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H.S. SAHNI, SOLE PRO... v. SAIC MOTOR CORPORATI...
Factual and Procedural Background
This is an application (I.A. 18693/2022) by the Counter-Claimants/Defendants under Order XXXIX Rules 1 & 2 seeking an interim order restraining the Plaintiff, Mr. H.S. Sahni (sole proprietor of M/s. M.K. Auto Sales Corporation), from using the marks “M.G.”, “M.G.I.” or “M.G. (device)” (the “M.G. marks”). The Defendants are M/s. Saic Motor Corporation Limited, M/s. Saic Motor International Co. Ltd. and M/s. M.G. Motor India Pvt. Ltd. Both parties claim rights in the M.G. marks. The Plaintiff asserts prior use since 1989 and registrations in India since 1998. The Defendants claim global rights tracing to 1924 (with MORRIS GARAGES founded in 1920 and later abbreviated as “M.G.”) and substantial global use for over 100 years; they launched cars in India commercially in 2018–2019. Oppositions and other applications are pending in the Trade Marks Registry.
Legal Issues Presented
- Whether an interim injunction should be granted restraining the Plaintiff from using the marks “M.G.”, “M.G.I.” or “M.G. (device)”.
- Which party has superior rights in the “M.G. marks” and whether the Defendants possess trans-border reputation in respect of those marks.
Arguments of the Parties
Plaintiff's Arguments
- Claims prior user of the M.G. marks since 1989 (sales tax registration from 1989).
- Claims registered word marks “M.G.” (application no. 809098) and “M.G.I” (application no. 809099) in India since 1998.
- Explains adoption of the mark as derived from the mother’s affectionate reference (“Mohinder G”).
Defendants' Arguments
- Claim global rights in the M.G. marks since 1924; MORRIS GARAGES founded in 1920 and abbreviated as “M.G.”
- Assert substantial global usage of “M.G.” for more than 100 years and commercial sale of M.G. cars in India since 2018–2019.
- Both parties have instituted proceedings in the Trade Marks Registry; oppositions/applications are pending.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| FAO (COMM) 88/2021 titled H.S. Sahni v. Mukul Singhal | Division Bench injuncted H.S. Sahni from using the marks “M.G” and “M.G.I” and indicated restraint till disposal of the rectification/cancellation application; excerpt: “In terms of Section 124 of the Trade Marks Act, 1999, the suit is liable to be stayed till the disposal of the said application.” | The Court relied on the Division Bench injunction and the doubt expressed therein about prior use by the Plaintiff to justify granting an interim restraint against the Plaintiff. |
| FAO (COMM) 89/2021 titled Mukul Singhal v. M.K. Auto Sales Corporation | Same common judgment by the Division Bench as cited above restraining use of the marks and staying suit pending rectification/cancellation. | The Court treated the Division Bench's injunction as a significant factor weighing in favour of interim restraint on the Plaintiff's use of the marks. |
Court's Reasoning and Analysis
The Court noted a serious doubt as to the user claimed by the Plaintiff (as reflected in the Division Bench order). It observed that the Defendants have sold cars under the mark “M.G.” in India on a large scale for the past 3–4 years and that the Plaintiff trades in automobile parts and accessories affecting vehicle and passenger safety. Given that the competing marks and logos are identical and fall in the same class, even remote chances of confusion must be avoided. The Court concluded that confusion is likely and, coupled with the earlier injunction by the Division Bench, this justified restraining the Plaintiff from using the M.G. marks pending further hearing.
Holding and Implications
Holding: The Plaintiff is restrained from using the mark “M.G.”, “M.G.I”, “M.G. (device)” or any other confusingly similar mark in word, logo or device form in respect of automotive parts or accessories until the next date of hearing.
Direct consequences: The Plaintiff is temporarily prohibited from using the specified marks in relation to automotive parts/accessories. The Court directed that the rejoinder to the application be filed within four weeks and listed both applications for hearing on 7 February, 2023.
No broader implications or new precedent were discussed; the decision effects a temporary injunction between the parties pending further hearing.
Prathiba M. Singh, J. (Oral):— This hearing has been done through hybrid mode.
I.A. 18693/2022 (Seeking stay on behalf of the Counter-Claimants)
2. This is an application on behalf of the Counter-Claimants/Defendants (hereinafter ‘Defendants’) under Order XXXIX Rule 1 and 2 seeking an interim order restraining the Plaintiff in the suit-Mr. H.S. Sahni, sole proprietor of M/s. M.K. Auto Sales Corporation from using the marks ‘M.G.’, ‘M.G.I.’, or ‘M.G. (device)’ (hereinafter ‘M.G. marks’).
