Delhi High Court: An application was filed by FMI Limited (plaintiff) under the provisions of Order XXXIX Rules 1 and 2 of Civil Procedure Code (‘CPC’) and other interlocutory applications filed on behalf of the defendant under Order XXXIX Rule 4 of CPC for vacation of the ex-parte ad interim order dated 28-08-2024 and under Section 151 of CPC seeking leave to sell the existing stocks of the products bearing the mark ‘INDEED’ that was lying with the defendant. Amit Bansal, J., held that a prima facie case of passing off is made out on behalf of the plaintiff and the competing marks are phonetically, visually and structurally similar and are used by the parties in relation to identical goods having an identical and overlapping trade channels, which is likely to cause confusion and deception among the consumers who are ordinary persons of average intelligence and imperfect recollection.
The Court further upheld the ex-parte ad interim order passed on 28-08-2024 and made it absolute and the defendant, its proprietors, partners, directors, officers, servants, agents, distributors, dealers, retailers, representatives and anyone acting for and/ or on its behalf is/are restrained from using, selling soliciting, exporting, displaying, advertising or by any other mode or manner dealing in under the impugned trade mark ‘INDEED’ and/ or any other mark which may be phonetically/ deceptively/ structurally similar and/ or identical to the plaintiff’s mark ‘INDI’ and its variants in relation to the impugned goods being measuring tapes and/or any other allied/ related/ cognate goods till the final adjudication of the suit.
The case involves a dispute over trademark infringement and passing off between the plaintiff and the defendant. The plaintiff has been using the trademark “INDI” in Class 9, primarily for measuring tapes, and has established goodwill and reputation in the market. The defendant subsequently adopted the trademark “INDEED” for similar goods. Both marks are registered, but the plaintiff alleged that the defendant’s mark is deceptively similar to its own, leading to potential consumer confusion. The plaintiff also highlighted that the defendant adopted a similar “blue and white” color scheme, which is distinctive to the plaintiff’s products.
The defendant applied for the registration of its mark “INDEED” on a “proposed to be used” basis in November 2023 and launched its products in July 2024. The plaintiff, being a senior user, has recorded substantial sales figures for several years, demonstrating established goodwill. In contrast, the defendant’s sales figures were minimal, given its recent market entry.
The plaintiff initiated the suit for both trademark infringement and passing off under Section 27(2) of the Trade Marks Act, 1999. Summons were issued on28-08-2024 and an ex-parte ad interim injunction was granted in favour of the plaintiff, restraining the defendant from using the impugned mark ‘INDEED’ or any other word/ label which may be phonetically/ deceptively/ structurally similar to the plaintiff’s registered trade mark ‘INDI’, its variants and its trade dress in relation to the impugned goods, i.e., measuring tapes. An application was filed by the defendant under Order XXXIX Rule 4 of the CPC seeking vacation of ex-parte ad interim injunction, notice of which was issued on 30-09-2024. Subsequently, another application was moved by the defendant seeking permission of the Court to sell the stocks of the products bearing the mark ‘INDEED’ that was lying with the defendant, notice of which was issued on 21-10-2024.
Counsel for plaintiff argued that the mark “INDEED” is phonetically and visually similar to “INDI,” and the addition of the letter “D” does not significantly differentiate the two marks. It provided evidence of significant sales figures for the years 2022-23, 2023-24, and 2024-25, supported by a Chartered Accountant’s certificate, establishing goodwill and reputation. The plaintiff emphasized that the defendant was not compelled to use the mark “INDEED,” given its prior use of other marks like CUBIT, ALCOR, AUTO LOCK, and DIGITAPE for measuring tapes. The plaintiff highlighted that the defendant adopted a similar “blue and white” color scheme, further evidencing its lack of bona fides.
Counsel for the defendant contended that its adoption of the mark “INDEED” was bona fide and aimed at emphasizing its commitment to superior quality products. It challenged the plaintiff’s claims by alleging suppression and misrepresentation. The defendant argued that the registration of both marks in Class 9 negated the plaintiff’s claims of exclusivity.
The Court emphasized that passing off rights are superior to registration rights. The remedy for passing off is broader in scope than trademark infringement and focuses on protecting goodwill, preventing misrepresentation, and avoiding damage.
The Court observed that the marks “INDI” and “INDEED” are phonetically and structurally similar, with the difference of a single letter being inconsequential. The defendant failed to provide a satisfactory explanation for adopting the mark “INDEED,” particularly given its awareness of the plaintiff’s prior use of “INDI.” The defendant’s adoption of a similar “blue and white” color scheme further demonstrated a lack of bona fide intent. The plaintiff’s substantial sales figures contrasted sharply with the defendant’s minimal sales, underscoring the plaintiff’s established goodwill and reputation.
The Court remarked that “the impugned mark ‘INDEED’ used by the defendant is structurally similar to the plaintiff’s mark ‘INDI’. There is also a phonetic similarity between ‘INDEED’ and ‘INDI’ as both ‘EE’ in ‘INDEED’ and ‘I’ in ‘INDI’ produce similar sound. The only difference is the use of the letter ‘D’ in the end of the impugned mark which, in my opinion, would not make any significant difference. Even with the addition of the letter ‘D’, the marks of the plaintiff and the defendant would have phonetic and structural similarity.”
The Court held that the plaintiff successfully established a prima facie case of passing off. It found that the plaintiff demonstrated its goodwill and reputation over the mark “INDI,” while the defendant’s adoption of “INDEED” created a likelihood of confusion and constituted misrepresentation. The Court also dismissed the defendant’s claims of suppression and misrepresentation by the plaintiff, finding them devoid of merit.
[FMI Limited v. Midas Touch Metalloys Pvt Ltd., 2025 SCC OnLine Del 4, decided on 08-01-2025]
Advocates who appeared in this case:
Advocates before Court Mr. J. Sai Deepak, Senior Advocate with Mr. N.K. Bhardwaj, Mr. Bikash Ghorai, Mr. Neeraj Bhardwaj, Mr. Rahul Maratha, Ms. V. Awasthi and Mr. Luv Virmani, Advocates for plaintiff
Mr. C.M. Lall, Senior Advocate with Mr. Kapil Midha, Mr. Garv Singh, Ms. Samiksha Gupta and Ms. Muskan Garg, Advocates for defendants