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IN THE HIGH COURT OF DELHI AT NEW DELHI
RAJIV SAHAI ENDLAW, J.
The Gillette Company LLC – Plaintiff
Versus
Tigaksha Metallics Private Ltd. and Another – Defendants
CS (COMM) No. 153 of 2017
Decided On : 09-07-2018
TRADEMARK - WILKINSON SWORD LEMON SPLASH - INFRINGEMENT - PASSING OFF - DECEPTIVE SIMILARITY - LIKELIHOOD OF CONFUSION - BALANCE OF CONVENIENCE - INTERIM INJUNCTION - WILKINSON - SWORD - ZORRIK - TALVAR - TRANSLITERATION - ASSOCIATION OF IDEAS - SEMANTIC SIMILARITY - CONSUMER PERCEPTION - HUMAN MEMORY - COGNITIVE PSYCHOLOGY - NEUROSCIENCE - JUDICIAL NOTICE - INJUNCTION GRANTED.
Fact of the Case:
Plaintiff, the owner of the registered trademark WILKINSON SWORD LEMON SPLASH, sued the defendants for infringement and passing off, alleging that the defendants' use of the mark TALVAR and a sword device was deceptively similar to the plaintiff's mark and was likely to cause confusion among consumers. The defendants contended that their mark was not deceptively similar to the plaintiff's mark, that the two marks were visually and phonetically distinct, and that there was no likelihood of confusion. The court took judicial notice of research in the field of cognitive psychology and neuroscience, which demonstrated that consumers' memory and perception are influenced by the association of ideas and semantic similarity, and that similar words and concepts are grouped together in the brain.
Finding of the Court:
The court found that the defendants' mark TALVAR was deceptively similar to the plaintiff's mark WILKINSON SWORD LEMON SPLASH, and that there was a likelihood of confusion among consumers. The court held that the defendants' use of the mark TALVAR was an infringement of the plaintiff's trademark and constituted passing off. The court also found that the balance of convenience favored the plaintiff, as the plaintiff had been using its mark for a much longer period of time than the defendants, and that the defendants had not demonstrated that they would suffer any irreparable harm if the injunction was granted.
Issues: 1. Whether the defendants' use of the mark TALVAR and a sword device was deceptively similar to the plaintiff's mark WILKINSON SWORD LEMON SPLASH and was likely to cause confusion among consumers. 2. Whether the defendants' use of the mark TALVAR constituted infringement of the plaintiff's trademark and passing off.
Ratio Decidendi: The court held that the defendants' use of the mark TALVAR was deceptively similar to the plaintiff's mark WILKINSON SWORD LEMON SPLASH, and that there was a likelihood of confusion among consumers. The court found that the two marks shared the same dominant idea, namely, a sword, and that consumers were likely to associate the defendants' mark with the plaintiff's mark. The court also found that the defendants' use of the mark TALVAR was an infringement of the plaintiff's trademark and constituted passing off.
Final Decision: The court granted the plaintiff's application for an interim injunction, restraining the defendants from using the mark TALVAR and a sword device in relation to their products. The court also directed the defendants to file an affidavit assessing the damages suffered by them as a result of the injunction, and the plaintiff was entitled to file an affidavit in response thereto.
RAJIV SAHAI ENDLAW, J.
I.A. No. 2502/2017 (of plaintiff u/o XXXIX R-1 and 2 CPC) and 3523/2017 (of defendants u/o XXXIX R-4 CPC)
1. The plaintiff has instituted the present suit against the two defendants namely Tigaksha Metallics Private Limited and Supermax Personal Care Pvt. Ltd. for permanent injunction restraining the defendants from infringing the trade marks WILKINSON SWORD LEMON SPLASH of the plaintiff by adopting the marks TALVAR and/or the device of a sword and/or deceptive variations of the plaintiffs trade marks and from thereby passing off their goods as that of the plaintiff and for ancillary reliefs of delivery, rendition of accounts, damages, etc.
2. The suit came up before this Court first on 27th February, 2017, when while issuing summons of the suit, the defendants were restrained from producing/manufacturing and/or from releasing the already manufactured and packed goods under the trade mark TALVAR or the device mark TALVAR with the sword.
3. The two defendants, besides filing their written statement, have also filed application aforesaid under Order XXXIX Rule 4 of the Code of Civil Procedure, 1908 (CPC). Replication has been filed by the plaintiff to written statement of defendant No. 2.
4. The senior counsel for the plaintiff and the senior counsel for the defendant No. 2 were heard on 20th March, 2017 and orders reserved.
5. The plaintiff, in the plaint has pleaded the following comparative packaging of the plaintiff and the defendants products:
(a) Use of TALVAR being literal translation of the word SWORD which forms a prominent part of the plaintiffs registered trade marks WILKINSON SWORD LEMON SPLASH.
(b) Use of a double-edged sword device along with the word TALVAR which is conceptually and visually similar to depiction of the sword in the plaintiffs registered trade marks WILKINSON SWORD LEMON SPLASH.
(c) Manner of use of the word TALVAR along with the device of double-edged sword device i.e. which is conceptually similar to the plaintiffs.
(d) Representation of TALVAR i.e. in slant/italics which is similar to.
(e) The plaintiffs registered marks WILKINSON SWORD LEMON SPLASH and the defendants mark/TALVAR are being used in respect of identical products i.e. safety razor blades.
(f) Use of the word TALVAR which also appears on the packaging of products bearing the plaintiffs registered trade marks viz. tagline TALVAR KI DHAAR.
6. It is further pleaded by the plaintiff:
(i) that its first registration of the mark in Class 8 is of as far back as on 16th June, 1962 and of the mark in Class 3 of 11th July, 1996 and in Class 21 of 7th February, 1997.
(ii) that the plaintiff, for the first time in December, 2016 came across products of the defendant under the impugned mark.
(iii) that the defendants, apart from the word TALVAR, have also adopted the device of double-edged sword to their product.
(iv) that dishonesty and mala-fide is writ large from the defendants copying the concept and the manner of representation of the plaintiffs trademark of device of double-edged swords placed across the expression WILKINSON SWORD; the defendants have also adopted a literal translation of SWORD viz. TALVAR, solely on account of the fact that majority of the Indian consumers seek plaintiffs product as do talvar wale blades/talvar blade and the products under the trade marks of the plaintiff are offered for sale under the tagline TALVAR KI DHAAR.
(v) that the plaintiffs search through records of the trademark registry also revealed that the defendant No. 2 has filed applications for registration of TALVAR in Class 8, on 16th June, 2016, on proposed to be used basis.
(vi) that the defendants, being in the same line of business, were aware of the mark and reputation of the plaintiff.
(vii) that the defendants adoption and use of which are deceptively similar to the plaintiffs registered trade marks, in relation to identical goods/products, tantamounts to infringement of plaintiffs statutory rights and leads to the defendants passi
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