LARSEN AND TOUBRO LTD.

v LACHMI NARAIN TRADES AND ORS 2015 (64) PTC

386 (Del)
Word Count:2495

AA

Abstract
1. The present case dealt with the concept of deceptive similarity between two trademarks.
The dispute arose over the use of mark LNT/ ELENTE by the defendant. The plaintiff
contended that the mark was similar to its mark L&T. The Court held that the chances of
confusion and deception between the two marks are apparent. It opined that the mark
used by the defendant was deceptively similar to the plaintiffs mark.

Introduction
2. The judgement in this case dealt with the concept of passing off in addition to covering
the main issue of deceptive similarity. A trade mark is taken to be deceptively similar to
another trade mark if it so nearly resembles that other trade mark that it is likely to
deceive or cause confusion. Passing off is a common-law tort, which is used to enforce
unregistered trademark rights. The law of passing off prevents one person from
misrepresenting his goods or services as that of another.
Facts
3. The plaintiff, Larsen and Tourbo Ltd, is a company carrying on business as Engineers,
Construction Contractors, Manufacturers of switch gears, since 1938. The plaintiff is also
known by the short name L&T. These words have been associated with the plaintiffs by
the public. The name has acquired distinctiveness in respect of the goods and services
provided by the plaintiff.
4. The plaintiff had formed several subsidiary companies named LTM Limited, L&T
Finance Limited, L&T Inforcity Limited etc. The plaintiff had, over the years, extended
its activities and diversified its business. These diverse businesses carried out across the
country had made the plaintiff a household name. The plaintiff claimed that the goods
and services under the business names of L&T had a reputation of superior quality.

5. The plaintiff enjoyed a high market capitalization and the plaintiffs shares have
substantial value on the various stock exchanges. The goods and services of the plaintiffs
had been advertised extensively in both print and visual media. They had incurred
tremendous advertisement expenses to promote their activities and products. Further the
plaintiffs had registered the marks LARSEN AND TOURBO and L&T under various
classes.
6. The defendants had started their family business as Lachmi Narain Stores in 1952 and
had started another business as Lachmi Narain Trades in 1998. The defendants had
applied for the registration of their trademark LNT in 2001. Subsequently, they sold
electric miniature circuit breaker, rotary switches etc under the brand name LNT. The
plaintiff learnt of the defendants brand name LNT in 2003. They gave the defendants a
cease and desist notice, restraining them from using the mark LNT for their electrical
goods.
7. In the cease and desist notice, the plaintiff claimed that the mark LNT would lead the
consumers to associate the products with the plaintiff. Consequentially, the defendants
justified their adoption of the mark LNT as bonafide, in their reply to the notice. As a
result of that the plaintiff had filed a suit of infringement against the defendants.
Contentions of the plaintiff:
8. The plaintiff contended that the word/abbreviation L&T had acquired a secondary
meaning and was associated exclusively with the plaintiff. The name and the stylized
form had been exclusively and extensively used by the plaintiff over 50 years in India.
They claim that the use of the mark in any form would lead to convey a connection to the
plaintiff. They contend that the use of the mark LNT by the defendants is with an
intention to mislead the consumers.
Contentions of the defendants:
9. The defendants, on the other hand, claim that they have only used the abbreviated form of
its firm name LNT for its brand name. They state that since the launch of the products,
extensive advertisements have been carried out in the companys name. They, further,
contend that the brand name LNT/ELENTE is not similar to the plaintiffs mark L&T. It

is also contended that the defendants products are entirely different from that of the
plaintiff. Hence, there is no similarity or deception on part of the defendants.
Courts Findings
10. The main issue raised in this is that of deceptive similarity between the marks. Section
2(1)(h) defines deceptive similarity as follows: A mark shall be deemed to be
deceptively similar to another mark if it so nearly resembles the other mark as to be
likely to deceive or cause confusion. A trade mark can be refused registration because of
its identity with an earlier trade mark and similarity of goods. Such similarity trademarks
and their goods and services can lead to a likelihood of confusion.
11. The main issues with regard to deceptive similarity are the likelihood of confusion and
consumer deception. The bonafide intentions of the defendants do not completely alter
the applicable principles. The objective facts of unfair competition and injury to plaintiffs
business acts as determinants. If the public is likely to be confused and deceived, the
honesty of the defendants intention are of little consequence.
12. In the case of Montblanc Simplo-GMBH v New Delhi Stationery Mart,1 Delhi High Court
held that since both the marks are used in respect to identical goods, this court, then needs
to determine whether the defendants adoption is likely to cause confusion in the minds of
the public. It is not necessary to prove actual confusion or damage, it is sufficient if
likelihood of confusion is established.

