Bombay HC restrains Chrome21 India from infringing Hind Rectifiers’s mark ‘HIRECT’; declares ‘HIRECT’ as a well-known trade mark.

The rival marks are structurally, phonetically, and visually identical and/or deceptively similar when compared as a whole and the word ‘HIRECT’ is the important, prominent, and essential feature of the plaintiff’s registered mark.

In the present case, plaintiff sought an injunction restraining defendants from infringing plaintiffs registered trade mark ‘HIRECT’ and passing of the impugned mark ‘HIRECT’ as that of plaintiffs registered trade mark. A Single Judge Bench of R.I. Chagla, J., held that till final disposal of the present suit, defendants were restrained from infringing the registered device marks in Classes 9 and 35, by use of the impugned domain name/website ‘www.hirect.in’ and/or ‘www.hirect.us’ and/or any other mark and/or domain name identical and/or deceptively similar to the registered marks of plaintiff.

Plaintiff, a public limited company incorporated under the Companies Act, 1956, was in collaboration with Westinghouse, Brake & Signal, U.K.D. Plaintiff’s business included but was not limited to electronics, railway transportation, power, telecommunication, steel non-ferrous metals, cement, chemicals, metal finishing, etc., and was also engaged in the business of developing, designing, manufacturing and marketing power semi-conductors, power electronic equipment, and railway transportation equipment. Plaintiff was also engaged in the business of developing and/or selling software in relation to its business. Plaintiff stated that Indian Railways were its primary clients and 85%-90% of the Revenue generated by it was either through the supply of products directly to the Railways or to private parties who in turn supply the product to the Railways. Plaintiff coined and adopted the mark HIRECT, around 1961, by a unique combination of its corporate name HInd RECTifiers. Plaintiff also created and adopted a logo using its distinctive ‘HIRECT’ mark for which registration in class 9 was secured under the provisions of the Trade & Merchandise Act, 1958 (now the Trade Marks Act, 1999) (‘the 1999 Act’). Since 1961, plaintiff was the registered proprietor of the mark ‘HIRECT’ in classes 9 and 35 and in 1972, plaintiff secured registration for its mark in class 9 of the 1999 Act. In 2014, plaintiff cause slight change in the earlier logo ‘HIRECT’ and adopted a logo , the primary feature of which was ‘HIRECT’. On 30-10-2021, plaintiff filed two trade mark applications for the word mark ‘HIRECT’ in classes 9 and 35, with claim of use since 01-02-1961. On 28-09-2022, the two applications secured registration.