Speaking of common trade practice among automobile spare part manufacturers, in Elofic Industries Limited & Anr vs Mobis India Limited & Anr, the Plaintiffs (two entities of Elofic Industries) manufactured spare parts such as air filters used in cars, and prominently used the Defendants’ (Mobis India and Hyundai India) trademarks on the packaging of their products, without any authorisation of the Defendants. Thus, the packaging of Plaintiffs’ air filters would mention words such as “Suitable for Hyundai Sonata” or “Suitable for Hyundai Accent” etc. The Court vide judgement dated 25th October 2018 directed that plaintiff shall substitute the words “Suitable for” with the words “Adapted to form part of” in a similar font and in the same place on the packaging. The plaintiffs were also directed to mention “WE HAVE NO TRADE CONNECTION WITH HYUNDAI” immediately below the words “Adapted to form part of”.
On similar facts, in Mahle Filters System Private Limited vs Mobis India Limited, the judgement of Elofic Industries (supra) was taken into account and the Plaintiff who being the exclusive licensee in India of the trademarks “MAHLE” and “PUROLATOR” and manufacturing and selling automobile and industrial filters including oil and air filters, was directed by the Court vide judgement dated 20th December 2018 to substitute the words “Suitable for” with the words “Adapted to form part of” in similar font and in the same place on the packaging. They were also directed to mention “WE HAVE NO TRADE CONNECTION WITH HYUNDAI” immediately below the words “Adapted to form part of” preceding the trademark/trade name and/or brand of the defendants shall endorse in the same font.
These judgements hold that if there is even an ‘iota of doubt’ that the use of the registered trademark in relation to goods being adapted indicates a trade connection with the proprietor of the registered trademark, it cannot be said to be “fair use” within the scope of Section 30(2)(d) of the Trade Marks Act.