Case Note: Hawkins Cookers Limited v Murugan Enterprises

By Teesta Lahiri, National Law University, Odisha.

I. A Basic Introduction to Trademarks and Passing Off

For us, beginners at IP, before we proceed further to deal with a landmark judgement in the Trademarks Jurisprudence in India, it is essential that we become slightly better acquainted with two terms, ‘Trademarks’, the chief bone of contention and ‘Passing Off’, the contention.

The Trademarks Act of 1999 defines a trademark as a mark (and marks have been defined to include device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof) that is capable of being represented graphically and is equally capable of helping to distinguish between the goods of one person, from the other. Hence, any graphical representation-pictorial or lexicographical can be a trademark, as long as it is being used by a company/brand to distinguish its product/s from those of the others.

The utility of course, is that, when a consumer sees a trademark on a good, he can immediately associate the product to its source and accordingly attach it to the goodwill its producers have.

Now coming to infringement and passing off of trademarks, ‘Infringement’ of a trademark generally occurs when a person other than the registered owner of the trademark uses the identical or a confusingly similar mark without the person’s authorization, a statutory offence under the Trademarks Act (sections 29-30). While ‘passing off’ a trademark is essentially the same thing, it also gives a broader protection to non-registered trademarks as well. In both cases, the law aims to protect the goodwill of the company attached to the mark to stop any other person from exploiting the same.

Several things are considered while looking at an Infringement suit; the likelihood of confusion between the marks used, and deception, are however the primary things depending upon the nature of the mark, the resemblance between the marks in question, the nature of the goods each mark applies to, to see if there is really an attempt by the infringer to bank upon the goodwill of the trademark owner.

II. Hawkins Cookers v Murugan Enterprises [MIPR 2008 (1) 128, 2008 (36) PTC 290 Del.]: The Basic Facts

Hawkins Cookers Limited are the proud registered owners of the trademark “Hawkins”, in respect of Pressure Cookers, and all parts thereof, including Gaskets, and as far as pressure cookers are concerned, is a renowned and reputed brand.  This is how their trademark looked.

Murugan Enterprises, the respondents were manufacturing pressure cooker gaskets and selling them under the Trademark ‘MAYUR’. The grievance of the appellants however pertains to the fact that the gaskets were sold in packages which contained the words ‘suitable for HAWKINS pressure cookers,’ emphasizing upon the word Hawkins, by printing it in red, in contrast to the other words printed in black.

The Appellants contented, this was an infringement of the appellants’ trademark, as the gaskets were suitable for any pressure cooker manufactured by any manufacturer and has no special relation to Hawkins. Hence, the specific usage of the word Hawkins is done by the respondents to pass off their product under the Hawkins goodwill.

However, the Single Judge Bench rejected the appellant’s plea, stating that it was not an infringement as the usage of the word ‘Hawkins’ was only to indicate that the Murugan gaskets were capable of being used in ‘Hawkins’ Pressure Cookers and not to indicate any connection of their company to the trade of Hawkins.

III. Arguments in the Court

The appellant pleaded, that the Judge had not taken note of the fact that the gaskets built by the respondents could be used for all pressure cookers of a said dimension, so it was not necessary for them to indicate the name of ‘Hawkins’ in their packaging. In fact, before the Single Judge Bench, the appellants had pleaded against the singling out of “Hawkins”, as an attempt to take advantage of their trademark by the respondents.

The defendants had however pleaded before the aforementioned Bench that they already had their own trademark, and a good booming business, and had no reason to infringe the Hawkins trademark, but had only used it in their packaging to indicate “an essential information to the customers so that they can select an accessory of a particular specification, which is suitable for the main article”. This, they said, would fall as an exception under Section 30(2)(d) of the Trademarks Act, which provides for the use of a trademark, ‘if reasonably necessary’, in order to indicate adaptability of goods or services, and not to indicate any business or other connection between the two products/companies using the two marks.

IV. The Decision of the Single Judge Bench

The Single Judge Bench of the Delhi High Court relied upon several Indian decisions and heavy reliance was placed upon the English case of  Aktiebolaget Volvo and Anr. v. Heritage (Leicester) Limited[1]. The plaintiffs and defendants of the said case had previously been associated, as the defendant was an authorized VOLVO dealer. After such dealership was revoked, the defendants started using the VOLVO Trademark with a prefix and suffix, both printed so small and insignificantly, that they would hardly garner any attention. The objective of the defendants was held to be clear in the case; they wanted to indicate a definite connection between the two marks. The Court held that it fell squarely within the parameters of the defendants trying to take unfair advantage of the goodwill attached to the plaintiffs’ mark. The Court also laid down the test of honesty for the purposes of infringement, and honest intention of the infringer was to be judged from the objective facts of the case.

Applying the said test, it was felt by the Single Judge Bench that since the defendants prominently displayed their own trademark and only used the word Hawkins on the back of the packaging, which otherwise amply indicated that it was manufactured and sold by Murugan enterprises under the trademark “MAYUR”, the defendant was not trying to take advantage of the plaintiff’s trademark, and the use of the plaintiff’s trademark was ‘reasonably necessary’ to indicate its suitability to Hawkins pressure cookers and fell squarely under the exception of Section 30(2)(d) of the Trademarks Act.

V. Overturning of the Decision: What is ‘reasonably necessary’?

The Division Bench looked into the wording of Section 30(2)(d) of the Trademarks Act and held that in order for it to be ‘inherent in the situation to be just’ [2], if the defendants had used the plaintiff’s trademark to indicate the fact that their product was solely suited for use in Hawkins Cookers and was thus specifically manufactured for that purpose, and that the exception of Section 30(2)(d) did not apply if the goods of the defendant could be widely used for a number of products or were adaptable to be used in a number of products, out of which only the products of the plaintiff have been singled out and mentioned in the packaging.

The defendants further went on to represent, in front of the Single Judge Bench, that their produced gaskets were only suitable to be used in Hawkins Cookers, and the Judge had taken a note of it in Para 64 of his decision. However, it was seen that factually, it wasn’t the case. The gaskets produced could, in fact, fit any pressure cooker produced by any company, as long as they were manufactured using the standard dimensions. Moreover, the learned Single Judge had also not taken notice of the fact that the word Hawkins was mentioned in a more prominent font in comparison to the other words used in the same sentence, on the packaging.

Keeping these two points in mind, the Division Bench impugned the decision of the Single Judge Bench and held the defendants responsible for infringement of trademark, asking the defendants to discard the offending packaging within three months, and to indicate that their gaskets were suitable for all pressure cookers available in the market, without targeting a single brand to avoid future troubles.

VI. Takeaways From the Case

Remember, to claim the Section 30(2)(d) exception under the Trademarks Act of non-brand use of another’s trademark, you must prove the following:

  • You have only used the trademark to show that your product is adaptable to be used only with the other specified product, bearing the said trademark.
  • You have used the trademark, for it was ‘reasonably necessary’ to indicate to the consumers the above mentioned fact.
  • You have not singled out any trademark to link with your product, just for the purpose of getting a free-ride on its goodwill.

[1]  [1999] All ER (D) 478.

[2] Para 13 of the judgement in Hawkins Cookers v Murugan Enterprises at https://indiankanoon.org/doc/58972673/

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