General Electric Company vs Vicky Enterpises And Ors.

Manmohan Singh, J

The Petitioner has filled the rectification petition for removal of Registration No. 1690918 in class-9. It is stated by the petitioner that impugned

registration is an entry made without sufficient cause and/or is an entry wrongly remaining on the Register and/or is an entry made by reason of an

error or defect within the meaning of Section 57 of the Trade Marks Act, 1999 (herein after referred as 'Act' and the same is liable to be rectified on

this basis.

The Scanned copy of the two marks of the petitioner and respondent are reproduce herewith-

The main legal grounds raised by the petitioner are as under:-

I. That the impugned registration and/or its use is liable to be prevented by virtue of the law of passing off protecting an unregistered trade mark used

in the course of trade and by virtue of law of copyright within the scope and meaning of Section 11(3)(a) & (b) of the Act.

II. That the impugned registration is in blatant violation of section 11(1) of the Act, that is to say, its use is of such nature as to create confusion

amongst the public leading to false association with the Petitioner's well-known

trademark (hereinafter referred to as the GE Monogram).

III. That, the impugned registration and/or its use will be in violation of section 9(1)(a) of the Act, being a trade mark devoid of any distinctive

character, that is to say, not capable of distinguishing the goods/services of the registered proprietor from those of the Petitioners

IV. That the impugned registration and/or its use is of such nature as to deceive the public or cause confusion within the absolute prohibition of section

9(2)(a) of the Act

V. That the impugned registration was applied for in bad faith within the meaning and scope of section 11(10)(ii) of the Act, adversely affecting and

prejudicing the petitioner's proprietary rights to the well-known GE

No Counter-Statement has been filled by the respondent. The case of petitioner has gone rebutted. Still the petitioner is to be decided on merit.

Few facts are that the:-

Petitioner is the world's second largest company and a multi-national conglomerate carrying on internal reputed businesses on its own and through its

affiliate companies Towards its businesses, the Petitioner participates in a wide variety of markets including generation, transmission, and distribution

of electricity, lighting, industrial automation, medical imaging equipment, motors, railway locomotives, air craft jet engines, aviation services, financial

services, and healthcare.

The Petitioner is currently one of the biggest players in the wind power industry, and it has also developed new products with reduced

environmental impact such as hybrid locomotives, desalination and water reuse solutions and photovoltaic cells.

• In connection with its established and renowned reputed businesses world-wide, the Petitioner is the legitimate proprietor and owner of the well-

known trademarks GE(word per se) and (hereinafter referred to as 'GE Monogram'). Both GE Mark and GE Monogram are collectively

referred to as 'GE marks' herein after.

• According to one study, the said marks are considered to be one of the most famous logos in the world, which, the Petitioner owns and uses

worldwide. In addition, the letters G and E are the abbreviation of the Petitioner's trading style i.e. GENERAL ELECTRIC and is commonly known

and referred to as 'GE' around the world by the public at large. In India the Petitioner has registrations for the GE marks, the earliest dating back to

the year 1942 (precisely dated 23.12.1942).

• HISTORY AND EVOLUTION OF GE MONOGRAM - The GE Monogram was created in the year 1892. Over time, a circle engulfing the

stylized letters GE has been added to the monogram, due to the increasing global presence and vision of the Petitioner. The current logo, which was

designed by Wolff OlMs, adds blue color to the monogram instead of the black color which had been used in all the previous versions. For

convenience, the evolution of the GE Monogram has been displayed below:

• The earliest trade mark registration for the original version of the GE Monogram logo was filed on July 24, 1899 in the United States and

registered on September 18, 1900 under U.S. registration number 0035089.

• WORLDWIDE PRESENCE AND REPUTATION: The Petitioner serves customers in more than 100 countries and employs roughly 300,000

peoples worldwide. The Petitioner is composed of a number of primary business units or businesses. Each business is itself a vast enterprise, many of

which would, even as a stand-alone company, rank in the Fortune 500. To name a few -- GE ENERGY, GE AVIATION, GE HEALTHCARE, GE

APPLIANCES & LIGHTING etc.

