Roma Arora and Harsh Aggarwal of Havells share some experiences and anecdotes of managing their brands in India
Trademark licensing
Havells Sylvania Group handled a International Chamber of Commerce arbitration involving a tricky situation that raised an interesting question concerning “have made” rights. Have made rights refer to a licensee permitting a third party to manufacture a product on the licensee’s behalf. The question was whether the exercise of have made rights by Company B in Country A (where Company A is the trademark owner) only for the purpose of export and sale in Country B (where Company B is the trademark owner) amounts to using or infringing Company A’s trademark in Country A. Fortunately for the parties but unfortunately for trademark law and jurisprudence, the parties settled the dispute before final adjudication by signing a licensing agreement for royalty payments against the specific grant of a licence by Company A to Company B for the manufacture of goods in Country A.
Parallel imports
This case involved a trademark against the backdrop of global territorial allocation between Company A and Company B. Under the contract, both entities were prevented from selling goods manufactured by them in the other’s territory. However, since e-commerce knows no political barriers, goods manufactured by Company B were being sold in India, the territory of Company A.
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Representing Company A, Havells sued Company B and the websites concerned in Delhi High Court for selling infringing goods online in India. The websites in their defence raised the issue of parallel imports (which is pending before the Supreme Court) and argued that they were mere intermediaries which were neither responsible for infringements by sellers who offer goods on the platform provided by them, nor capable of stopping such infringement. The case involved two interesting issues: (1) whether goods originating from an owner under a territorial divide would be treated as a parallel import; and (2) whether intermediaries are responsible for the sale of counterfeit goods. Fortunately for Company A, the matter was resolved amicably, however, the legal issue did not see the law laid down.
Corporate name infringing trademark
A trademark was licensed by Company A to Company B for use in India. Company B co-branded the trademark with its own trademark and used the co-branded trademark as a part of its corporate name. Company B continued such co-branding even after the termination of its licence. Representing Company A, Havells filed a writ petition in Delhi High Court seeking a direction to the Registrar of Companies to change the co-branded corporate name, as it infringed Company A’s trademark rights in India. The strategy to invoke the writ jurisdiction in an infringement case worked fruitfully to our advantage without the rigours of trial before a civil court.
Well-known trademark
TTPly was manufacturing and selling plyboard under the trademark Havells. Persons acting for TTPly applied for trademark registration. They withdrew the application pursuant to a notice sent on behalf of Havells but somehow they still received a registration certificate. An enforcement action was carried out under the provisions of the Copyright Act at the infringers’ manufacturing unit in a remote town around 200 kilometres north of Delhi. The action was highly successful. Aside from infringing material, the tools and dies used for applying the Havells mark were also recovered.
In a calculated move, Havells decided to file a suit for infringement and permanent injunction in Delhi High Court. The court noted the long use of the Havells trademark; the broad geographical area of its use; the general public’s knowledge of the trademark; its goodwill and reputation due to extensive promotion, publicity and advertisements; extensive sales under the trademark in India as well as in other countries; and the numerous registrations obtained for the mark. As a result, it declared that the Havells trademark had acquired the status of a well-known mark as defined under section2(1)(z) of the Trademarks Act, 1999. Havells became the first electrical goods brand in India to be declared a well known brand and entered the league of a small number of Indian brands to be so declared.
Enforcement actions
Havells regularly carries out enforcement actions against pirates of its critical and life-saving electrical products. Through such actions, it became apparent that the police authorities are highly inconsistent when it comes to invoking section 420 of the Indian Penal Code (IPC) in cases of piracy of electrical goods. This prompted us to move Delhi High Court seeking a direction to the police to invoke section 420 of the IPC where piracy of electrical goods is found. We also sought a direction to the central government to consider concrete steps to strictly deal with those who counterfeit electrical products and provide for measures to prevent counterfeiting of electrical products that lead to significant public health and safety issues.
Unregistered marks
Havells sued one of its competitors for launching an electronic advertisement on the grounds of trademark disparagement, copyright infringement of the story board, and passing off of its unregistered trademark “shock laga” (hurt by a shock). While referring to popular taglines such as Pepsi’s “yeh dil mange more” (the heart wants more), Surf Excel’s “daag acchhe hain” (dirt is good), and Asian Paints’ “har ghar kuch kehta hai” (every home has a story), the court granted an injunction prohibiting the defendant from using the term “shock laga”, which is a unique combination of otherwise ordinary English and Hindi words. The court observed that “shock laga” had acquired distinctiveness, secondary meaning and was now associated exclusively with Havells. This judgment illustrates the growing importance that slogans, expressions, taglines and other tools have in brand campaigns, particularly in visual media.
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Roma Arora is a senior legal counsel and Harsh Aggarwal is the deputy general manager of legal at Havells Sylvania Group.
