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IN THE HIGH COURT OF DELHI AT NEW DELHI
JAYANT NATH, J.
Avtar Singh & Ors - Appellant
Versus
Sakshi Srivastava & Anr - Respondent
CS(COMM) 385 of 2020
Decided on : 04-10-2021
Trademarks Act - Sections 17, 28, 29(4) and 31 - Effect of registration of parts of a mark - Infringement - Registration for trademarks WOODLAND - Seeking a decree of permanent injunction against defendants, their partners, officers, importers, exporters, advertisers, manufacturing, selling, offering for sale, marketing, retailing, supplying, distributing, etc. Impugned trademarks or any other mark which is identical or deceptively and confusingly similar to plaintiff’s trademark - Whether impugned marks of defendants can be said to be deceptively similar to marks of plaintiffs. This court has to see as to whether the similarity between plaintiffs’ and defendants’ marks is so close either visually, phonetically or otherwise.
Finding of the Court :
IT is clearly, the plea of the defendants that the customers of the plaintiffs would not be confused in view of the fact that products of defendant deal with a different segment is misplaced and cannot be accepted as a defence to the stated infringement. There is no reason to believe that the customers of plaintiffs will not get confused because of the price difference - The rule of ‘anti dissection’ does not impose a complete embargo upon consideration of constituent elements of a composite mark. The word ‘WOOD’ is a non-distinctive character and cannot be registered as a trade mark by plaintiffs. Hence, plaintiffs cannot say or contend that the impugned mark WOODLEY, merely because it uses mark WOOD, infringes trade mark of plaintiffs.
Result: IA No. 8293/2020 is allowed and IA No. 9158/2020 is dismissed
JUDGMENT :
JAYANT NATH, J.
IA Nos.8293/2020 & 9158/2020
1. IA 8293/2020 is filed by the plaintiffs seeking an injunction to restrain the defendants, their agents etc. from manufacturing or authorizing the manufacture, selling, offering for sale, marketing, retailing, supplying distributing, exhibiting, advertising, promoting, displaying etc. the impugned products and operating the impugned retail stores or any other product and retail store bearing the impugned marks WOODLEY
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and NUWOODLEY as a trademark or as a trade name or part of the store name or retail or any other mark which is deceptively similar to the plaintiff’s trade name/mark WOODS, WOODS (stylised), WOODS
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WOODLAND and WOODLAND (stylised)/
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2. I may point out that when the matter came up for hearing on 18.09.2020, this court in IA No. 8293/2020 noting the averments in the plaint and the documents, concluded that the plaintiffs have made out a prima facie case and that the balance convenience lies in favour of the plaintiffs. An ex parte ad-interim injunction was passed in favour of the plaintiffs in terms of prayer A (i) and (ii) of the said application.
3. IA 9158/2020 is now filed by the defendants under Order 39 Rule 4 CPC for varying/setting aside the ad-interim ex parte injunction order dated 18.09.2020 passed by this court.
4. The present suit is filed seeking a decree of permanent injunction against the defendants, their partners, officers, importers, exporters, advertisers, manufacturing, selling, offering for sale, marketing, retailing, supplying, distributing, etc. the aforementioned impugned trademarks or any other mark which is identical or deceptively and confusingly similar to the plaintiff’s trademark. Other connected reliefs are also sought.
5. The Plaintiffs Mr.Avtar Singh, Mr.Harkirat Singh, Aero Traders Private Ltd. and Aero Associates Pvt. Ltd. are said to be partners of M/s Aero Club. It is stated that the said concern M/s. Aero club is the lawful owner of the trademark WOODS in India. Details of the registration of the said trademarks are given in the plaint. The first trademark of WOODS was registered on 11.11.1994 claiming a user since October 1994 in class 25. Another registration was obtained in March 1996 also under class 25 and on 12.12.2017 in Class 3. In addition, the plaintiffs have also attained registration for trademarks WOODLAND, WOODLAND (Stylised) and other WOODLAND marks on different dates. It is claimed that by virtue of section 28 of the Trademarks Act, the plaintiffs and their licensees have exclusive right to use the said trademarks in respect of the goods for which the trademarks are registered. Additionally, under section 31 of the Act the original registrations are prima facie evidence of their validity.
6. It is further stated that the plaintiffs are the owner of applications for trademarks WOODS (word), WOODS (Stylised) in class 18 which are currently pending. The said applications are under opposition and the matter is being contested by the plaintiffs.
7. It is further stated that it was in 1992 that the plaintiff ventured into the Indian Market with a select specialised line of footwear and launched its highly distinctive trademark WOODLAND. Since its inception the plaintiffs are said to have honestly conceived and adopted the trademark WOODLAND. In 1994 the plaintiff adopted another highly distinctive and arbitrary trademark WOODS.
8. The plaintiff thereafter made a strategic move to shift focus from footwear to apparel range under its brands WOODS and WOODLAND. The plaintiffs offer jackets, t-Shirts, sweatshirts and casual shirts. It is stated that over a period of 28 years since its inception the plaintiffs has grown steadily from just a single retail store in India to an internationally recognised brand with retail outlets in Hong Kong, China, UAE etc. Starting with two exclusive outlets in Delhi the pl
Intellectual Property - In any case, in view of Section 17(2) (b) of Trademarks Act, plaintiffs cannot register the mark WOOD. It was stressed that under Section 17, where a trade mark consists of se....
Where a trade mark contains generic or common-to-trade terms, the proprietor cannot claim exclusive rights over those specific words. Comparison of marks for infringement must be done as a whole; if ....
The court found that despite phonetic similarity, the distinctiveness of trade marks and differences in intended consumer bases negate the likelihood of confusion and passing off.
The court found no infringement due to the distinctiveness of the marks, holding that the word 'FOREST' is generic, and the appellant failed to establish confusion among consumers.
The principle of prior user of a trademark prevails over subsequent registrations, especially when confusion or association is likely between goods and services of similar trade sectors.
The court emphasized likelihood of consumer confusion in trademark law, holding that similar marks can infringe established trademarks regardless of differences in service or field, thus supporting t....
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