Point of Law: On a plain reading of Section 15(1), it is evident that where a proprietor of a trade mark claims to be entitled to exclusive use of any part thereof separately, he is permitted to apply to register whole and the part as separate trade marks.

JUDGMENT :

Amit Mahajan, J.

1. “Soothe Healthcare Private Limited”, hereinafter referred to as “SOOTHE”, which is in the business of manufacturing, marketing and trading of goods relating to personal hygiene including sanitary preparations and allied products, filed a suit seeking permanent injunction against the “Dabur India Limited”, hereinafter referred to as “DABUR”, from infringing/passing off, inter alia, the relevant trademarks of SOOTHE.

2. SOOTHE obtained trademark registration in its favour for the marks “SUPER CUTESTERS”,“SUPER CUTEZ” and “SUPER CUTE’S” in the year 2019 and 2020. It then commenced the use of marks for its product, baby diapers.

3. SOOTHE claims that the trademark application in respect of the trademark/device mark ispending registration before the Trademark Registry.

4. SOOTHE claims that DABUR commenced marketing and selling baby diapers using the deceptively similar trademark, i.e., “DABUR BABY SUPER PANTS”. It is claimed that the use of mark “DABUR BABY SUPER PANTS” is deceptively similar to its trademark for similar products, i.e., baby diapers and has, therefore, infringed SOOTHE’s registered trademark. For the ease of reference, SOOTHE’s packaging and DABUR’s packaging are produced herein:

5. SOOTHE, on being aware of the use of the mark “DABUR BABY SUPER PANTS”, issued a cease and desist notice dated 02.11.2021. DABUR responded to the said notice by a letter dated 04.12.2021.

6. SOOTHE along with the suit also filed an application under Order XXXIX Rule 1 and 2 of Code of Civil Procedure, 1908 (CPC), which was dismissed by the impugned judgment dated 03.03.2022 passed by the learned Single Judge.

7. The dismissal of the said application led to filing of the present appeal.

8. The learned Single Judge considered the rival submissions and came to a prima facie conclusion that DABUR has not infringed SOOTHE’s trademark and that DABUR is not passing off its goods as those of SOOTHE. The learned Single Judge held as under:

“8. A comparison of the packaging of the defendant and the plaintiff above shows that other than the word “SUPER” occurring in both the aforesaid packaging, there is no other similarity. The packaging of the defendant includes the trademark of the defendant, ‘Dabur’ which is prominently displayed. Merely because the word ‘Dabur’ is written in a slightly smaller font as compared to ‘SUPER PANTS’, in my opinion, would not make any difference. The fact of the matter is that the word ‘Dabur’ is prominently displayed on the packaging along with the word ‘baby’. The colour scheme of the packaging is also totally different. The colour scheme of the plaintiff is yellow and orange/blue and yellow, and the defendant is primarily green. From the description of the packaging of the defendant’s product, it is more than clear that there is enough added material therein to distinguish the defendant’s product from that of the plaintiff. Therefore, it cannot be said that there is a possibility of confusion or deception being caused among the customers of the two products. Hence, I am not convinced that the defendant is passing off their goods as those of the plaintiff.

9. The next issue that comes up for consideration is whether word ‘super’ is a descriptive or a laudatory word and whether it can attain distinctiveness in respect of the goods of the plaintiff. As per the Oxford’s Learners Dictionary, the word ‘super’ means ‘extremely good’, and as per the Cambridge Dictionary also, the word ‘super’ means ‘excellent or extremely good’. Clearly, as per its dictionary meaning, the word ‘super; is a laudatory word of the English Language.

10. There is merit in the submission of the defendant that the word ‘super’ has been used by the plaintiff itself in a laudatory/descriptive manner. A look at the packaging of the plaintiff clearly demonstrates that the word ‘super’ has been used at several places in a laudatory manner. To illustrate, the packaging of the plaintiff includes the following phrases: ‘Super Soft F