• The letters GE is the abbreviation of the Petitioner's trading style, which has been adopted and used since the inception in 1892, and continuous till

date. The GE marks has over the years come to be exclusively associated with the Petitioner and its businesses alone and in particular, has become a

household name. Consequently, the same has acquired the significance of a 'well known mark'.

• GE marks are registered and/or applied for in various jurisdictions of the world -- ANNEXURE A2.

• GE brand is considered the second most powerful brand in the world worth USD 71.4 billion. List of top 100 most powerful brands 2011-

ANNEXURE-A3. The Inter-brand surveys consistently rank GE marks as one of the world's best and most valuable global brands-ANNEXURE-A4.

• Worldwide revenues for General Electric and its subsidiaries since 1990 are as follows:-

• In 2004, Petitioner was named number one company for employers and employees on the Forbes 500 Global Player list. Over the years the

Petitioner has received several awards honoring them for their accomplishments, values and reputation - ANNEXURE --A7.

• Petitioner was a top-level sponsor of the 2008 Beijing Olympic Games, 2010 Vancouver Olympic Winter Games and 2012 London Olympic

Games.

• REPUTATION IN INDIA - The Petitioner's business in India can be traced back to the year 1902 when the Petitioner installed India's first

hydropower plant - ANNEXURE -- A8.

• In 1997, the Petitioner created a large, educated, English-speaking call center workforce in India called the GE Capital International Services unit.

Today, all of the Petitioner's global businesses have a presence in India in a wide use and range of manufacturing, services and technology through its

various business units i.e. GE COMMERCIAL FINANCE, GE HEALTHCARE, GE INDUSTRIAL, GE INFRASTRUCTURE.

• Petitioner's revenues in India for 2006 (USD 1.6 billion), 2007 (USD 3 billion), 2008 (USD 4.6 billion), 2009 (USD 2.9 billion). It employs over

14,000 employees across India.

• Petitioner has been investing huge sums towards the promotion and advertising of GE marks in various media such as Industry Speak, Business

Today, Financial Express, Business Standard, Hindu Business Line, Hindustan Times-HT Business, Mint, The Hindu, The Indian Express -

ANNEXURE -- A9.

The Courts in India have upheld the fact that the GE marks belonging to the Petitioner are well-known - Two such judgments passed by the Hon'ble

Delhi High Courts - Annexure -- A10. Relevant extracts from General Electric Company v. Altamas Kha & Ors. are reproduced below:-

a. ""the witnesses of the plaintiff have proved the registrations of the trademark GE monogram, GENERAL ET PCTRIC (GE), GE in Class 1, 2, 3, 6,

7, 9, 10, 11, 12 & 17 as Exhibit P-4 to Exhibit P-8. It has further been deposed and which deposition is believed and correct that the name/mark

GENERAL ELECTRIC and the mark GE are as much a household word in India as some of the known Indian trademarks, owing to the involvement

of the plaint. with the growth of infrastructure and amenities in India; that the products of the plaintiff have been well received in India and the plaintiff

has huge sales in this country, that the plaint is involved in a large range of electrical consumer and household goods and has a strong network of after

sales service, back up support, sales promotion etc. in India and all of which adds to the good reputation being enjoyed by the plaintiff.

In General Electric Company v. J. Singh & Ors. 2011 II AD (Delhi) 18], The High Court of Delhi observed that:

a) ""It can hardly be disputed that GENERAL Er. FCTRIC as well GE, whether written in plain letters or in a styled form such as Monogram are well-

known marks of the plaint within the meaning of Section 2(ZG) of Trade Marks Act.

