No MEX appeal – Delhi High Court dismisses injunction against OMEX

  • MEX Switchgears opposed mark OMEXGOLD, alleging trademark infringement and passing off, and seeking damages
  • Due to MEX’s delay in filing the action and concealing its knowledge of the use of OMEXGOLD, the court dismissed the injunction
  • Decision highlights the importance of initiating timely action in order to safeguard rights in a registered trademark

On considering an injunction application the Delhi High Court has highlighted the importance of initiating timely action in order to safeguard rights in a registered trademark. The plaintiff, MEX Switchgears Pvt Ltd, filed the suit against the defendants, Omex Cables Industries, alleging trademark infringement, passing off and damages. MEX filed a suit to safeguard its rights in the registered trademark MEX.

MEX contended the following:

  • The trademark MEX was registered in Classes 7, 9 and 11 and was used in relation to electric switchgears, switches, ignition switches, electric capacitators, electric meters and other electrical goods.
  • The MEX mark has been in continuous use since 1960. It has been used extensively and exclusively, and forms an integral part of the MEX corporate name.
  • MEX produces high quality products and enjoys an enviable reputation and the public associate the mark with MEX.
  • MEX has always vigilantly protected its rights and initiated appropriate action against parties using similar or deceptive marks in relation to its business.
  • Omex Cables adopted the trade name with the word ‘Omex’, which is identical to MEX.
  • MEX has filed an opposition against the trademark OMEXGOLD and the proceedings are pending.
  • Use of the word ‘Omex’ as a trademark or trade name will cause confusion among the trade and public who will wrongly assume a connection with MEX.
  • The word ‘Omex’ is visually, phonetically and structurally similar to the well-known MEX mark and adding the word ‘Gold’ as a suffix makes no difference. Therefore, MEX prays for an injunction against OMEX.

OMEX countered with the following:

  • OMEXGOLD has no resemblance either visually, phonetically or structurally to the MEX mark.
  • OMEX has been using the OMEXGOLD mark since 1995. MEX was aware of this but chose not to reveal that fact to the court. Therefore, MEX has not approached the court with clean hands and the action should be dismissed on this ground alone.
  • ‘Mex’ is a common word over which no one should be able to claim exclusive rights.
  • MEX had opposed the OMEXGOLD mark in 2006, but had not initiated any further action and therefore had accepted its use.
  • Products bearing the OMEXGOLD mark had acquired goodwill and reputation among customers.
  • Documents had been filed showing OMEX’s annual turnover.
  • There was an inordinate delay in MEX filing an action.

Both sides submitted documents to substantiate their case. MEX argued that the rival marks were deceptively similar and would cause confusion and deception in the market, and that there was no delay in filing the action. MEX opposed the OMEXGOLD application as soon as it became aware of its use and relied on case law in support of its action.

OMEXGOLD maintained that the marks were not similar. Moreover, MEX was aware of the OMEXGOLD mark as early 2006 which is evident from the documents on record, which proved that there was an inordinate delay in filing the suit.

The court considered the pleadings, documents and case law, holding that:

  • there was no visual similarity between the two marks;
  • the style of advertisement of the OMEXGOLD mark was different to that of the MEX mark; and
  • the trade name OMEX Cable Industries was entirely different to the trade name MEX Switchgears Pvt Ltd.

With regard to delay in filing the suit, the court observed that MEX had opposed the OMEXGOLD mark in 2006. However, it did not file the court action until 2015. The argument that MEX did not find OMEXGOLD branded products on the market was highly unlikely. OMEXGOLD filed documents evidencing sale of their products in 2003–2004 which further tilted the balance in its favour.

In view of MEX’s inordinate delay in filing the action as well as concealing the factum of its knowledge of the use of the OMEXGOLD mark, the court dismissed the injunction application.

This decision stresses the importance of diligence in safeguarding rights and to always approach the court with clean hands.

Mohandas Konnanath, RNA IP Attorneys, Gurgaon

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