Royal Enfield Is Well Known Trademark In Motor Industry: Madras High Court Restrains Service Centre From Using Mark For Goods & Services

The Madras High Court recently restrained a service centre from using the trademark “Royal Enfield” for selling or advertising its products or from replicating the look and feel of the exterior and interior of the authorized outlets of Royal Enfield. Justice Abdul Quddhose observed that “Royal Enfield” was a well-known trademark as per the provisions of Section 2(1)(zg) read with Section 11 of the Trade Marks Act 1999. The court also directed the Registrar of Trademarks to notify “Royal Enfield” in the register of well-known marks. “It is declared that the mark “ROYAL ENFIELD” is a wellknown trademark insofar motorcycle industry is concerned as per the provisions of Section 2(1)(zg) read with Section 11 of the Trade Marks Act, 1999. Consequently, Registrar of Trademarks is directed to notify the mark “ROYAL ENFIELD” on the register of well-known marks,” the court said. The court was hearing a plea by Royal Enfield seeking a permanent injunction restraining the defendant, Nitin Service Point from using its identical “Royal Enfield” mark. It was alleged that the service centre was deceiving and confusing the minds of the general public by using the identical “Royal Enfield” mark. The court noted that apart from the unique trademarks, Enfield also had a standard pattern for interiors and exteriors for every authorized outlet to give the same look and feel or identity for all its outlets and to enable customers to easily identify their outlets. The court also noted that while appointing dealers, Enfield used to ensure that all dealers maintained the same standards, interiors and exteriors following its Brand Retail Identity. Thus, the court was satisfied that Enfield had proprietary rights over the trademark “Royal Enfield” and its variants. The court also noted that the trademark “Royal Enfield” had satisfied all the tests required for recognising it as a well-known trademark. “The name “ROYAL ENFIELD” is synonymous to the plaintiff and the plaintiff is therefore entitled to the highest level of protection as the public at large associate the name “ROYAL ENFIELD” only with the plaintiff. Therefore, the plaintiff's trademark falls within the definition of well-known mark within the meaning of Section 2(1)(zg) of the Act and deserves protection, that is conferred to well-known marks under the Trade Marks Act,” the court noted. The court was satisfied that the defendant had not only blatantly copied the essential features of Enfield's authorised outlets but also unauthorisedly used their registered trademark to market its service centre. The court also noted that by using similar writing styles and similar glass panelling, the service centre was trying to create confusion and deception in the minds of the general public which amounted to infringement of Enfield's registered trademark. Finding that the service centre had not only infringed the trademark but also committed passing off by giving an impression that they were an outlet run by Enfield which in reality was not true. Thus, the court was inclined to grant a permanent injunction in favour of Enfield and restrained the service centre from using Enfield's registered trademark. Counsel for the Plaintiff: Mr.Vijay Narayanan, Sr. Counsel for Mr.Arun C.Mohan Citation: 2023 LiveLaw (Mad) 401 Case Title: Eicher Motors Ltd v Nitin Service Point and Automobiles Case No: C.S.(Comm.Div.) No.77 of 2023Click here to read/download the judgment

Royal Enfield Is Well Known Trademark In Motor Industry: Madras High Court Restrains Service Centre From Using Mark For Goods & Services

Upasana Sajeev

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