JUDGMENT :

1. This is an action for passing of which has been instituted by the Plaintiff on the basis of its trade mark “iTerm” (Aegon Life iTerm Plus) seeking an order of injunction against the Defendant restraining it from using the mark “i-Term” (Aviva i-Term Smart) in respect of its insurance policies.

2. According to the Plaintiff, it is engaged in the business of providing life insurance, pension and other related insurance products and services in the Indian market. In the year 2009, the Plaintiff was desirous of launching online insurance policies which could be purchased by customers on the Plaintiffs website or through online aggregators, in addition to selling policies through traditional means such as via insurance agents, brokers etc. That in order to differentiate and distinguish its ‘products offering from others, and after significant deliberations, the Plaintiff coined and adopted a new, unique, distinctive and innovative trade mark being “iTerm”. The Plaintiff also conceived and adopted a stylized manner of representing the trade mark “iTerm” by using lowercase “i” and uppercase “T”. According to the Plaintiff, it was the first entity in India to offer and sell insurance policies online. On 17th August 2009, the Plaintiff made an application to the Insurance Regulatory and Development Authority of India (“IRDAI”) seeking its approval for introducing insurance products under the trade mark “iTerm” and offering them to prospective customers via online channels, which was approved by the IRDAI on 7th September 2009.

3. According to the Plaintiff, in or about October 2009, the Plaintiff launched and started offering for sale its online insurance products on its website www.aegonreligare.com, under the trade mark “iTerm”. According to the Plaintiff, the first set of its insurance policies under the trademark “iTerm” were issued on 27th October 2009. In 2017, the Plaintiff also launched two other products with variants of the trade mark “iTerm” viz. ‘iTerm Plus’ and ‘iTerm Forever’. The Plaintiff has also registered the domain names, www.iterm.co.in, www.iterm100.com and www.itermplus.com. According to the Plaintiff, its trade mark ‘iTerm’ is inherently distinctive of its products and in any event by virtue of its open, continuous and extensive use, the said mark has acquired secondary significance thereby connoting and denoting to the members of the trade and public, the insurance policies of the Plaintiff and of no one else. On 18th May 2018, the Plaintiff filed trademark applications under Nos. 3837083, 3837084, 3837085 and 3837086 all in class 36 with the Registrar of Trademarks for registration of the trade marks iTerm (word mark), iTerm Plus (word mark), iTerm Forever (word mark) and iTerm Forever Plus (word mark), respectively. On 17th November 2018, i.e. after the present suit was fled, the Plaintiffs trade mark ‘iTerm Forever Plus’ bearing No.3837086 in class 36 was registered, however, since the hearing of the present Notice of Motion on the basis of cause of action for passing of had already commenced, the Plaintiff has proceeded with the hearing without amending and claiming the cause of action for infringement of trade mark ‘iTerm Forever Plus’ bearing No.3837086 in class 36.

4. The Plaintiffs products i.e. Insurance Policies which are sold over the internet include inter alia the following :

Aegon Life iTerm Insurance Plan;

AEGON RELIGARE’S Life iTerm Insurance Plan;

Aegon iTerm Plan;

Aegon Life iTerm Forever Plan;

Aegon Life iTerm Plus.

The Defendant’s products include the following:

AVIVA i-Term Smart Plan;

AVIVA i-Life Plan.

The products involved in the present suit are the Plaintiffs Term Insurance Policy offered under the mark “Aegon Life iTerm Plus” on the one hand and the Defendant’s Term Insurance Policy under the mark “Aviva i-Term Smart” on the other hand. The Defendant’s product is offered through its website www.avivaindia.com and the Plaintiffs product is offered through its website www.aegonlife.com