The Madras High Court has ruled that using a vernacular version of a registered trademark can constitute infringement if it bears phonetic and visual similarities to the original mark. This decision was delivered in the case Vikas Vs Shanghai Huanqiu by Justice K Kumaresh Babu, who prohibited Vikas Mandoth from employing the Tamil version of the ‘GLOBE’ trademark for padlocks.
Legal Context and Court’s Observation
In his order dated September 7, Justice Babu asserted, “The defendant’s attempt to use a phonetically and visually similar trademark in a vernacular language does not permit infringement on the plaintiff’s trademark, which is established to have a significant reputation and goodwill.” The case was brought forward by Shanghai Huanqiu Lock Making Company Limited and Valaram, owner of Prince Impex, as plaintiffs.
According to the plaintiffs, Shanghai Huanqiu produces locks under the ‘GLOBE’ trademark, a name that has garnered substantial reputation and goodwill across India and other international markets. They alleged that Mandoth was marketing padlocks with the word ‘Globe’ written in Tamil, a mark they claimed was phonetically and visually akin to theirs, potentially causing customer confusion. Additionally, they accused Mandoth of imitating their artistic work, color scheme, trade dress, and the general appearance of their padlocks.
Proceedings and Arguments
Initially, on November 28, 2025, the High Court issued an ex parte injunction restraining Mandoth from using the contested mark. Mandoth later sought to vacate this injunction, arguing that his Tamil mark was developed independently, taking into account the product’s nature and function. He further contended that his mark was registered, thus protecting his right to use it, and claimed prior usage of the Tamil mark.
However, the Court noted discrepancies in Mandoth’s trademark application from 2023, which stated the mark was ‘proposed to be used’. In contrast, the plaintiffs had provided documents evidencing their prior use. Justice Babu remarked, “This Court prima facie concludes that the plaintiff had been the prior user of the trademark, which commands a good reputation and goodwill in the market.”
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Legal Ruling and Implications
Justice Babu emphasized that while registration confers the right to use a trademark, it also allows for its removal or rectification by others. In this context, opposition and rectification proceedings against Mandoth’s mark were already underway at the Trade Marks Registry. The Court concluded that these issues would only be resolved after the trial, once evidence is recorded.
Ultimately, the Court rejected Mandoth’s applications, making the prior injunction permanent, and upheld the plaintiffs’ application concerning copyright in the artistic work, color combination, and trade dress of the padlocks. Advocate Ramesh Ganapathy represented the plaintiffs, whereas Advocate Jayesh Kumar Daga represented Mandoth.
