Phonetically And Visually Similar Vernacular Mark Amounts To Trademark Infringement: Madras HC [Read Order]

Chennai: The Madras High Court has dismissed applications filed by a Chennai trader, to vacate an ex-parte injunction restraining him from using marks identical or deceptively similar to the 'GLOBE' trademark of a Shanghai-based padlock manufacturer, and made the interim injunction absolute.

Justice K. Kumaresh Babu was hearing two applications filed by the defendant to vacate the ex-parte injunction orders dated passed in favour of M/s. Shanghai Huanqiu Lock Making Company Ltd and Mr. Valaram, proprietor of M/s. Prince Impex, in their original applications seeking to restrain the defendant from passing off goods using marks identical to the plaintiffs' registered 'GLOBE' trademark on padlocks and hardware, and from infringing their copyright in the associated artistic work, trade dress and colour combination, in a suit for trademark infringement and passing off.

Counsel for the plaintiffs submitted that the plaintiffs' trademark was registered and enjoyed reputation and goodwill in India and abroad, that the defendant had adopted a phonetically and visually similar mark causing confusion, and that the defendant's own trademark application, which stated a mere 'proposal to use' the mark, contradicted his claim in the vacating application to be a prior user. Counsel for the defendant countered that the mark had been conceived independently, that the defendant held a registration for the device in Tamil, that the suit was not maintainable for non-compliance with the mandatory pre-institution mediation under Section 12A of the Commercial Courts Act, that the plaintiffs could not claim exclusivity over a generic mark, that the suit had been engineered by the second plaintiff out of commercial rivalry, and that several of the plaintiffs' supporting documents, including invoices using 'Chennai' and 'Madras' interchangeably, were fabricated.

The court held that questions of maintainability and alleged fabrication of documents could only be concluded after trial, and noted that the suit summons had been served as early as December 2025, that the defendant's application to reject the plaint had already been dismissed, and that no written statement had been filed within the time mandated under the Commercial Courts Act. The court also noted that rectification and opposition proceedings concerning the marks were pending before the Trade Marks Registry, and that although a registration confers a right to use a mark, the same statute equally permits its rectification or removal.

On the question of prior use, the court found that the plaintiffs had placed material to show they were prior users of the mark, whereas the defendant's own trademark application, filed in 2023, had itself indicated only a proposal to use the mark. 

The court held that "the plaintiff had been the prior user of the trade mark which commends a good reputation and good will in the market", and that the defendant's attempt to use a phonetically and visually similar mark, even in a vernacular language, would not entitle him to infringe a mark of established reputation and goodwill.

Finding no substantial reason to vacate the ex-parte order, the court dismissed the applications to vacate, made the injunction restraining passing off absolute, and allowed the application restraining copyright infringement, with no order as to costs.

Appearances:

For the Applicant (Defendant): Mr. Jayesh Kumar Daga, Advocate.

For the Respondents (Plaintiffs): Mr. Ramesh Ganapathy, Advocate.

Case Title: Vikas Mandoth vs. M/s. Shanghai Huanqiu Lock Making Company Ltd and another, A.Nos.446 & 447 of 2026 in OA Nos. 1120 & 1121 of 2025 in C.S.(COMM.DIV.) No.307 of 2025

[Read Order]