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Larsen & Toubro Limited v. Chagan Bhai Patel
Factual and Procedural Background
The plaintiff, registered proprietor of the trademark/trade name LARSEN & TOUBRO, filed a suit for permanent injunction against the defendant to restrain the use of the mark LARSON or any deceptively similar mark in relation to plywood, veneer wood, timber, and related building goods in class 19. The plaintiff alleged that the defendant's use of LARSON was an attempt to pass off its goods as those of the plaintiff, infringing upon the plaintiff's trademark rights and goodwill. Ancillary reliefs of damages and delivery were also claimed.
An ex parte order dated 31st August 2007 restrained the defendant from using the mark LARSON or any deceptively similar mark and appointed a Court Commissioner to seize infringing materials. The defendant failed to appear despite being served summons, leading to an ex parte proceeding and confirmation of the injunction order on 30th November 2007. The plaintiff led ex parte evidence, while the defendant remained absent throughout the suit.
Legal Issues Presented
- Whether the defendant's use of the mark LARSON in relation to building-related goods amounts to passing off and infringement of the plaintiff's registered trademark LARSEN & TOUBRO.
- Whether the plaintiff is entitled to permanent injunction and damages against the defendant for trademark infringement and passing off.
- The applicability of Section 134(2) of the Trade Marks Act to establish territorial jurisdiction of the court.
Arguments of the Parties
The opinion does not contain a detailed account of the parties' legal arguments.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Kirloskar Diesel Recon P Ltd v Kirloskar Proprietary Ltd, AIR 1996 Bombay 149 | Principles relating to trademark infringement and passing off. | Relied upon by plaintiff's counsel to support claim of deceptive similarity and passing off. |
| Mahendra and Mehendra Paper Mills Ltd v Mahindra and Mahindra Limited, 2002(2) SCC 147 | Trademark protection and passing off principles. | Referenced to buttress plaintiff’s entitlement to relief. |
| M/s K.G. Khosla Compressors Limited v Khosla Extraktions Limited, AIR 1986 Delhi 181 | Trademark infringement and passing off jurisprudence. | Cited to demonstrate established legal standards for injunctions in trademark cases. |
| Division Bench order dated 8th February, 2008 in FAO(OS) 601/2006 | Use of deceptively similar marks and interim injunctions. | Used as precedent where a similar mark was restrained on plaintiff’s plea. |
Court's Reasoning and Analysis
The court examined the plaintiff’s registered trademark and evidence that the defendant intended to use the mark LARSON in capital letters in relation to building-related goods, which are similar to those covered by the plaintiff’s mark LARSEN & TOUBRO. The plaintiff’s mark was established as well-known and associated with construction-related business. The defendant failed to appear or offer any justification for adopting the mark LARSON, which is neither a common Indian surname nor name. The court found that the defendant’s adoption of the mark was calculated to take advantage of the plaintiff’s reputation and goodwill, constituting passing off and trademark infringement.
The court invoked territorial jurisdiction under Section 134(2) of the Trade Marks Act based on the plaintiff’s business presence in Delhi. The Court Commissioner’s report confirmed the presence of infringing stickers bearing the mark LARSON on plywood and block boards, though no infringing goods themselves were found. The defendant’s use of the mark for five years prior to suit was noted. The court held that punitive damages were warranted due to the defendant’s failure to contest and lack of explanation, to discourage intellectual property violations. However, delivery of goods was not ordered as only stickers were found.
Holding and Implications
The suit is decreed in favour of the plaintiff. The defendant is permanently restrained from using the mark LARSON or any deceptively similar mark in relation to the contested goods. A decree for damages amounting to Rs 5 lakhs inclusive of costs is awarded to the plaintiff. The court also confirmed the ex parte injunction previously granted and declined to order delivery of goods due to absence of infringing products beyond stickers.
The decision directly benefits the plaintiff by protecting its trademark rights and goodwill, imposing punitive damages on the infringing defendant. No new legal precedent was established beyond the application of settled principles of trademark law and passing off.
1. The plaintiff being the registered proprietor of the trademark / trade name LARSEN & TOUBRO, on coming to know of the application of the defendant for registration of the mark LARSON in relation to plywood, veneer wood, venners, wood panelling, wood pulp board, timber, partitions not of metal, mouldable wood, door frames not of metals, door panels not of metals, doors not of metals, building timber, boards not of metal in class 19, instituted this suit for permanent injunction to restrain the defendant from using in relation to its business the mark/logo LARSON or any other similar mark or name deceptively similar to that of plaintiff and for restraining the defendant from passing off its goods and business as that of the plaintiff. Ancillary reliefs of damages and delivery were also claimed.
