Bombay High Court Temporarily Restrains Recruitment Website From Infringing Hind Rectifiers Ltd's 'HIRECT' Trademark

It was plaintiff Hind Rectifiers' case that its business is spread across various sectors including electronics, railway transportation, power, telecommunication, cement and metal industries. It had sought to restrain Chrome21 India Pvt. Ltd. (defendants) from infringing and passing off its trademark 'HIRECT'. The plaintiff stated that the HIRECT mark was adopted by a unique combination of its corporate name 'HInd RECTifiers'. It stated that it has been using the mark continuously since 1961 in India and other countries for various goods and services.

In 2021, it came across the defendant's domain 'hirect.in' through which defendant No. 1 was advertising, promoting and offering its recruitment services under the 'HIRECT' mark. It thereafter filed a lawsuit before the high court seeking to restrain the defendants from using the 'HIRECT' mark as a domain name/website.

The defendants contented that their mark originates from “HIRE-DIRECT' which was the philosophy behind the services being offered by them. It stated that keeping this aim in mind, the mark “HIRECT” was adopted.

Rejecting this contention, Justice R.I. Chagla in its order observed that the intention of the defendants in adopting its mark is wholly irrelevant in an action for infringement and passing off.

It stated, “It is well settled that no one can carry out its business in such a way to persuade customers and / or clients into believing that the goods and / or services belonging to someone else are theirs or are associated therewith. When an entity adopts a name and / or mark in connection with their business or services which already belongs and is extensively used by someone else, this results in confusion and has the propensity of diverting customers and clients of someone else to themselves, thereby resulting in injury.” The Court thus rejected the defendant's contention that their mark was an honest adoption.

"The Defendants having adopted an identical mark in the same class of goods and / or services. There is no manner of doubt that the Defendants have dishonestly adopted the mark. Further, Defendants have dishonestly contended in the pleadings that the Defendants were unaware of the Plaintiffs trademark. This is despite the examination report in respect of the Application for registration made by Defendant No.2 having specifically cited the Plaintiff's mark as a conflicting mark," the court added. 

The defendant further contended that though Hind Rectifiers secured registration of its mark in respect of various services, it was not actually using the mark for all the services.

The Court however rejected this contention and noted that Hind Rectifiers has been able to establish that it has 'superior rights' in its trademark. It stated that Hind Rectifiers has been using its trademark 'HIRECT' continuously, extensively and uninterruptedly with respect to various goods and services.

It observed that Hind Rectifiers has garnered enormous goodwill and reputation in its trademark through extensive use.

It stated that the 'HIRECT' mark has become exclusively associated with the plaintiff and its diverse range of activities and business conducted under the said mark. Tmark has become a source identifier for Hind Rectifiers, it added.

The Court noted that Hind Rectifiers' mark is distinct and that the defendant's use of the impugned mark “…will cut into the distinctiveness of the Plaintiff's “HIRECT” mark and result in its dilution and debasement. The distinctiveness of the Plaintiff's mark, used and adopted by the Plaintiff is at least 59 years before the Defendants attempted to imitate and / or copy it.”

It stated that the customers are likely to believe that the defendant's services are associated with those of Hind Rectifiers'. 

The Court noted that both the marks are structurally, phonetically and visually identical and / or deceptively similar when compared as a whole. It observed, “It is a settled position of law that while comparing two marks, the prominent, essential and distinctive features of the two marks are required to be compared. Applying this principle to the facts of the present case, it is clear that the impugned mark is identical to the Plaintiffs' prior and well known trade mark “HIRECT”.”

The Court held that Hind Rectifiers made out a strong prima facie case for the grant of an injunction for infringement and passing off. It stated that the balance of convenience lies in favour of Hind Rectifiers and that non-grant of the injunction would cause it irreparable loss and harm.

It also declared the mark to be a 'well-known mark' under Section 2(1) (zg) of the Trademarks Act.

The Court thus issued a temporary injunction, restraining the defendants from using the impugned mark as the domain name or website till the final disposal of the lawsuit. 

Case title: Hind Rectifiers Ltd. vs.Chrome21 India Pvt. Ltd. and Ors.

(INTERIM APPLICATION (L) NO.25655 OF 2021 IN COM IPR SUIT NO.158 OF 2022)