'Lego' A Well Known Mark: Madras High Court Cancels Hyderabad-Based Company's Registration In Confectionary Products

Justice PB Balaji held that the company had almost identically adopted Lego's mark, including the style and the colour and had failed to give a satisfactory explanation to the close identity of the two marks. The court thus held that the company had a dishonest intention to use Lego's marks.

“The above clearly shows that there is an almost identical adoption of the Petitioner's mark LEGO, including the style and to some extent even the colours. There is no satisfactory explanation as to such a close identity to the Petitioner's mark. Even, the explanation sought to be offered by the 1st Respondent for adopting LEGO appears to be only on second thoughts and not acceptable. The over all reproduction of the Petitioner's mark clearly suggests a dishonest intention on the part of the 1st Respondent,” the court said.

The court also noted that though the company claimed to have made a thorough search in the trade mark registry, the fact was that the company had made search only for traders dealing in confectionaries. The court thus noted that the company was conscious that there was a possibility of Lego being applied in other classes and the company's conduct exposed its malafide intention. The court also noted that the company's claim that it had used “Lego” mark honestly could not merit acceptance given that “Lego” had a global reputation and goodwill.

“Thus, the 1st Respondent was conscious and alive to the fact that there is a possibility of LEGO having been applied in other classes and mischievously, the 1st respondent claims to have made a search only for traders dealing in confectionaries. Such a conduct does not exhibit any bona fides, but only exposes the mala fides on the part of the 1st Respondent,” the court ruled.

The court was hearing a plea by Lego to cancel the registration of Lego Cuteheart and Lego Coffybond – manufactured by Leo Foods, a company based out of Hyderabad. Lego submitted that it was founded in 1930's and had been using its mark in India since 1987 after secur9ing registration in 1967. Lego informed the court that in 1994, the manufacturing and selling division entered into association with a company for sale of their products in Mumbai and Delhi.

Lego submitted that Leo Foods had been infringing its mark by using the mark on its confectionaries. It was submitted that Lego had been a prior user of the mark and pending the proceeding was also declared as a well-known mark. Relying on Section 11(2) of the Trademark Act, Lego argued that it was entitled to protection across all classes of goods and services.

Leo Foods on the other hand, argued that it had coined the term LEGO by combining the expression “LE” and “GO” in Hindi which means to take and leave. It was argued that they had not copied Lego's mark and that they had also conducted a search/survey in the database of Trade Marls Registry and did not find any person, manufacturer or trader using LEGO mark for confectionaries.

Leo Foods also argued that at the time of filing the petition, Lego was not declared a well-known trademark and thus could not claim such benefits. It was also pointed out that while Lego itself admitted to carrying out sales in only major Indian cities, Leo Foods was using the mark only in the city of Hyderabad and state of Telangana and thus they were entitled to retain the registration.

The court noted that Lego was entitled to the protection as a well known trademark even on the date of application for registration and was entitled to protection even if the goods manufactured by both the enterprises were not similar. The court noted that as per Section 11 of the Act, if the later mark is used without due cause and is detrimental to the distinctive character or reputation of the earlier trade mark, even an action of passing off being available to the proprietor of the earlier trade mark would be a relative ground for refusal of registration of a later mark.

The court also noted that the target consumers of both the companies were children and it was highly unlikely that children could easily fall prey and assume that the confectionaries of Leo Foods were part of Lego.

Thus, noting that Lego was entitled to be granted the status of well-known mark, the court was inclined to grant the relief as prayed for and directed the authorities to take staps to remove the marks of Leo Foods from the register of Deputy Registrar of Trade Marks.

Counsel for Petitioner: Mr. Sathish Parasaran, Senior Counsel for Mr.Rajkumar Jabak

Counsel for Respondent: Mr.K.Mohankumar, Mr.S.Janarthanam, Senior Panel Central Government Standing Counsel, Mr.K.Subburangabharathi, Central Government Standing Counsel

Citation: 2024 LiveLaw (Mad) 422

Case Title: LEGO Juris A/S v Gurumukh Singh and Another

Case No: (T) OP (TM) Nos.190 & 191 of 2023