2. Vide ex parte order dated 31st August, 2007, the defendant was restrained from using in relation to any of its business/ goods/ services/products including those in class 19, the mark LARSON or any other deceptively similar mark. A Court Commissioner was also appointed to visit the premises of the defendant to seize and take the infringing material into custody.
3. The defendant, in spite of being served with the summons of the suit, failed to appear. Though initially the counsel for the plaintiff informed that the defendant had approached for settlement but subsequently it was informed that the defendant had failed to contact the plaintiff also and on 30th November, 2007 the defendant was ordered to be proceeded against ex parte and the order dated 31st August, 2007 aforesaid confirmed during the pendency of the suit.
4. The plaintiff has led ex parte evidence. The defendant remains ex parte. A perusal of the application of the defendant advertised before acceptance in the Trademark Journal has been proved as Exhibit PW1/6. The same shows that the defendant intends to write the name LARSON in capitals and has claimed use of the aforesaid name/mark since 1st November, 2002. The plaintiff has proved notarized copy of its certificate of registration which it was permitted to do as Exhibit PW1/3. The plaintiff also writes LARSEN in capitals. The plaintiff is engaged in a large number of businesses and services including construction related business. The mark of the plaintiff is a well known mark. The witness of the plaintiff has deposed that the plaintiff came to be known by the said mark/name in conjunction with TOUBRO since the same were the names of the partners of the firm which was the predecessor-in-interest of the plaintiff.
5. There is no difficulty in coming to the conclusion that use by the defendant of name/mark LARSON in relation to building related goods only is an attempt to take advantage of the reputation and goodwill of the plaintiff and to pass off its goods and business as that of the plaintiff, to its illegal enrichment and to the detriment of the plaintiff. The name LARSEN AND TOUBRO is so well known, so as to lead a person to believe that LARSON alone also may be related to the plaintiff. It is significant that LARSEN or LARSON are not surnames or names in India and not only has the defendant failed to appear to explain /justify the choice of such name but there appears to be no explanation whatsoever for the same, except as aforesaid.
6. The defendant is at Chattisgarh. However, the territorial jurisdiction of this court has been invoked on the basis of the plaintiff carrying on business at Delhi and Section 134(2) of the Trade Marks Act.
7. The counsel for the plaintiff has relied upon a number of judgments related to names viz Kirloskar Diesel Recon P Ltd v Kirloskar Proprietary Ltd AIR 1996 Bombay 149, Mahendra and Mehendra Paper Mills Ltd v Mahindra and Mahindra Limited 2002(2) SCC 147, M/s K.G. Khosla Compressors Limited v Khosla Extraktions Limited AIR 1986, Delhi 181 as well as of Division Bench of this court dated 8th February, 2008 in FAO(OS) 601/2006 wherein on the plea of the plaintiff herein only, the opposite party therein was restrained from using the trademark /name LNT/ELENTE or other deceptively similar mark. However, need is not felt to deal with in detail with the said judgments as the plaintiff is found to be entitled to the relief of permanent injunction.
8. The court commissioner appointed by this court has reported that he found the stickers bearing the name/mark LARSON which were deposed to be used on plywood and block board whenever the defendant received orders for ISI brand goods. No goods bearing the infringing trademark were found. From Exhibit PW1/6 aforesaid, it transpires that the defendant has been using the impugned trademark for five years prior to the institution of the suit. Though no evidence on assessment of damages has been led but the defendant having been found to have adopted the mark LARSON without any basis and having failed to give any explanation for the same and held as aforesaid to have adopted the same in an attempt to take advantage of the reputation and goodwill of the plaintiff, it would be encouraging such violators of intellectual property, if the defendant notwithstanding having not contested the suit is not burdened with punitive damages. Though nothing has been deposed / disclosed as to what happened to the application of the defendant for registration, the said act of the defendant also shows that had the plaintiff not been vigilant, the defendant may have even succeeded in registering a mark intended to deceive. The defendant is thus for his such act, is burdened with punitive damages in the sum of Rs 5 lacs inclusive of costs of this suit. In view of the court commissioner's report that only stickers infringing name/mark are affixed to the goods, no useful purpose would be served in ordering delivery.
9. The suit of the plaintiff is decreed in terms of the prayer paragraphs (a) and (b) of the plaint and a decree for damages in the sum of Rs 5 lacs inclusive of costs is also passed in favour of the plaintiff and against the defendant.
The decree sheet be drawn up.
RAJIV SAHAI ENDLAW (JUDGE) January 09, 2008
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