3. The Defendants in the present suit are Defendant No. 1-M/s. Saic Motor Corporation Limited, Defendant No. 2-M/s. Saic Motor International Co. Ltd. and Defendant No. 3- M/s. M.G. Motor India Pvt. Ltd. Both the Plaintiff and the Defendants claim rights in ‘M.G. marks’. The Plaintiff claims to be the prior user of the said marks since 1989 and the Plaintiff also has registrations in India in respect of the said marks since 1998. The Defendants claim global rights in the ‘M.G. marks’ since 1924 when the business was established in the U.K.
4. The Plaintiff's sales tax registration dates back to 1989 and he claims to have been continuously using ‘M.G. marks’ as well as the corporate logo . The word marks ‘M.G.’ with application no. 809098 and ‘M.G.I’ with application no. 809099, are registered in favour of the Plaintiff since 1998. The explanation for having adopted the said mark by the Plaintiff as has been set out in the plaint is that the mother of the Plaintiff, Mrs. Mohinder Kaur Sahni, was affectionately referred to as ‘Mohinder G’ by her family.
5. Both the parties are vehemently contesting each other's claims in the Trade Mark Registry where oppositions and applications are pending. In the written statement, the case of the Defendants is that the mark was adopted in 1924. As of 2021, the Defendants are the second largest automobile company in China and the 12 largest automobile company in the world by production.
6. Today, ld. counsel for the parties have brought to the notice of this Court another litigation being FAO (COMM) 88/2021 titled H.S. Sahni v. Mukul Singhal and FAO (COMM) 89/2021 titled Mukul Singhal v. M.K. Auto Sales Corporation involving the present Plaintiff wherein the ld. Division Bench of this Court vide a common judgment has already injuncted the Plaintiff herein from using the mark ‘M.G.’ and ‘M.G.I.’ in the following terms:
“31. The aforesaid documents do not establish that H.S. Sahni was using the trademark “M.G”/“M.G.I” and not “Datsun” in respect of automotive control cables. However, even if it is accepted that the aforesaid invoice indicates the use of the trademark “M.G”/“M.G.I”, the said use is not prior to the year 2017 as the earliest such invoice is of the year 2017. XXXX
64. The Appellants have already preferred an application seeking cancellation of the registration of the marks in favour of H.S. Sahni. In the given facts, this Court considers it apposite to restrain H.S. Sahni from using the trademarks “M.G” and “M.G.I” or any other marks deceptively similar to the mark “M.G CABLE” till the disposal of the rectification application filed by the Appellants. In terms of Section 124 of the Trade Marks Act, 1999, the suit is liable to be stayed till the disposal of the said application.”
7. The question before the Court would be as to who has superior rights in the ‘M.G. marks’ and whether the Defendants have trans-border reputation in respect of the ‘M.G. marks’. The Defendants' ‘MORRIS GARAGES’ mark was founded in 1920 in the U.K. The said ‘MORRIS GARAGES’ name was, thereafter, abbreviated as ‘M.G.’. The documents on record show that there is substantial usage of the mark ‘M.G.’ globally by the Defendants for more than 100 years now. The Defendants also launched their cars in India in 2018-2019 on a commercial scale. The Plaintiff is in an identical business as that of the Defendants i.e., automobile parts and accessories. The competing marks and logos are set out below:
Plaintiff's device mark Defendant's device mark
8. A perusal of the order passed by the Ld. Division Bench shows that there is serious doubt as to the user claimed by the Plaintiff. Moreover, the Court cannot lose sight of the fact that cars under the mark ‘M.G.’ have been sold by the Defendants in India on a large scale for the past 3-4 years now. The Plaintiff is selling automobile accessories which also concern the safety of automobiles and passengers using those automobiles. Thus, even remote chances of confusion ought to be obviated between the products of the parties as the marks in question are identical in nature and fall in an identical class. Confusion is bound to occur.
9. Considering these facts, and the fact that the Plaintiff already stands injuncted by the ld. Division Bench in the appeal as extracted above, it is directed that the Plaintiff shall stand restrained from using the mark ‘M.G.’, ‘M.G.I’, ‘M.G. (device)’ or any other confusingly similar mark in word, logo or device form in respect of automotive parts or accessories till the next date of hearing.
I.A. 8714/2022
10. Let the rejoinder to the application be filed within 4 weeks.
CS (COMM) 373/2022
11. List both the applications for hearing on 7 February, 2023.
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