India: Delhi High Court restricts the infringement of the mark ‘John Deere’

Source: www.delhihighcourt.nic.in

The Hon’ble Delhi High Court, on May 23, 2018, passed an order in the case of Deere & Company & Anr vs. Malkit Singh & Ors, in favor of Deere & Co. (hereinafter referred to as the “Plaintiff”) issuing an interim injunction against Mr. Malkit Singh & Ors (hereinafter referred to as the “Defendant”) holding that the Defendant has infringed the trademark and trade dress of the Plaintiffs products in bad faith. The case is listed before the Court on July 30, 2018, for disposal as well as for framing of issues and for case management hearing.

Brief Facts

• The Plaintiffs, a company existing under the laws of the State of Delaware, USA are leading manufacturers and exporters of agricultural vehicles including tractors, harvesters, etc. as well as their spare parts under the trademark JOHN DEERE. The products of the Plaintiffs are easily identifiable by their distinct share of green paint, augmented by yellow strip.
• The Plaintiffs have secured registrations for a number of its JOHN DEERE trademarks, including the (green yellow) trademark, under various classes, including Classes 7, 12 and 28 under the Trademarks Act, 1999.
• In the last week of October 2017, the Plaintiffs came to know that the Defendants were manufacturing, selling, exporting and advertising infringing products under the mark MALKIT by using an identical color combination as that of the Plaintiffs. Thereafter, a Cease and Desist notice was sent to the Defendants. In response, the Defendants emphasized that they had rights over its Green and Yellow mark.
• On further investigation, it was found that the Defendants were engaged in the manufacture, supply, export and sale of infringing tractors and agricultural equipment like Combine Harvesters, Rice Transplanter, Thresher, Straw Reaper, Mini Harvester etc. with an average production of 350 harvesters a year in Uttaranchal, MP, Andhra Pradesh, UP and Delhi.
• The present suit has been filed for permanent injunction restraining infringement and dilution of a trademark by the Defendant, passing off of trade dress, unfair competition, rendition of accounts, delivery up, damages, etc. 

Issues

1.      Whether the Defendants have adopted a mark similarly deceptive to that of the Plaintiff in bad faith?

Plaintiffs Mark

It is stated in the plaint that the Plaintiffs’ ‘leaping deer’ logo comprises an image of a yellow deer in conjunction with the trademark ‘John Deere’. It is further stated that a particular combination of the Green and Yellow colors for its agricultural implements i.e. green color for the body and yellow color for the seat and the wheels/rims.

Plaintiff’s Contentions

1. The Plaintiff contended that the Green and Yellow color combination had become so synonymous with the Plaintiffs that the particular shades of Green and Yellow are commonly referred to as John Deere Green and John Deere Yellow and the logo and the Green and Yellow color combination used by the Plaintiffs have collectively been termed as the JOHN DEERE marks
2. The Plaintiff submitted that the Defendant is engaged in the manufacture and supply of goods that are similar to the goods of the Plaintiff i.e., tractors and agricultural equipment. Further, the Defendants also advertise their products through various online portals like, www.malkitcombines.com, www.combineharvestor.co.in, www.justdial.com. The Defendants’ activities clearly evidence their intention to ride upon the reputation and established goodwill of the Plaintiffs’ products under the JOHN DEERE marks.
3. The Plaintiff contended that the Defendants had adopted and used identical trade dress, wherein the color scheme, getup, layout, manner of placement of various parts of the equipment is identical to the trade dress of the Plaintiffs’ JOHN DEERE products and its Green and Yellow color combination and the same is bound to create a false impression in the minds of unwary consumers and members of the trade that, the Defendants are somehow associated with the Plaintiffs’ business and that the Defendants have been specifically authorized to provide their goods and products under the John Deere trademarks by the Plaintiffs themselves.
4. The Plaintiff further relied on Deere & Co. & Anr. v. S. Harcharan Singh & Ors., wherein a Coordinate Bench of this Court gave an order dated March 5, 2015, recognizing the immense goodwill and reputation vested in the Plaintiffs’ said marks and has held such marks to be well-known trademarks as defined under Section 2(1)(zg) of the Trade Marks Act, 1999.

Defendant’s Contention

1. The Defendant stated that the the impugned color scheme for combine HARVESTOR was in use by the Defendant, was in the knowledge of the Plaintiff at least since 2008. In addition to the above, the predecessor of the Defendant has been using the impugned color scheme since 1988.
2. He further states that the Ministry of Agriculture took products of both the parties for testing purposes in 2015, and therefore, the Plaintiffs are deemed to have been aware of the Defendants’ use of the impugned color combination since 2015.

Rejoinder

In the rejoinder, the Learned Counsel for the Plaintiffs stated that the defenses sought were an afterthought and contrary to the Defendant’s own reply to the cease and desist notice. He pointed out that in reply to the cease and desist notice the Defendants had taken the stand that the color combination being used by them was totally different from the Plaintiffs’ color combination and asserted that they (the Defendants) had monopolistic copyright in the color combination.

Court’s View

• The Court opined that the Plaintiffs’ were entitled to sole and exclusive use of this trade mark comprising such color combination (trademarks include combination of colors by virtue of the definition under Trademarks Act, 1999) as well as the right to claim an injunction in respect of infringement of rights due to the fact that they had secured registration for the trademark comprising a color combination of green and yellow.
• The Court was of the view that the Plaintiffs’ Green and Yellow color combination has been used for 100 years over the agricultural products and even the tractors (green color for the body and yellow color for the seat and the wheels/rims), therefore, the mark/combination is reputable, distinctive and stands as an instant source-identifier for the Plaintiffs’ agricultural products.
• The Defendants’ adoption of an identical color combination, its use in the same manner as that of the Plaintiffs and its denial of the Plaintiffs’ rights in the said color combination in its reply to the legal notice amounts to unfair advantage and constitutes behavior which is contrary to honest and industrial practices. Therefore, the Defendants action amounts to infringement of the Plaintiffs’ trademark.
• Consequently, the Court till further order, ordered an interim injunction restraining the Defendants and related parties to deal with the agricultural equipment with Plaintiffs mark. 

The matter is listed before the Court on July 30, 2018, for disposal of I.A.3692/2018 as well as for framing of issues and for case management hearing.