Case Analysis: Timken Company v. Timken Services Private Limited
Timken Company v. Timken Services Private Limited CS(OS) No.3 of 2010
Facts: The plaintiff, Timken Company registered a suit praying permanent injunction restraining the defendant, Timken Services Private Limited from infringing former’s registered trademark, “Timken”. Timken company, incorporated in the United States of American is the legally registered proprietor of the given trademark, “Timken” and its earliest registration dates back to the 01st June, 1942. Plaintiff also has its trademark registered in some other countries including Canada, New Zealand, Singapore, Australia, The U.K & The U.S. The trademark was adopted by the plaintiff corporate around more than hundred years ago in 1899. Now according to the plaintiff, no other corporate has used this name, Timken in the form of trademark in relation to identical goods and services or the company’s name across the world. In the year 1929, the trademark adopted a particular art work combining a particular font style and orange colour and same has been uniformly used throughout the world.
The trademark, “Timken” used by the defendant, Timken Services Private Limited is conceptually, phonetically and identical trademark to that of the Plaintiff’s. The registration for the trademark was made on the 5th January 2010, post-introduction of the new act which comprised infringement and consequently absolves the plaintiff of the limitations made under Section 159 of Trademark Act. This act of the Defendant has caused dilution of the goodwill, and also the distinct character of the trademark, “Timken”. It further amounts to passing off, deceiving its consumer to believe that its products originate from plaintiff or its subsidiaries.
Questions of Law:
- Whether the balance of convenience lies in the favour of the plaintiff for security against dilution of their brand name?
- Whether the plaintiff has suffered an irreparable injury as a consequence of the infringement of the trademark by the defendant?
Judgement: The Hon’ble Delhi High Court clearly stated that the case clearly lies in the plaintiff’s favour, since the same has made a strong case in reference to the protection for the dilution of their brand name, “Timken”. According to the court, even if the defendant needs to change their name at the point, they would not suffer much since they have only recently commenced the business. Whereas the plaintiff company was as old as 1899 and same also holds a trans-border reputation having a well-known trademark. Now, the court further holds that the defendants can be adequately monetarily compensated on suffering some inconvenience in the suit. However, same is not true for the plaintiff which was likely to suffer the damage by way of dilution of their brand name. Thus, the balance of convenience lies in the favour of the plaintiff.
Now, in order to establish the existence of irremediable injury suffered by the plaintiff, it needs to be stated whether there exists any prima facie case and in the case the balance of convenience lies in the favour of granting an ad interim injunction, the hon’ble court shall assume that in case the ad interim injunction is not granted, irreparable or irremediable injury would necessarily be followed.
Authored By: Adv. Anant Sharma & Aniket Pandey