The Goodyear Tire & Rubber Company, which is among the world’s leading tyre companies, is a very prominent name in India too – its presence in India is over 90 years old and in 2010/11, Goodyear India was awarded the Superbrand status.

In February 2020, the Goodyear Company (plaintiff) came across the mark ‘Good Year’ registered in class 4 for brake oil, grease, gear oil etc. in the name of one Deva Nand Sukhia trading as DNO Oils and Chemicals (defendant), post which it filed for cancellation of the said mark. In parallel, it applied to register ‘Goodyear’ in classes 1 and 4 in its own name, as it had started selling lubricants in India and was already possessed of a class 4 registration for the mark ‘Automobili Good Year’ (registered in January 2019).

The defendant’s aforesaid registration dated back to 2002 with use claimed since April 1997. Lubricants and oils bearing the mark ‘Good Year’ too were found being sold by the defendant in the market. Aggrieved by such dishonest adoption and use, the Goodyear Company, acting through Remfry & Sagar, was quick to follow its trademark cancellation action with a lawsuit for infringement and passing off before the High Court of Delhi.

Before the court, the defendant vehemently defended its adoption and use of the mark ‘Good Year’. It claimed to have adopted the mark honestly in respect of class 4 goods – lubricants and oils – and stressed that the Goodyear Company had only recently commenced use of the mark ‘Goodyear’ in respect of these goods, as opposed to the defendant’s use of the mark ‘Good Year’ since the year 1997. The court noted that the defendant failed both in providing any explanation behind adoption of a mark (‘Good Year’) identical to the well-known ‘Goodyear’ mark, as well as in offering documentary evidence backing its user claim since 1997. 

In contrast, the Goodyear Company had demonstrated it had adopted the ‘Goodyear’ mark in India in 1920, with the earliest registration for the said mark in the country dating back to 1943. Further, to support the widespread use and renown of its mark, it had inter alia submitted that net sales in India under this mark between 2014-18 were in excess of USD 1 billion. Several EUIPO trademark registrations, including in Class 4, for the mark ‘Goodyear’ were also cited in support of its case. 

Taking cognisance of the aforesaid facts and arguments the court vide its order dated May 03, 2021 [CS(COMM) 182/2021] held that prima facie the mark ‘Goodyear’ is a well-known mark. The defendant’s adoption of the mark was mala fide; thus, alleged prior use and registration of the mark even vis-à-vis different goods (class 4 goods) did not come in the way of the court granting an injunction in favour of the Goodyear Company and restraining the defendants from using the mark ‘Good Year’ in respect of its products/business in any manner whatsoever.