off.

The Delhi High Court held as follows:

• The use of the mark HAWKINS in the legend "Suitable for Hawkins pressure cookers" did not constitute use of the mark HAWKINS as a trademark.
  
  
• Since HAWKINS was not used by Murugan as a trademark, there was no infringement.
  
  
• Since Murugan prominently displayed its trademark MAYUR (and peacock design) on the packaging of the gaskets and the allegedly offending legend was used honestly to show the compatibility of Murugan's products with Hawkins's pressure cookers, Murugan was entitled to the defence conferred by Section 30(2)(d) of the act. This provision reads as follows:
  
  "A registered trademark is not infringed where... the use of a trademark by a person in relation to goods adapted to form part of, or to be accessory to, other goods or services in relation to which the trademark has been used without infringement of the right given by registration under this act or might for the time being be so used, if the use of the trademark is reasonably necessary in order to indicate that the goods or services are so adapted, and neither the purpose nor the effect of the use of the trademark is to indicate, otherwise than in accordance with the fact, a connection in the course of trade between any person and the goods or services, as the case may be."
  
• Murugan's legend - which singled out the HAWKINS mark and mentioned no other brands of pressure cookers for which the gaskets would be suitable - did not take unfair advantage of the reputation of Hawkins's mark since Murugan's gaskets were manufactured specifically for Hawkins's pressure cookers.
  
  
• The aim of Hawkins in filing the suit was to extend its monopoly in the mark with regard to spare parts.
  
  
• There was no passing off since:
  
  
  • Murugan did not use the mark HAWKINS in a trademark sense;
    
    
  • the legend aimed to show that the gaskets were compatible with Hawkins's pressure cookers and did not indicate any business connection with Hawkins; and
    
    
  • Murugan prominently displayed its trademark MAYUR (and peacock design) on its products and mentioned its name and address as the manufacturer thereof.

This is the first decision by an Indian court that expressly holds that a prerequisite for a finding of infringement is that the defendant uses the proprietor's mark as a trademark - that is, in a trademark sense. If the defendant does not use the mark in a trademark sense, there is no infringement.

Mustafa Safiyuddin, DSK Legal, Mumbai