A Win Over The Battle Of Trademark Infringement By Registered Mark Dealing Under A Different Class

The Delhi High Court in the matter of L’AIR Liquid Societe Anonyme Pour I Etude Et I Exploitation Des proceeded Georges Claude And Anr. v. M/S Liquid AIR & Ors. reaffirmed that even if a registered trademark is used as a business name or trading style, it will constitute infringement under section 29(5) of the Trademarks Act. This decision came in the suit filed by a French company(represented by Khurana & Khurana Advocates and IP Attorneys) claiming their rights to the trademark ‘AIR LIQUIDE’, which is claimed to be commercially used by them in more than 60 countries in the world since 1902. The grievance of the plaintiffs was that the defendants were using the domain name “www.liquidair.in” along with the mark ‘LIQUID AIR’ as their trade name, which is deceptively similar to their mark. The noteworthy aspect of this judgment is that the Hon’ble High Court opined in favor of the plaintiffs despite both the parties being in different classes. The plaintiffs in the instant case are one of the leading manufacturers of industrial gases in the world, having commenced its business in 1902 and operate under classes 1,6, 10 and 11, whereas the defendants operate in class 39, being the distributors of industrial gases. The Hon’ble High Court was of the view that the business of both the parties in the present case is essentially connected or affiliated to each other and there is a strong likelihood that potential consumers may be misleading owing to the deceptive similarity between the two trademarks in question.

The plaintiff sought an injunction on the ground that the marks used by defendants are identical/deceptively similar and they were involved in the same business of trading and marketing of gas-related products as that of the plaintiff. The Delhi High Court on 9^th May 2018 passed an ex-parte ad-interim order of injunction restraining the defendants from dealing, directly or indirectly, in any goods/services similar to the goods/services of the plaintiff under the trademark ‘LIQUID AIR’ or any other mark deceptively similar to plaintiffs trademark “AIR LIQUIDE” and from using the domain name “www.liquidair.in” or any other domain name comprised of the term Liquid Air or any term similar to “AIR LIQUIDE”, to the plaintiffs.

Against the court’s ex-parte order, the defendants moved an application for vacation of the interim injunction and took the plea that their firm was registered in 1995 with the Registrar of Firms. Further, they said that they are involved in the trading of gas products and not in the manufacturing of gases. They also averred that they were the members of the All India Industrial Gas Manufacturers Association (AIIGMA) from 2002 till 2012. The plaintiffs took the plea that they are registered proprietors of the mark ‘AIR LIQUIDE’ and the use by the Defendants would constitute an infringement and pass off.

The Delhi High Court after listening to the arguments and counterarguments from both the parties opined that the use of the trademark “LIQUID AIR” by the defendants in class 39 does constitute infringement. Further, the Hon’ble High Court opined that the defendants’ intended use of the impugned mark although in a class different but essentially allied to the plaintiffs’ business constitutes infringement and incontrovertibly contravenes the intellectual property rights of the plaintiffs and therefore, the defendant cannot under any circumstances be allowed to continue the use of the impugned mark. In the light of the facts and circumstances of the instant case, the Hon’ble Delhi High Court held that:-

• The defendant would not adopt any mark or name which is identical or deceptively similar to the plaintiff’s mark “AIR LIQUIDE”. Also, the court directed the defendants to change the firm name “LIQUID AIR” w.e.f. 1^st April 2019, subject to the plaintiffs giving up the claim for damages.
• The Defendant shall obtain the requisite approvals from the Registrar of Firms or any other authority including the registrar of Companies.
• The Defendants must surrender the domain name “liquidair.in” and would not use it for any of their business activities in the future. Also, the Defendants cannot adopt any other domain name or website name which contains any mark or name identical or deceptively similar to the mark ‘AIR LIQUIDE’.