Author Name:   Umang Raj

An order was passed restraining a paper mill from using a deceptively similar name 'Mahendra and Mahendra’ to the Rs 3,000-crore corporate giant Mahindra and Mahindra Ltd.

Mahendra And Mahendra Paper Mills vs Mahindra And Mahindra Ltd

In a landmark judgement of Bombay high court on 9th November, 2001 comprising of Justice D.P Mohapatra and Justice Shivaraj Patil passed an order restraining a paper mill from using a deceptively similar name 'Mahendra and Mahendra’ to the Rs 3,000-crore corporate giant Mahindra and Mahindra Ltd.

As stated by Mahindra and Mahindra Ltd; In august 1996 it came to know the existence of a company named Mahendra and Mahendra paper mills ltd after it came across a prospectus in respect of the latter's public issue and contended that the words used by the paper mill were phonetically, visually and structurally almost identical and in any event deceptively similar.

According to the plaintiff’s statement the word 'Mahindra' is not only a registered trade mark but forms the dominant and significant part of the plaintiff and other companies of the group. The companies carrying the name 'Mahindra' are engaged in industrial and trading activities in multiple fields such as manufacture of cars, jeeps, tractors, motor spare parts, farming equipments, chemicals, hotels, real estate, exports, computer software and computer systems, etc. The annual turnover of the plaintiff and some of its group companies exceeds Rs. 3,000 crore. The annual expenditure for advertisements and market development for sales promotion by the plaintiff and its group of companies is about Rs. 9 crore. The plaintiff has averred that the name and trade mark of 'Mahindra' is extremely popular in India and is associated with the products and services of the plaintiff. It was further averred that the Mahindra group of companies have a nation-wide network of selling and distributing agents. The name and trade mark "Mahindra" is prominently used and displayed on all its products and also promotional materials. On account of high quality of the products manufactured and sold by the plaintiff, as also high quality of products and services of other group companies, the plaintiff asserts, that the name and trade mark of 'Mahindra' have come to be known exclusively with the plaintiff and its group of companies and have acquired tremendous reputation and goodwill among members of public throughout the world including India.

In reply, the paper mills said that the deponent is better known as 'Mahendrabhai' in the trade circle and he resides in 'Mahendra House' named after him. He has been filing income returns in the name of Mahendra G. Parwani. In the year 1974 he started his sole proprietary business in Prantija District of Gujarat in the name of 'Mahendra Radio House'. After about four years, he along with his two brothers started a partnership firm in the name of 'Mahendra & Mahendra Seeds Company'. According to the deponent, his nephew's name is also 'Mahendra' and that is how the partnership firm came to be named as Mahendra & Mahendra Seeds Company. The defendant further averred that on 1st of January, 1982 the said partnership of Mahendra & Mahendra Seeds Company was incorporated as Pvt. Ltd. company in the name of 'Mahendra & Mahendra Seeds Pvt. Ltd.' having its office at 7, Ellora Commercial Centre, Opposite GPO, Ahmedabad. Another proprietary firm by the name 'Mahendra Music & Electronics' was started by the defendant's family in the year 1983 and the same was registered under the Sales Tax Act also. It is the further case of the defendant that in the year 1994 the said Mulchand (alias Mahendrabhai G. Parwani) along with his brothers Trikambhai Parvani and Dayalbhai Parwani, incorporated a company by the name of 'Mahendra & Mahendra Paper Mills Ltd.'. According to the defendant, the words 'Mahendra & Mahendra' was a continuation of their business name which they have been using continuously for various businesses since the year 1974. The defendant also stated that the name 'Mahendra' is a household name in Gujarat and there are several businesses being carried on in the said name throughout Gujarat. The defendant further stated that its products are, in no way similar to the products and businesses of the plaintiff. The business carried on by the defendant does not overlap with the business of any of the companies enlisted by the plaintiff. The defendant pleads that it has a reputation of its own in the name of 'Mahendra & Mahendra' and cannot derive any benefit by the name which is alleged to be similar to that of the plaintiff.

The court observed that "it is clear that the plaintiff has been using the word 'Mahindra' and 'Mahindra and Mahindra' in its companies/business concerns for a long span of time extending over five decades." "People have come to associate the name 'Mahindra' with a certain standard of goods and services. Any attempt by another to use the name in business and trade circles, is likely to and in probability will create an impression of a connection with the Mahindra and Mahindra Ltd. group of companies. The name has acquired distinctiveness and a secondary meaning in the business or trade circles. People have come to associate the name 'Mahindra' with a certain standard of goods and services. Any attempt by another person to use the name in business and trade circles is likely to and in probability will create an impression of a connection with the plaintiff's group of companies. Such user may also affect the plaintiff prejudicially in its business and trading activities.

Considering both the sides the Bombay High Court held that the plaintiff has established a prima facie case and irreparable prejudice in its favour and passed an order of injunction restraining the defendant-company.

# Mahendra And Mahendra Paper Mills vs Mahindra And Mahindra Ltd 

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