Use of another’s mark permitted only if it is "reasonably necessary"


In Hawkins Cookers Ltd v Murugan Enterprises (RFA (OS) 09/2008, April 13 2012), the Delhi High Court has ruled that the use of words that are identical or similar to prior registered trademarks on a product package amounts to trademark infringement, even if the words are not used as a brand name.

This case is an appeal from an order of a single judge of Delhi High Court. The appellant is the registered proprietor of the trademark HAWKINS for pressure cookers and spare parts for pressure cookers, including gaskets. The defendant manufactures and sells gaskets under the trademark MAYUR. The phrase “Suitable for Hawkins Pressure Cookers” appeared on the packaging of the defendant’s product. The words 'suitable for' and 'pressure cookers' were printed in black, while the word 'Hawkins' was printed in red.

The appellant’s arguments were as follows:

  • By using the phrase “Suitable for Hawkins Pressure Cookers”, the respondent infringed the registered trademark HAWKINS.
  • The gaskets manufactured by the respondent can fit any pressure cooker produced by any manufacturer. The gaskets are not manufactured for any particular brand of pressure cooker.
  • Other gasket manufacturers indicate on their packaging that the product is suitable for all pressure cookers.

The court first stated - in the first paragraph of the decision - that HAWKINS is a well-known mark.

The court then discussed Section 30(d) of the Trademarks Act 1999. Section 30(d) read as follows:

"A registered trademark is not infringed where... the use of the trademark by a person in relation to goods adapted to form part of, or to be accessory to, other goods in relation to which the trademark has been used... if the use of the trademark is reasonably necessary in order to indicate that the goods are so adapted, and neither the purpose nor effect of the use of the trademark is to indicate... a connection in the course of trade between any person and the goods."

At the heart of the dispute was the meaning of the expression “reasonably necessary”. According to the court, the word 'necessary' means “inherent in the situation”, and the word 'reasonable' means “just”. Applying this meaning to the language of Section 30(d), the court held that the manufacturers of parts or accessories could refer to the trademarks of the goods at issue only if it was just to do so. This would necessarily mean that the parts or accessories are specifically manufactured to be used as part of the goods. Hence, this meaning would not apply where the parts or accessories are capable of being used for the goods of various manufacturers. Therefore, in circumstances such as the present case, mentioning that the parts or accessories can be used for the goods of only one manufacturer would be a clear violation of the registered trademark, and the respondent would not be able to rely on Section 30(d).

The court concluded that the evidence clearly showed that the respondent's gaskets would fit the lid of pressure cookers produced by different manufacturers. This was contrary to the findings of the single judge, who observed that the respondent had emphasised that its gaskets were specifically made to fit the Hawkins pressure cookers. In coming to this conclusion, the court relied on the following paragraphs of the parties' affidavits:

The dimension of all the lids... are the same. Therefore, the gaskets... can be interchangeably used generally for all brands of pressure cookers in the market.”

The defendant manufactures gaskets which are used for different types of pressure cookers, including the pressure cooker manufactured by the plaintiff.

According to the court, the conclusion reached by the single judge was contrary to the record.

The court also highlighted that the respondent, when using the phrase “Suitable for Hawkins Pressure Cooker”, had given undue prominence to the word 'Hawkins' by using in a distinct colour, while the remaining words were printed in black.

The court thus set aside the order of the single judge and ruled in favour of the appellant. The respondent was given three months to remove the offending material.

Aditi Jha and Gowree Gokhale, Nishith Desai Associates, Mumbai

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