September 14, 2015     

 DELHI HIGH COURT: “LNT” “ELENTE” is Deceptively Similar To “L&T”

 

In a recent order dated August 31, the Delhi High Court has decreed a suit in favour of Larsen & Turbo (L&T), (hereinafter the Plaintiff) against Lachmi Narain Trades And Ors., (hereinafter the Defendants), for the use of the trademark "LNT"/"ELENTE" which the Court found to be deceptively similar to the Plaintiff’s well-known mark, L&T.

 

The case titled as “Larsen and Toubro Ltd. (L&T) vs. Lachmi Narain Trades and Ors” was decided in favour of the Plaintiff with costs. The order can be accessed here.

 

Facts of the Case:

  1. The Plaintiff company and has been carrying on business of engineering, construction contractors, manufacturers of switch gears, etc. since 1938, originally a partnership firm between two Danish Nationals, Henning Holk-Larsen and Soren Kristian Toubro. The name of the Plaintiff comprises of the initials of surnames of the said two partners i.e. Larsen and Toubro.

  2. Since incorporation, the Plaintiff has been carrying on business in India and over the years its business activities have spread in other parts of the world. The word "Larsen" and/or the word "Toubro" have been associated by the traders and members of the public exclusively with the Plaintiff. The Plaintiff is also known by its short name viz. "L & T".

  3. Over the years, the Plaintiff formed subsidiary companies. The letters "L&T" or the words "Larsen" and "Toubro" are found in the names of such subsidiaries.

  4. The Defendants were the authorized stockist of the Plaintiff since 1991. However, due to some circumstances the Plaintiff was compelled to discontinue renewal of the said agreement with effect from April, 2002.

  5. The Plaintiff discovered that the Defendant No.2 had applied for registration of the trademark "LNT" and the same is pending before the Trade Marks Registry and the status of the said application is shown as "New Application”. However, the application at present stands refused under the Act.

  6. Aggrieved by the aforesaid Defendant’s use of a deceptively similar trademark, the Plaintiff sent a cease and desist notice to the Defendants.

Plaintiff’s Contentions:  

  1. The Plaintiff had applied for registering the marks "Larsen and Toubro" and "L&T" which has since been registered under various classes.

  2. That the words "Larsen" and "Toubro" have acquired such distinctiveness that any use by any person or Company or party of the word "Larsen" or "Toubro" or the abbreviation "L&T" is bound to cause confusion amongst the traders and members of the public.

  3. That Plaintiff enjoys a high market capitalization and the Plaintiff's shares command substantial respect on the various stock exchanges.

  4. That the goods and services of the Plaintiff have been advertised extensively in both print and visual media.

  5. That the Plaintiff’s impugned registered trademarks have been appearing for a substantial period of time in both the print and visual media. That the word/abbreviation "L & T" has acquired a secondary meaning and is associated exclusively with the Plaintiff.

  6. That Defendants with the intention of misleading innocent members of public have chosen brand names LNT/ELENENT to pass of their goods/products /business /services as that of the Plaintiff.

Defendants’ Contentions:  

  1. That they have been carrying on business under the trade name Lachmi Narain Trades since April, 2001. Lachmi Narain is the family business name and way back in 1952 the first concern by the name Lachmi Narain Stores was started in Ooty and got registered with Sales Tax Authorities since 1956. Lachmi Narain Trades was set up in the year 1998 in Coimbatore and trade mark registration was applied for Lachmi Narain Trades on 17th April, 2001.

  2. That since commencement Defendant has only used the abbreviated form of its firm name LNT for its brand name along with extensive advertisement.

  3. That Plaintiff has acquiesced in the Defendant’s use of brand name LNT as Plaintiff was aware of the said use since April, 2001 which is evident from the following fact:-

    1. The authorized distributors/dealers of Defendant have their shops at the same place and are selling the Defendants' products under the brand name "LNT/ELENTE". Since the Plaintiff’s and Defendant’s dealers/ distributors are working from the same place, hence Plaintiff is bound to have been aware.

    2. The Defendant has been selling its products under the brand name LNT/ELENTE in various cities through their authorized electrical shops since the year 2001.

    3. That Plaintiff should have been aware that the Defendants have been using the brand name LNT/ELENTE as both the Plaintiff and the Defendant have issued advertisements in the same publication since January, 2003.

    4. That Delhi Electrical Traders Association has been issuing circulars containing the advertisements of Defendants and Defendants' brand name to its members which include the authorized dealers and distributors of the Plaintiff.

    5. That Delhi Electrical Traders Association had also published a diary in the year 2003 which included the Defendant's advertisement along with its brand name.

  4. That the brand name LNT/ELENTE is not similar to the trade mark L&T used by the Plaintiff and hence there is neither any similarity nor any deception. The Defendant is using brand name LNT and the letter 'N' is in bold face. The said name LNT cannot be said to be similar to the brand name of the Plaintiff i.e. L&T.

  5. That Defendants deal only in four products namely miniature circuit breakers, rotary switch, PVC insulating tape and lastly electrical choke and the Plaintiff does not deal in any of the aforesaid goods.

  6. That the Defendants' product boldly states that the product "LNT" is marked by Lachmi Narain Trades. Therefore, there can be absolutely no confusion in the minds of the purchasers that Defendants' product originated and/or are connected with the products of the Plaintiff.

Court’s Observation & Decision  

  1. That if it is shown that a business of a trader has acquired a distinctive character, the law will restrain a competitor from using the same and prohibition order can be passed by Courts for unlawful activities. One cannot make use of the plaintiff's expensive labour and effort. One cannot deliberately reap where one has not sown and cannot be allowed to filch a rival trades. Passing off is thus a remedy for injury to goodwill.

  2. The Court while comparing the two rival marks in the case made reference to several precedents like B.K. Engineering Co. v. Ubhi Enterprises & Anr. (AIR 1985 Del 210) wherein the Court remarked that a fair and honest trader will not give misleading name to his product to the continuing detriment of a plaintiff who has built up his goodwill in the business after years of hard work for example, 13 or 14 years, as in this case. It is this intangible right to property which the law seeks to protect. While analyzing the precedents, the Court held that in the present case the chances of confusion and deception among the two rival marks are apparent and the mark used by the Defendants is deceptively similar to the Plaintiff’s mark.

  3. In view of the aforesaid facts, circumstances, evidence and observations, the Court decreed the suit in favour of the Plaintiff and restrained the Defendants from using the name/words/abbreviation "LNT/""ELENTE" or any other deceptively similar marks/name/ words/abbreviated letters in relation to any of their goods.

Conclusion

 

Many a times Courts are confronted with issues pertaining to unauthorized use of similar/ deceptively similar trademarks. In the present case, the Plaintiff is a well- established company using the mark “L&T” which through extensive use in India has acquired distinctiveness. Hence, use of a deceptively similar mark “LNT” by a third party is bound to cause confusion in public and trade alike. The Court in the case has rightly passed an order in favour of the Plaintiff which would have been subjected to irreparable harm and loss in view of the alleged unauthorized use of deceptively similar trademark by the Defendant.

 

 

 

 

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