Trademark Dispute Over “GM” Abbreviation: Court Dismisses Exclusivity Claim
The present matter concerns a trademark dispute wherein the plaintiff is M/s. GM Modular Private Limited, whereas the defendant is GM Innovations Private Limited. The plaintiff carries on the electrical goods business and claims considerable reputation and goodwill standing for its “GM” trademark. They argued that the defendant’s use of the same mark for sanitaryware and bathware products constitutes infringement and passing off, likely to deceive or confuse the public and dilute the distinctiveness of their trademark, causing irreparable harm to their business. The plaintiff sought an ad-interim injunction under Order XXXIX of Rule 1 & 2 of the Code of Civil Procedure (CPC) to restrain the defendant from using the disputed trademark.
The court dismissed the plaintiff’s application for an ad-interim injunction and allowed the defendant’s application under Order XXXIX Rule 4 CPC to vacate the interim order, which had initially restrained the defendant from using the trademark. While deciding the case, the court relied upon various factors, such as that GM is generally used in many industries, the plaintiff failed to furnish affirmative evidence clearly showing that the trademark carried a distinctiveness required for registration, and reference to the case of Vasundhara Jewellers. The court held that common abbreviations cannot be monopolized if there is no distinctiveness backed by substantial evidence concerning secondary meanings and presence across multiple classes of goods. This judgment pronounces that it is difficult to establish the exclusivity of generic terms or cognomina in the realm of trademark law.
Plaintiff’s Submissions:
- Plaintiff argued that their trademark “GM” has acquired significant reputation and goodwill in the market, particularly in the electrical goods sector and that the defendant’s use of the same mark in sanitaryware and bathware could confuse consumers, leading them to believe there is a connection between the two businesses, thereby constituting trademark infringement and passing off.
- The plaintiff claimed that the mark “GM” is well known, and that since it has acquired secondary significance after having moved out of its original class of electrical goods, it is today identified most prominently with their products because of overwhelming market recognition and extensive use. They contend that such protection extends over classes concerning related classes of the defendant’s products.
- The plaintiff citing legal precedents such as GM Modular Pvt. Ltd. vs. Mayur Electromeck Pvt. Ltd. which highlighted the prior recognitions, reputation and goodwill of their trademark. They made references to general principles regarding trademark owner rights and enforcement in the case of Pankaj Goel vs. M/s. Dabur India Ltd.
- The plaintiff requested for an ad-interim injunction under Order 39 Rule 1 and 2 of CPC, restraining the defendant from using the disputed trademark..
Defendant’s Submission:
- The defendant argued that the abbreviation “GM” is widely used in the trading community and, as a result, the plaintiff cannot assert its monopoly. They presented evidence of the “GM” being used by a variety of third parties as part of their trading names or trademarks, indicating that the term lacked distinctiveness and, as a result, could not be protected under trademark law.
- The defendant stated that their products (sanitaryware and bathware) are classified in a separate category that is entirely distinct from the electrical goods of the plaintiff. They argued that trademark rights should be restricted to specific product categories, particularly when there is no direct competition between the businesses. They substantiated their argument that a trademark owner cannot assert a monopoly over an entire class of goods by referring legal precedent (Nandini Dulex vs. Karnataka Co-operative Milk Producers Federation Ltd.).
- The defendant cited the plaintiff’s response to the Registrar of Trademarks’ examination report, in which the plaintiff allegedly asserted that “GM” was the name of their business and not a trademark. The defendant contended that this implied that the plaintiff had waived any claim to exclusive rights over “GM” at the time of registration and could not subsequently extend those rights.
- The defendant argues that they are still in the process of establishing their business and have not yet begun using the challenged trademark for their products. They contended that there is no immediate risk of confusion or deception in the minds of consumers, as they have not yet used and sold their products under the mark.
Observation
The court analyzed the submission and evidence presented by both parties, including the legal principles and precedents applicable to the case. The court noted that the abbreviation “GM,” as revealed in evidence, is a common word with broad applications, reflecting a strong interest in eliminating any claim of exclusivity by the plaintiff. The court relied upon the case of Institute of Directors Vs. World Devcorp Technology and Business Solutions Pvt. Ltd. & Ors, which stated that common English words cannot be monopolized unless they gain secondary significance through extensive use.
While the plaintiff asserted secondary significance of “GM” in the electrical goods sector, the court found insufficient evidence to extend this recognition to the defendant’s sanitaryware and bathware products. The principle established in Nandini Delux v. Karnataka Co-Operative Milk Producers Federation Ltd. was reiterated, which specifies that trademark rights should be restricted to the specific goods category for which the trademark was originally registered and extensively used. The defendant’s argument that their products were in distinct categories further supported restricting trademark rights to specific goods categories. The court observed that the plaintiff’s trademark rights should be confined to the specific category of goods for which the trademark was registered and extensively used. It also noted prior use of the mark “GM” by multiple entities before the plaintiff undermining their claim of exclusive rights. The court observed that the submission made by the plaintiff statement during registration of the trademark calling itself different from “GM”. This contradicted their current stance and weakened their position.
The court noted that the interim relief sought by the plaintiff (to make the interim order dated 23.03.2023 absolute) was not justified based on the evidence presented
Final Order
The application by the plaintiff was denied under Order XXXIX Rule 1 and 2 CPC, while the defendant’s application under Order XXXIX Rule 4 was allowed. Consequently, the interim order dated March 23, 2023 was vacated.
Appeal
The Plaintiff had then preferred an Appeal against the said order. After arguments between the parties, they entered into an interim arrangement whereby the Defendant/Respondent agreed not to use the trademarks in relation to any other products other than bathware and paints. The respondent further undertook that it will change its label and not use the colours red and white or any other colour currently used in the Plaintiff/Appellant’s trademarks.