Court affirms prior use and reputation of Vikas Mandoth's trademark, dismisses defendant's plea to vacate ex-parte injunction despite registration in vernacular language
In a significant judgment delivered on September 7, 2026, the Madras High Court, presided by Justice K. Kumaresh Babu, upheld an injunction restraining Shanghai Huanqiu Lock Making Company Ltd. from using a trademark that was found to be phonetically and visually similar to that of Vikas Mandoth, the plaintiff. The case, arising out of alleged trademark infringement, emphasized the importance of prior use and established reputation over mere registration, especially when the defendant's trademark appeared deceptively similar to the plaintiff's mark.
Vikas Mandoth, a reputed manufacturer of locks, had filed the suit alleging that the defendant company's use of a similar trademark caused confusion among consumers and infringed on his registered trademark. The plaintiff presented evidence of prior usage and goodwill attached to his trademark, which enjoys recognition not only in India but also internationally. The defendant, on the other hand, argued that their trademark was independently conceived and registered in Tamil (vernacular language), contending that such registration entitled them to continued use.
The defendant further challenged the maintainability of the suit, citing non-compliance with mandatory pre-litigation mediation under Section 12A of the Commercial Courts Act, 2015, and alleged fabrication of documents submitted by the plaintiff. They also claimed that the plaintiff's trademark was generic and that there was a commercial rivalry motivating the litigation.
Justice Kumaresh Babu carefully examined the submissions and documents before him. The Court noted that the defendant's application for trademark registration was filed in 2023 with a proposal to use the mark, contradicting their claim of prior use. Moreover, the suit summons were duly served, and no written statement was filed within the prescribed time. The Court observed that issues relating to the suit's maintainability and document fabrication could only be conclusively decided after a full trial.
Importantly, the Court recognized that while registration confers rights, the Trademark Act also provides mechanisms for opposition and rectification, which were pending in this case against the defendant's trademark. Considering the prima facie evidence, the Court found that the defendant's trademark was identical and deceptively similar to the plaintiff's mark, thereby causing infringement.
Consequently, the Court dismissed the defendant's applications to vacate the ex-parte injunction and made the injunction absolute. The ruling underscores that using a phonetically and visually similar trademark in any language, including vernacular, does not absolve the infringing party from liability if it causes confusion and affects the senior user's goodwill.
This judgment serves as a precedent reinforcing the protection of established trademarks and the principle that mere registration in vernacular or other languages does not justify infringement.
Bottom Line:
Trademark infringement - Plaintiff's prior usage and reputation established - Defendant's use of phonetically and visually similar trademark/device in vernacular language held infringing - Injunction order made absolute.
Statutory provision(s):
Trademark Act, 1999 Sections 29, 31; Commercial Courts Act, 2015 Section 12A
Vikas Mandoth v. Shanghai Huanqiu Lock Making Company Ltd., (Madras) : Law Finder Doc Id # 2974690
