After a prolonged legal battle spanning over 14 years, the Trade Mark Registry has delivered a landmark decision in favor of M/s. Electrical Fittings & Equipment (Madras) Pvt. Ltd., finally bringing closure to a dispute with Eveready Industries India Ltd. On 07/11/2024, the Registrar of Trademarks passed an order upholding the applicant’s rights to the trademark “EVERLITE.” This decision is a testament to the principles of fairness, justice, and the integrity of intellectual property law. It marks a significant victory for our client and our firm, which represented them diligently throughout this dispute.
CASE BACKGROUND
The dispute began when M/s. Electrical Fittings & Equipment (Madras) Pvt. Ltd. filed an application for the registration of the trademark “EVERLITE” on 05/01/2010 under Application No. 1905525 in Class 09. The applicant claimed that the mark had been in continuous use since 01/01/1971. The application was subsequently accepted and advertised in the Trademarks Journal No. 1566-0 dated 10/12/2012.
However, on 01/04/2013, Eveready Industries India Ltd. filed a notice of opposition, alleging that “EVERLITE” was phonetically, visually, and structurally similar to their mark “EVEREADY,” which they claimed held the status of a well-known trademark.
OPPONENT’S CONTENTIONS
The opponent, Eveready Industries India Ltd., contended that:
Their trademark “EVEREADY” is a well-known mark, synonymous with their brand identity and reputation.
The mark had acquired a distinctive secondary meaning in the market, leading consumers to associate the name exclusively with their products.
APPLICANT’S CONTENTIONS
The applicant, represented by our firm, argued the following:
Long-standing Use and Public Recognition: The applicant has used the name “EVERLITE” consistently since 1971. Over the decades, the general public has come to associate the mark exclusively with the applicant’s business, thereby establishing its distinct identity.
Clear Distinction: The applicant demonstrated that “EVERLITE” and “EVEREADY” are markedly different phonetically, visually, and structurally. The comparison was described as being akin to “day and night.” Furthermore, the two businesses operate in entirely separate domains, reducing any likelihood of confusion among consumers.
Section 17 of the Trademarks Act, 1999: The applicant emphasized that trademarks must be read as a whole under Section 17 of the Act. Even if dissected, the term “EVER” is a public jurisdiction term, rendering it ineligible for exclusive protection.
Examination Report: The Trademark Registry’s examination report supported the applicant’s case. It cited two other marks under the name “EVERLITE,” which the opponent had not opposed, exposing inconsistency in their approach.
Well-Known Mark Scrutiny: While the opponent’s mark “EVEREADY” was recognized as a well-known trademark in 2020 (via Eveready Industries India Ltd. v. Mrs. Kamalesh Chadha), the opponent failed to fulfill the mandatory requirement of publishing this status on the official website of the Trademark Registry. Moreover, the applicant’s use of “EVERLITE” since 1971 predates this designation, giving them prior rights.
REGISTRAR’S DECISION
After a comprehensive examination of both parties’ submissions, the Hon’ble Trade Marks Registry concluded that:
“EVERLITE” and “EVEREADY” are distinct marks, differing phonetically, visually, and structurally.
The status of a well-known mark, if claimed, must comply with the requirement of publication by the competent authority, which was not fulfilled in this case.
The applicant’s bona fide adoption, development, and continuous use of the mark “EVERLITE” since 1971 warranted recognition and protection.
The Registry allowed the registration of the applicant’s mark “EVERLITE,” rejecting the opposition filed by Eveready Industries India Ltd.
SIGNIFICANCE OF THE DECISION
This ruling reinforces that intellectual property rights are not solely determined by a brand’s prominence but also by the fairness and legitimacy of its acquisition and use. It highlights that:
A well-known trademark’s status cannot override the rightful claims of a prior user.
Consistency and honesty in the adoption and use of a trademark hold paramount importance.
ACKNOWLEDGEMENTS
This victory stands as a testament to the diligent efforts of our legal team. The firm was represented by our associate Mrs. Pavithra K., and the blog was drafted by Ms. Safiya Farhana. We take immense pride in securing this significant outcome for M/s. Electrical Fittings & Equipment (Madras) Pvt. Ltd., ensuring that their long-standing efforts and dedication were justly rewarded.
