Unravelling the Intricate Trademark Dispute over ‘elektron’

Introduction

The Delhi High Court’s recent decision in Paragon Cable India & Anr. v. Essee Networks Private Ltd. & Ors.[1] examines a complicated trademark dispute concerning the term ‘ELEKTRON.’ Initially coexisting peacefully, the litigating parties registered their trademarks independently for distinct product classifications. However, a dispute arose when both parties began to refer to ‘ELEKTRON’ for their electric conductors and cables. The Plaintiffs contest the prior registration of the Defendants in this category, citing their own prior use. The Plaintiffs seek an injunction, alleging infringement and passing off. The court’s decision will untangle the complexities of this case and have repercussions for trademark disputes in similar industries, examining the balance between prior use, trademark registrations, and intellectual property protection in a market that is constantly evolving.

Issues Raised

• Who is prior user of the trademark “ELEKTRON” for wires and cables?
• Whether Defendant’s registration of the mark “ELEKTRON” is valid or not?
• Are Plaintiffs barred by delay and laches from seeking the injunction?

Analyzing the Judgment

The Plaintiff’s Contentions

• Plaintiff stated that it was founded in 1991 as a registered partnership, Paragon Cable India is a well-known manufacturer and supplier of wires and cables under the ‘ELEKTRON’ trademark.
• Plaintiff No. 2, Mr. Vikas Nagpal, devised and adopted the ‘ELEKTRON’ trademark in 1998, which Plaintiff No. 1 and other affiliated entities have consistently used. With a claim of use dating back to January 1, 1998, he obtained registration of the mark with an effective date of January 1, 1998.
• The Plaintiff contended that the Plaintiffs’ extensive promotion of the ‘ELEKTRON’ mark in India and abroad has resulted in a strong reputation, particularly for electric wires and cables, along with very high sales revenue.
• It was argued that the Defendants have replicated the Plaintiffs’ ‘ELEKTRON’ trademark, violating their statutory and common law rights. The need for an injunction is justified by the likelihood that the similarity between the marks will lead to consumer confusion surrounding the source of the products.
• It was also contended that the Defendants’ registrations for the marks and ‘ELEKTRON’ in multiple classes are allegedly fraudulent and invalid because they falsely claim utilisation since 1992 without adequate supporting evidence.
• To support their claims, the Plaintiffs cite pertinent case law, such as Raman Kwatra v. KEI Industries Limited[2], Vishnudas Kishendas v. Vazir Sultan Tobacco Co. Ltd.[3], Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Limited[4], etc.

The Defendant’s Contentions

• Defendants assert that they first used the ‘ELEKTRON’ trademark commercially in 1992 through ‘Sanjay Electricals’ and registered the mark in 1996 for capacitors in class 09. They contend that they were the first to use the mark, whereas the Plaintiffs have imitated it.
• The Defendants argue that the Plaintiffs’ registration in class 07 pertains to distinct goods, such as juicers, mixers, grinders, and washing machines, whereas the Defendants deal in class 09 goods, which include wires and cables. Consequently, they contend that the Plaintiffs cannot seek restraining orders against them.
• The Defendants argue that the Plaintiffs are ineligible for injunctive relief due to the delay in filing of the lawsuit. They note that their initial registration has been available to the public since 1996, and that the Plaintiffs were aware of it. In addition, the Defendants observe that the Plaintiffs abandoned their application for ‘ELECTRON’ in class 09 for electrical goods, possibly for this reason.

The court’s decision

• The court granted an interim injunction in favour of the Plaintiffs to stop the Defendants from utilising the ‘ELEKTRON’ trademark for electric wires and cables. Plaintiffs established a prima facie case of passing off by exhibiting prior use, extensive reputation, and goodwill affiliated with the ‘ELEKTRON’ mark, while Defendants’ use was likely to cause consumer confusion.
• The court identifies the term ‘ELEKTRON’ as the term having conspicuous similarity. Even though there are visual differences, the phonetic distinction cannot be ignored, as it could easily lead to confusion, particularly in verbal interactions. Therefore, the marks are considered deceptively similar due to their phonetic depiction.
• The court concludes that the Plaintiffs were the first to use the term “ELEKTRON” in reference to wires and cables. The Defendants’ claim of use since 1992 is unsubstantiated. Therefore, the Plaintiffs have legal grounds to seek an injunction against the Defendants’ use of the said in connection with wires and cables.
• The court rejected the Defendants’ delay and laches argument, stating that mere delay in commencing legal proceedings does not invalidate the Plaintiffs’ rights. The argument of the Defendants was undermined by the Plaintiffs’ continuous and extensive use of the trademark without displaying positive acts of consent or approval. Existing manufactured products bearing the contested mark were exempted from the injunction, but the Defendants were ordered to provide a detailed list of such products.

Conclusion

In conclusion, the court’s ruling, in this case, emphasises the significance of safeguarding intellectual property rights, particularly trademarks, in the current intellectual property legal environment. The court acknowledged the importance of prior use, reputation, and goodwill associated with the ‘ELEKTRON’ trademark, granting a temporary restraining order to prevent confusion and protect the Plaintiffs’ business interests. In determining trademark infringement and passing off, the analysis highlighted the criteria of similarity, prior use, and balance of convenience. This ruling establishes a precedent for protecting trademark rights, discouraging misrepresentation, and protecting the interests of businesses and the general public within the domain of intellectual property law.

[1] Paragon Cable India & Anr. v. Essee Networks Private Ltd. & Ors., CS(COMM) 112/2023.

[2] Raman Kwatra v. KEI Industries Limited, 2023 SCC OnLine Del 38.

[3] Vishnudas Kishendas v. Vazir Sultan Tobacco Co. Ltd., (1997) 4 SCC 201.

[4] Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Limited, (2018) 9 SCC 183.