13. The backbone of likelihood of confusion rests on two elements. These are: 1) prior use of
the opponents trademark; 2) the use and reputation of the opponents trade mark in the
market.2 In order to conclude deceptively similar to another the broad and essential
features of the two are to be considered.3

1 (2008) 38 PTC 59 (Del)

2 Poonam Electricals v. Ranjit Electronics, 2003 (26) PTC 284 (Reg);
3 AIR 1979 Mad, 157

14. Whenever two marks are identical, there is a prima facie case of infringement due to
confusion. But there are situations where the marks are not identical but are nearly
similar. In those cases, the plaintiff has to establish that the mark is identical enough to
cause confusion in the minds of the buyer and hence would be misleading. There needs to
be an element of resemblance, so strong to cause a deception in the minds of the buyers.
The ultimate judge of similarity is the consumers who would be mislead into
distinguishing between two marks and hence failing to compare the two.4
15. In the case of Amritdhara Pharmacy v Satya Deo5 , the Supreme Court observed that for
deceptive resemblance it is pertinent to consider: 1) who are the persons whom the
resemblance must be likely to deceive or confuse; 2) what rules of comparison are to be
adopted in judging whether such resemblance exists.
16. The Supreme in Corn Products Refining Co.v. Shangrila Food Products Ltd. 6 held that
The question whether two competing marks are so similar as to be likely to deceive or
cause confusion is one of first impression and it is for the Court to decide it. The question
has to be approached from the point of view of a man of average intelligence and
imperfect recollection.
17. In the case of Hiralal Prabhudas v Ganesh Trading Corp. 7, the court held that marks are
remembered by the general impressions or by some significant detail rather than by a
photographic recollection of the whole. Overall structure, phonetic similarity and
similarity of idea are important and both visual and phonetic test must be applied. In
addition, the nature of the commodity, class of the purchasers, the mode of purchase and
other surrounding circumstances must also be taken in consideration

4 Supra Note 1.
5 AIR 1963 SC 449.
6 AIR 1960 SC 142.
7 AIR 1984 Bom 218.

18. In J R Kapoor v Micronix India8, the plaintiffs and the defendants were manufacturing
and selling electronic goods. The plaintiff, using the trademark MICRONIX sought
injunction against the defendants mark MICROTEL. The Supreme Court held that the
word micro has equal relevance in describing both the products. The visual impression
of both the products was different. Thus, the Court held that there was no likelihood of
confusion.
19. In the case of Emcure Pharmaceuticals Ltd. Vs. Corona Remedies Pvt. Ltd; the Bombay
High Court held that The test for deceptive similarity, is to juxatopose the two marks
and then ask what might the likely effect on the mind of a person of average intelligence
and imperfect recollection? Where the entire mark is incorporated in the rival mark,
deceptive similarity is established.
20. The Delhi High Court, in a case held that where both the good were of different
description and the classes of customers were different, deception cant be attributed in
adoption of a mark9. However, in a case where the manner of writing on the product was
identical, the marks were held deceptively similar.10In assessing whether confusion or
deception is likely, the Courts have attached importance to the question whether the
defendant can be shown to have acted with a fraudulent intent.11
21. In Pidilite Industries Pvt Ltd v Mittees Corpn 12, the Court held that It is always a
question of fact in each case whether the deception or confusion is likely to be caused or
not by the use of the impugned mark; the court has to put itself in the position of an
average consumer and ask a question whether there is likelihood of deception or
confusion or not and then answer the question on that basis.

