The Madras High Court has held that using a vernacular-language version of a registered trademark can amount to trademark infringement when the mark is phonetically and visually similar to the original registered mark.
Justice K. Kumaresh Babu made the observation while restraining a padlock seller from using a Tamil-language version of the “GLOBE” trademark. The Court held that merely presenting a deceptively similar mark in a vernacular language does not permit a party to use a trademark that has already acquired reputation and goodwill.
Background Of The Case
The suit was filed by Shanghai Huanqiu Lock Making Company Limited and the proprietor of Prince Impex. The plaintiffs claimed rights over the GLOBE trademark used in relation to locks and padlocks.
They alleged that Vikas Mandoth, who was engaged in selling padlocks, was using a Tamil version of the word “Globe” on his products. According to the plaintiffs, the disputed mark was not only phonetically similar but also visually similar to their registered trademark.
The plaintiffs further alleged that the defendant had copied other elements associated with their products, including the artistic work, colour combination, trade dress and overall appearance of the padlocks.
Earlier Injunction Against Defendant
In November 2025, the High Court had passed an ex parte injunction restraining the defendant from using the disputed trademark.
The defendant subsequently approached the Court seeking to vacate the injunction. He contended that the Tamil-language mark had been independently developed and that he had a registration for the mark. He also claimed to be a prior user of the disputed trademark.
The Court, however, examined the circumstances surrounding the defendant’s trademark application and the material produced by the plaintiffs regarding their prior use.
Court Finds Plaintiffs To Be Prior Users
The Court noted that the defendant’s trademark application, filed in 2023, described the mark as “proposed to be used.”
On the other hand, the plaintiffs had placed documents before the Court supporting their claim that they had been using the GLOBE trademark earlier and had developed reputation and goodwill associated with it.
The Court therefore prima facie accepted the plaintiffs’ claim of prior use and reputation in the market.
Vernacular Language Cannot Be Used To Avoid Trademark Infringement
A key aspect of the judgment was the Court’s treatment of the Tamil version of the trademark.
The Court held that changing the language or script of a trademark does not, by itself, make the use permissible. If the translated or vernacular mark remains phonetically and visually similar to the registered mark and is capable of creating confusion, it can still amount to infringement.
The Court therefore rejected the argument that use of the mark in a vernacular language provided an independent basis to avoid the plaintiffs’ trademark rights.
Registration Of Defendant’s Mark Not An Absolute Defence
The defendant also relied upon his trademark registration to contend that he was legally entitled to use the mark.
The High Court clarified that registration provides statutory rights to the registered proprietor, but it does not prevent another party from seeking removal or rectification of the registration where grounds for doing so exist.
The Court noted that opposition and rectification proceedings concerning the defendant’s trademark were already pending before the Trade Marks Registry. Questions relating to the competing claims of the parties would ultimately have to be determined after evidence was recorded during the trial.
Injunction Made Absolute
After considering the material on record, the High Court dismissed the defendant’s applications seeking to vacate the earlier injunction.
The Court consequently made the injunction absolute, restraining the defendant from using the disputed Tamil version of the GLOBE trademark.
The Court also allowed the plaintiffs’ application concerning alleged copying of their artistic work, colour combination and trade dress of the padlocks.
Significance Of The Judgment
The decision is significant for trademark owners because it makes clear that trademark protection is not limited to the exact English spelling or script in which a mark is registered.
The ruling highlights that:
- A vernacular version of a registered trademark can constitute infringement if it is deceptively similar.
- Phonetic and visual similarity are relevant while assessing trademark infringement.
- Changing the language or script of a mark does not automatically avoid infringement.
- Prior use and the reputation and goodwill attached to a trademark can be important factors in an infringement dispute.
- Registration of a competing mark does not necessarily prevent the proprietor of an earlier mark from seeking rectification or other legal remedies.
Conclusion
The Madras High Court’s ruling reinforces the principle that trademark protection must be assessed on the overall impression created by a mark rather than merely by the language or script in which it is presented.
A party cannot avoid allegations of infringement simply by reproducing a well-known or established trademark in a different vernacular form. Where the competing mark is phonetically and visually similar and is likely to take advantage of the reputation and goodwill of the original mark, such use can attract the protection available under trademark law.
