August 31, 2015     

 All’s Well for Honeywell in Trademark Dispute

 

 

Image Source: http://www.valuewalk.com

 

The High Court of Delhi, on August 24, 2015, granted a decree of permanent injunction in favour of Honeywell International Inc. (the Plaintiff) and against the Defendants in Honeywell International Inc. v. Pravin Thorat and Ors. (CS(OS) 3684/2014).

 

Facts of the Case

  • Originated in 1885, the Plaintiff claims to be a company incorporated and existing under the laws of the State of Delaware, having its principal place of business in New Jersey, U.S.A.

  • The Plaintiff claims to be a highly successful and immensely reputed company across the world, consisting primarily of four segments namely, “Aerospace”, “Automation and Control Solutions”, “Performance Materials and Technologies”, and “Transportation Systems”, and having an estimated business revenue of USD 39 billion and employee strength of about 132,000 staff in around 68 countries globally.

  • The Plaintiff is a Fortune 100 company, listed in the Top 100 of the Global Fortune 500 companies, has revenues up to USD 39 billion and employee strength of about 132,000 in around 68 countries.

Plaintiff’s presence in India:  

  • The Plaintiff and its affiliates have been directly present in India at least since the year 1984 and has subsequently expanded its presence in India.

  • Today, the Plaintiff employs about 13,000 staff in India through the establishment of various companies inter alia Honeywell Automation India Limited (HAIL), Honeywell Technology Solutions Lab Pvt. Ltd. (HTSL), Honeywell International India Pvt. Ltd. (HIIPL) and Honeywell Turbo Technologies Limited (HTTL). HTTL is headquartered in Pune, where the Defendants are also claimed to be operating from.

  • The Defendant No. 1, Mr. Pravin Thorat, is believed to be the proprietor of the Defendant No. 2. The Defendant No. 2 appears to be a shop using a deceptively similar mark to the Plaintiff’s well-known trademark and tradename HONEYWELL as a conspicuous part of its trading name. The Defendant No. 3 is a firm engaged in the manufacture and distribution of bakery and confectionary items which are sold at the premises of the Defendant No. 2.

  • The Plaintiff first became aware of the activities of the Defendants in December 2011.

  • The Defendants have wrongly applied for a trademark registration containing the Plaintiff’s well-known trademark HONEYWELL vide application No. 2195451 in class 30.

 

Contentions of the Plaintiff

  • The trademark HONEYWELL was adopted in 1906, derived from the name of one of its founders, Mark Honeywell. Therefore, there can be no basis of adoption of the said mark by any other entity.

  • The mark HONEYWELL is an arbitrary mark, having neither any meaning in the common parlance nor any specific meaning particular to the trade except denoting the Plaintiff’s goods and services. Consumers across the world associate the trademark HONEYWELL exclusively with the Plaintiff.

  • The Plaintiff’s brand HONEYWELL has been recognized as a Superbrand inter alia in the U.K. as well as in India by the Superbrands Council, which is one of the leading brand consultancy firms in the world.

  • The Plaintiff is the registered proprietor of its trademarks in about 120 countries across the world and has promptly enforced its rights vested in such trademarks in different jurisdictions across the world.

  • The Plaintiff’s trademark HONEYWELL has been declared as a well-known trademark in different jurisdictions inter alia China, Taiwan, Vietnam, Indonesia (by INTA).

Domain Names of the Plaintiff:

  • The Plaintiff maintains its own websites inter alia www.honeywell.com/Pages/Home.aspx and www.honeywell.com/sites/india which are freely accessible to persons across the world thereby making use of its trademark and trade name Honeywell.

  • The Plaintiff also owns over 800 domain names incorporating its Honeywell name and mark.

Contentions of the Defendants (Ex-Parte)

  • The Defendants were proceeded ex-parte on February 4, 2015. They did not even file the Written Statement.

  • The Defendants seem to have discontinued making use of their domain name www.honeywellbakers.com since the website was not accessible on the internet anymore. But on an inquiry it further revealed that the Defendants had already established two more outlets within the city of Pune itself and that it was planning to establish another such outlet.

Order of the Court and its Implications

 

The Hon’ble Court had granted an ex parte ad interim injunction against the Defendants on December 01, 2014. The Plaintiffs had made attempts to serve the Defendants on December 22-23, 2014 however the Defendants refused to accept service.

 

Hon’ble Mr. Justice Manmohan Singh of the High Court of Delhi granted a permanent injunction in favour of the Plaintiff vide order dated August 24, 2015 restraining the Defendants from dealing in any manner with confectionary products and/ or any other goods and/ or services under the trademark HONEYWELL including as a part of a domain name.

 

Concluding Remarks

 

This case is like any other trademark dispute where the rights of a registered proprietor are protected against malafide infringement. However, this judgment has far more implications as it awarded punitive damages alongwith litigation costs amounting to Rs. 3,00,000/- to the Plaintiff. In this regard, Time Incorporated v. Lokesh Srivastava & Anr. [2005 (30) PTC 3 (Del.)] and Microsoft Corporation v. Rajendra Pawar & Anr. [2008 (36) PTC 697 (Del.)] were relied upon which have held in favour of awarding punitive damages to the aggrieved registered proprietor while observing that it has become a trend of sorts for the defending party to evade court proceedings in a systematic attempt to jettison the relief sought by the Plaintiff and that such evasion of court proceedings does not de facto tantamount to escape from liability. It has been further observed that “…Courts dealing in actions for infringement of trademarks, copyrights, patents etc., should not only grant compensatory damages but also award punitive damages with a view to discourage and dishearten law breakers who indulge in violation with impunity out of lust for money, so that they realise that in case they are caught, they would be liable not only to reimburse the aggrieved party but would be liable to pay punitive damages also, which may spell financial disaster for them.” This is surely a welcome for honest traders and will ensure that blatant mala fide infringements are curbed at their very grassroots.

The aforesaid Order dated August 24, 2014 can be accessed here.

 

  

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