8 (1994) Supp 3 SCC 215

9 OP Mahajan v Hero cycles Ltd, 1999 PTC 23 Del.
10 Banik Rubber Industries v KB Rubber Industries, AIR 1990 Cal 225.
11 SBL Ltd., v Himalaya Drug,(1987) 67 DLT 803.
12 AIR 1989 Del 157

22. In the case of K.R Chinna Krishna Chettiar v. Sri Ambal & Co. 13, the Supreme Court held
that ocular comparison between the marks was not always the decisive test. The
resemblance between the two marks must be considered with reference to the ear as well
as the eye. The Court stated that there was striking similarity and affinity of sound
between the contentious marks AMBAL and ANDAL. It was held that there was a real
danger of confusion between the two marks. In another case, the court found the mark
RUSTOM deceptively similar to the trademark RUSTON.14
23. For deciding the question of deceptive similarity, the Delhi High Court laid down the
following factors in M/s Biofarma v Sanjay Medical Stores:15 i) the nature of the
marks, i.e. whether the marks were word marks, label marks or composite marks; ii) the
degree of resemblance between the marks, phonetically similar, hence similar in idea; iii)
the nature of the goods; iv) the similarity in performance of the goods of the rival traders;
v) the mode of purchasing the goods.
24. The Delhi High Court in United Biotech Pvt. Ltd v Orchid Chemicals & Pharmaceuticals
Ltd.16 , while relying on various precedents, culled out the following rules to compare two
marks: 1) meticulous comparison not the correct way; 2) mark must be compared as a
whole; 3) first impression; 4) prima facie view not conclusive; 5) structural resemblance;
and 6) similarity in idea to be considered.
25. For deceptive similarity, the resemblance must be such as to be likely to deceive or cause
confusion. Each case depends on its own facts and circumstances. The degree of
similarity of the two marks should be seen in sight and sound and the salient features or
idea behind the mark have to be considered. The mark should be seen from the point of
view of the whole range of potential customers for the goods protected by the registered

13 AIR 1970 SC 146

14 Ruston & Hornby Ltd v Z Engineering Co, AIR 1970 SC 1649.
15 1997 PTC (17) 335.
16 2012 (50) PTC 433 (Del) (DB)

mark. It should not be limited to just the customers for goods for products marked by the
defendant.17
26. In consideration of the precedents laid down, it is apparent that the rival marks are
deceptively similar. The defendants mark, on being compared with the plaintiffs marks,
bears an overall similarity. Phonetically, the resemblance between the marks is identical.
Furthermore, due to the diverse range of products of plaintiff, the customers may
associate the products of the defendant with the plaintiff. In the light of this, relief in the
form of a permanent injunction ought to be provided to the plaintiff.
Held
27. If it is shown that a business of a trader had acquired a distinctive character, the law will
restrain a competitor from using the same. It stated that a prohibition order can be passed
by the Court for such unlawful activities. The Court observed that a must be drawn
between honest and dishonest trading, between fair and unfair competition. One cannot
make use of the plaintiffs expensive labour and effort.
28. It is a common practice to use letters to indicate the range of products of a manufacturer.
When placing orders, such letters are referred to for identifying an item. The use of such
letters may result in passing off it they refer to plaintiffs goods. Where the letters are not
descriptive of any feature of the plaintiffs good but if the plaintiff satisfies the Court, the
case of passing off is made out.
29. While comparing the rival marks, the Court relied on several precedents such as B.K
Engineering Co. v Ubhi Enterprises & Anr 18, where it was held that A fair and honest
trader will not give misleading name to his product to the continuing detriment of a
plaintiff who has built up his goodwill in the business after years of hard work for
example, 13 or 14 years. It is this intangible right to property which the law seeks to
protect.
30. While analyzing the marks, the Court observed that on the side-by-side comparison of the
rival marks, the similarity of the marks was evident. The Court held that the chances of
confusion and deception between the two marks are apparent. It opined that the mark
17 Sri Pattatharasiamman Textiles v A Lakshmanan, 2009(41) PTC 427 (Mad).
18 AIR 1985 Delhi 210

used by the defendant was deceptively similar to the plaintiffs mark. In the light of this,
the Court decreed the suit in favour of the plaintiff. It, further, granted a permanent
injunction against the defendant restraining the use of the mark in relation to their goods.
Conclusion
31. In the instant matter, the plaintiffs mark had acquired distinctiveness through its wide
spread use across the country. The prima facie examination of the rival marks showed
minute similarities. However, the consideration of the marks on the factors such as
phonetical similarity, the range of products and the potential customers, prove deceptive
similarity. The Court has rightly granted the injunction, while considering the irreparable
damage to the plaintiff due to the use of a deceptively similar mark.