The case involves a trademark dispute between Automatic Electric Limited (plaintiff) and R.K. Dgawan & Anr. (defendants) regarding the alleged infringement and passing off of the plaintiff’s registered trademark “DIMMERSTAT.” The plaintiff sought a permanent injunction against the defendants from using the allegedly deceptively similar mark “DIMMER DOT” for variable voltage auto transformers. The case highlights key issues related to trademark exclusivity, genericness, and deceptive similarity under the Trade and Merchandise Marks Act.

• Factual Background:
  • The plaintiff, Automatic Electric Limited, adopted the trademark “DIMMERSTAT” in 1945 for its variable voltage auto transformers.
  • The mark was registered under Trade Mark Registration No. 178464 dated 14.02.1957 in Class 9.
  • The plaintiff extensively advertised its product and claimed to have built substantial goodwill.
  • Produced sales invoices from 1976-1982 and 1985-1994 as proof of continuous usage.
  • The defendants, R.K. Dgawan & Anr., adopted the mark “DIMMER DOT” for their variable voltage auto transformers.
  • The plaintiff alleged this mark was deceptively similar and likely to cause confusion.
  • Filed a suit seeking an injunction to restrain the defendants from using “DIMMER DOT.”
• Procedural Background:
  • The plaintiff filed an application under Order 39 Rules 1 & 2 of the Code of Civil Procedure for an interim injunction.
  • On 9.11.1994, the Delhi High Court granted an ad-interim ex parte injunction against the defendants.
  • Defendants filed an application under Order 39 Rule 4 to vacate the injunction.
  • The case was heard on interim reliefs sought by both parties.
• Issues Involved in the Case:
  • Whether the use of “DIMMER DOT” constituted trademark infringement under Sections 28 and 29 of the Trade and Merchandise Marks Act?
  • Whether “DIMMERSTAT” was distinctive and entitled to exclusive protection?
  • Whether “DIMMER” was a generic or descriptive term?
  • Whether the plaintiff could claim monopoly over the term?
  • Whether there was honest concurrent use by the defendants?
  • Whether the plaintiff’s delay in legal action amounted to acquiescence?
• Submissions of the Parties:
  • Plaintiff:
    • Registered trademark “DIMMERSTAT” conferred exclusive rights under Section 28.
    • Section 29(1) states that use of a deceptively similar mark constitutes infringement.
    • “DIMMERSTAT” and “DIMMER DOT” share an identical prefix, causing consumer confusion.
    • No disclaimer on “DIMMERSTAT” registration, meaning exclusive rights included “DIMMER.”
    • Defendants falsely represented their mark as registered, violating Section 81.
    • No delay or acquiescence as the plaintiff learned of the defendant’s use in April 1994.
  • Defendants:
    • “DIMMER” is a generic term referring to variable voltage transformers.
    • Under Section 9(1)(d), generic words are not eligible for trademark protection.
    • The plaintiff was aware of the defendant’s use for over a decade but failed to act.
    • Defendants had used “DIMMER DOT” since 1980 and developed independent goodwill.
    • Technical customers were unlikely to be confused.
    • Different product packaging reduced the likelihood of confusion.
• Discussion on Judgments Cited by Parties:
  • Plaintiff relied on:
    • Kaviraj Pandit Durga Dutt Sharma vs. Navratna Pharmaceutical Laboratories, AIR 1965 SC 980.
    • Amritdhara Pharmacy vs. Satya Deo Gupta, AIR 1963 SC 449.
    • Accurist vs. Accutron, (1966) RPC 152.
    • Turbo Torch vs. Turbogaz, (1978) RPC 206.
    • Other supporting cases: Alka Seltzer vs. Alka Vescent (1950), Pill Bond vs. Plyopher (1951), Star Mist vs. Stardust (1951), Marie Elizabeth vs. Maria Lisette (1937), and Univocal vs. Unimac (1979).
  • Defendants relied on:
    • Abercrombie & Fitch Company vs. Hunting World, Inc., 189 USPQ 759.
    • J.R. Kapoor vs. M/s. Micronix India, 1994(3) SCALE 732.
• Reasoning and Analysis of the Judge:
  • The plaintiff’s mark “DIMMERSTAT” was registered without a disclaimer.
  • “DIMMERSTAT” as a whole was a distinctive mark.
  • The defendants’ mark “DIMMER DOT” was deceptively similar.
  • The defendants registered “DIMMER DOT” in Australia, contradicting their generic claim.
  • The plaintiff’s delay in filing suit was not inordinate.
  • Honest concurrent use was not established.
• Final Decision:
  • The court made the ad-interim injunction absolute.
  • Defendants were restrained from using “DIMMER DOT” or any similar mark.
  • Plaintiff’s injunction application (I.A. No. 8609/1994) was allowed.
  • Defendants’ application to vacate the injunction (I.A. No. 10285/1994) was dismissed.

Law Settled in this Case: A registered trademark without a disclaimer covers the entire mark, including individual components. The first syllable of a trademark is often the most significant in assessing deceptive similarity. A mark that is not purely descriptive and has acquired distinctiveness is entitled to protection. The use of a deceptively similar mark constitutes infringement even if part of the mark has descriptive elements. Delay in bringing a suit does not necessarily amount to acquiescence unless the delay is inordinate and prejudices the defendant. Claiming a generic defense is not valid when the defendant itself seeks proprietary rights in a similar mark.

Case Title: Automatic Electric Limited vs R.K. Dgawan & Anr.
Date of Order: 6 January 1999
Case No.: Suit No. 2136/1994
Neutral Citation: 1999 IAD (Delhi) 603, 77 (1999) DLT 292
Court: Delhi High Court
Judge: Hon'ble Judge Shri Dr. M.K. Sharma

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Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539