Author: Himanshu Sharma, 1st year student at Amity law school Rajasthan.
Date of Decision: 2nd March, 2021
Bench: C. Hari Shankar
Original copy: view
Statutes involved: Arbitration and conciliation Act, 1996
BACKGROUND OF CASE:
- Here in this case “Hero Electric vehicles pvt. Ltd. & Hero Exports” (F1) are the plaintiff and “Lectro E-Mobility Pvt. Ltd. & Hero Cycles Ltd.” (F4) are the defendants.
- This dispute covers a “Family Settlement Agreement (FSA), under this FSA Manjul group was divided into four family groups that is F1, F2, F3, F4 and it is required to resolve the dispute in reference with the FSA through arbitration.
- In this division “Hero Exports” (plaintiff no. 2) which earlier belonged to all the members of the Manjul group was transferred to F1 through the FSA.
- At the same time “Trademark and Name Agreement (TMNA)” was executed which granted the rights to use the trademark “Hero” and its variants, with reference to electronic vehicles to F1. Also grants the right to F2-F4
- Hero Exports (plaintiff no. 2) started its business of electric vehicles and launched the battery fitted electric cycle and scooters with the mark “Hero” and “Hero Electrical” in 2007.
- These Trademarks are registered under the Trade Marks Rules, 2002 in 2008.
- On 31st July 2010 the partners of Hero Exports incorporated plaintiff no. 1 as a new company, named as a “Hero Eco Vehicle Pvt. Ltd. (HEVPL)” mainly for the business of electric vehicle. Hero Exports give the licence to use the trademark “Hero” and “Hero Electrical” and this whole company were work under a Hero Exports. Gradually HEVPL become the leading manufacturer of electrical vehicles in India, and under the trademark of Hero exports HEVPL gained immense goodwill as well as reputation.
- Plaint alleged against the Lectro, that Lactro is manufacturing and selling the electric bikes under the brand “Hero” through the Hero electric. According to the plaintiff the it is completely mela fide, the defendant was fully aware about the fact that the Hero Exports has immense right of Trademark “Hero” and “Hero Electrical” who had built up a goodwill and reputation in that regard.
ISSUE IN QUESTION:
- In the given case the first issue is that, whether the defendants (Lectro E-Mobility pvt. Ltd. & Hero Cycles Ltd.) had a right on the trademark of “Hero” and “Hero Electrical” which is registered under “Trade mark rules 2002”.
- And the second issue is, whether the exclusive right of plaintiff over the trademark “Hero” for electric vehicles also include (according to plaintiff) electric bicycles conflict with the defendant’s claim of having a right on the electric bicycles.
- The court stated that the disputes between the parties are nature wise ex-facie, refer from the provision of the FSA and TMNA.
- In the present case, the controversy does not relate to grant, or registration, of trademark, because the trademark earlier on stood grant, and registered, prior to the FSA and TMNA.
- This whole dispute is regarding the right to use the Trademark, in connection with e-cycles that had been assigned, by the TMNA and FSA.
- The said dispute is inter-se between the family groups, pillowed on the rights emanating from the Trade Mark and Name Agreement and Family Settlement Group alleged infraction of the terms of the TMNA & FSA, not of the provisions of Trade Mark Act.
- Court decides according to the above discussion, that it would be appropriate if the petitioner should present the plaint before the Arbitrator and may seek any interim relief under section 17 of the 1996 Act.
- Hence, this suit shall be referred to Arbitration, parties may choose to appoint the Arbitrator in accordance with the covenant of the TMNA and FSA and/or approach the court in this regard.
- In my opinion the court should appreciate the plaintiff, being a registered proprietor in class Ⅻ, had attempted to restrain the defendant from using the trademark “Hero” for electric vehicles, and court neither delved into the query of right in rem or in the personam nor did it assess even-if it’s an action in rem or in personam.
- The court also failed to notice that the exclusive right of plaintiff over the trademark “Hero” for electric vehicles also include (according to plaintiff) electric bicycles conflict with the defendant’s claim of having a right on the electric bicycles.
- The court here also avoided to appraise erga omnes effect that is the implications of the case on the public.