The mark which the defendant used or proposed to be used is a work mark consisting of two letters of English alphabet ""G"" e.7 ""E"". The plaintiff has

only one registration of the word mark GE which is in Category 12, whereas rest of its registrations are of the word mark GENERAL ELECTRIC

and GE (Monogram). The question which comes up for consideration is as to whether use/proposed use of the word mark GE by the defendant

constitutes infringement of a well known mark of the plaintiff. In my view, not only GE (Monogram) and GENERAL ELECTRIC but also the word

mark GE, are the well known marks of the plaint e: Assuming, however, that the word mark GE is not the well known mark of the plaintiff and only

GENERAL ELECTRIC and GE (Monogram) are its well-known marks, use of the word mark GE by the defendant, in my view, would still constitute

infringement of the well-known mark GE (Monogram) of the plaintiff. It is by now settled proposition of law that in order to constitute infringement of

a registered trademark, the impugned mark need not be its absolute replica and it is sufficient to constitute infringement if the impugned mark is

visually, phonetically or otherwise so close to the registered trademark of the plaintiff that it would be considered to be a imitation of the registered

trademark. In fact, the infringer is not likely to use a mark which is absolutely identical of a registered trademark, but would like to make some

changes here and there so that in the event the mark used by him is challenged, he can take a plea that sine his mark was not identical to the mark of

the plaintiff no case of Infringement was made out.

Due to the exclusive proprietary rights and goodwill enjoyed by the Petitioner in the GE marks, the registration and/or use of the impugned logo i.e.

by the Respondent would be likely to deceive and cause confusion in the minds of the public and investment trade in India.

The writing style with similar logo adopted by the respondent is closely similar. The same could not been designed without placing the logo of the

petitioner. Thus, The proprietorship claim was false and tainted.

On placing both the GE Monogram and the impugned mark, side by side(as depicted below) it is evidently clear that the impugned mark has been

inspired and copied from the GE Logo:

Even Otherwise, two sets of letter mark GE and VE are descriptively similar once, it is already established that the mark GE with logo has acquired

goodwill and reputation in the entire world.

The Petitioner's adoption and use of GE marks in respect of its businesses prior to the adoption and use by the Respondent. It was to adopt and

used the same.

The GE marks enjoys an unquestionable reputation which the Petitioner will not allow others to usurp. The impugned registration is nothing but an

imitation of the Petitioner's said reputed GE mark. The claim of respondent on the date of filling of application was not honest.

Before filling of present rectification petition, the Petitioner sent a cease and desist letter dated May 19, 2010 to the Respondent through its

attorney--ANNEXURE--A12. In the said letter, the Petitioner requested the Respondent to remove

the outer circle swirling design and by changing the font -- i.e. from the Respondent's pending trademark application

Nos. 1690916 in Class -- 7,1690917 in Class--11 and the present impugned registration No. 1690918 in Class - 09. The Respondent never responded

to the above cease and desist letter. Accordingly, the Petitioner has been constrained to file the present rectification petition.

It is also a matter of fact the Petitioner has also filled oppositions against the trademark application Nos. 1690916 and 1690917 being DEL-761629

and DEL-761628, respectively. Abandonment orders have been passed -- Annexed along with this written submission.

In view of the above-mentioned facts, the impugned registration No. 1690918 in class-9 in the name of Respondent is removed as the impugned

mark is similar to the well-known mark of the Petitioner is entirely in bad faith. As submitted above, the GE Monogram is an artistic and trendy logo

created and used by the Petitioner since the year 1899 and the Respondent cannot have any valid explanation for such adoption.

The impugned registration by the Respondent is motivated by a mala-fide intention to trade upon and benefit from the enviable reputation and

goodwill enjoyed by the Petitioner in its well known GE Monogram which cannot be permitted.

Thus, the impugned mark which is subject matter of present petition is contrary to law and is removed.

The deputy Registrar is directed to remove the Trade Mark logo vide No. 1690918 in class 9 be remove within 15 days of the receipt of this order.