Structural, Phonetic Similarity: Delhi High Court Grants Relief To 'INDI' Measuring Tapes Manufacturer Against 'INDEED' Mark

The plaintiff FMI Limited, submitted that it is the largest manufacturer of measuring tapes, spirit levels measuring wheels in the Indian sub-continent and also that is well-established in over 60 countries.

FMI stated that it adopted the trademark 'INDI' in 2015 and has registered other formative marks. It stated that it advertises its goods in various e-commerce websites such as Amazon and IndiaMart. It stated that its sales figures for FY 2022-23 and 2023-24 was Rs.67.85 crore, 76.63 crore respectively.

The defendant Midas Touch Metalloys Pvt. Ltd., is involved in an identical business of, manufacturing of measuring tapes, measuring instruments and hand tools.

It is stated that in July 2024, FMI came to know that the defendant launched a range of measuring tapes under the 'INDEED' mark and bearing an identical trade dress.

FMI submitted that the defendant not only used a deceptively similar trade mark, but also used the same colour combination / trade dress as that used by it.

On August 28 2024, the High Court had issued temporary injunction in favour of FMI, restraining the defendants from selling or dealing with the goods bearing impugned marks.

In the present application, Justice Amit Bansal was of the view that a case of passing off was made out against the defendant.

The Court noted that the INDEED mark was structurally similar to FMI's INDI trademark. It also noted that both the marks were phonetically similar.

It further noted that the defendant applied for the registration of the impugned mark in November 2023 and only launched its products under the mark in July 2024. It observed that the FMI's sales figures were significant compared to the defendant's, which provided the sales figures for only July and August 2024.

The Court said that FMI was a senior user of the mark and that it established its goodwill and reputation over its INDI mark.

FMI's counsel argued that the defendant has been selling its measuring tapes under various other marks such as Cubit, Auto Lock and Digitape and thus there was no reason for it to adopt the INDEED mark, which is deceptively similar to theirs.

On the other hand, the defendant's counsel contended that it adopted the mark to emphasize that it is providing superior quality products at affordable prices.

However, the Court was not satisfied with the defendant's reasoning and said that the defendant lacked bona fide.

It noted that the defendant even adopted an identical colour combination of blue and white as used by FMI. It also noted that the other measuring tapes of the defendant do not have the same colour combination.

With respect to the INDI marks of the FMI, the defendant contended that FMI cannot have exclusivity over the word 'INDI' which is a short form for 'India'.

However, the Court did not accept this explanation and said, “I am unable to accept the submission of the defendant that the mark 'INDI' used by the plaintiff is shortened version for 'India' or 'Indian'. In support of this contention, the defendant has referred to the results generated through artificial intelligence alone, and no reliance can be placed on the same.”

The defendant further contended that it uses the mark 'SCOTTS' in conjunction with the 'INDEED' mark and thus the impugned mark is a sub-brand. It said that this would separate the impugned mark from INDI mark;

Rejecting this contention, the Court observed that it is immaterial whether a mark is a brand or sub-substandard under the Trade Marks Act.

The Court thus held that a prima facie case of passing off was made out.

It said that as the marks are phonetically, visually and structurally similar and are used by the parties with respect to identical goods, it would likely cause confusion and deception among the consumers.

Therefore, the Court made ex-parte ad interim order absolute and restrained the defendants from selling, displaying, or advertising measuring tapes and allied goods with the impugned mark or any other deceptively similar mark.

Case title: FMI Limited vs. Midas Touch Metalloys Pvt. Ltd. (CS(COMM) 721/2024 with I.A. 37456/2024)