Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2022 Supreme(Del) 536

IN THE HIGH COURT OF DELHI AT NEW DELHI
VIBHU BAKHRU, AMIT MAHAJAN, JJ.
Soothe Healthcare Private Limited – Appellant
Versus
Dabur India Limited – Respondent
F.A.O. (OS) (COMM.) No. 100 of 2022, C.A.V. No. 112 of 2022, C.M. Application Nos. 20947, 20948 of 2022
Decided On : 11-07-2022

Advocates:
Advocate Appeared:
For the Appellants : Mr. Rajshekhar Rao, Mr. Utkarsh Joshi, Mr. Shrey Patnaik, Ms. Mansi Sood, Ms. Anjali Menon.
For the Respondents: Mr. Manish Kumar Mishra, Mr. Srinivas Venkat.

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.

Headnote:
Code of Civil Procedure, 1908 - Order XXXIX Rule 1 and 2 - Trade Marks Act, 1999 - Sections 17, 28, 29 and 31 - Manufacturing, marketing and trading of goods - Hygiene - Seeking permanent injunction - Trademarks - Infringement/Passing off - It claims that trademarks “SUPER CUTESTERS” and “SUPER CUTE’S” and “SUPER CUTEZ” have gained immense popularity and reputation in relation to SOOTHE’s product amongst its consumers - That SOOTHE is a prior adopter and a registered proprietor of various trademarks and thus enjoys exclusivity in respect of said marks - It is further contended that DABUR started using deceptively similar mark in order to dishonestly benefit from popularity of SOOTHE’s mark - Court find no merit in arguments raised by SOOTHE. SOOTHE has not been able to establish that learned Single Judge has exercised his discretion arbitrarily or has ignored settled principles of law regulating grant or refusal of interlocutory injunctions.
Finding of the Court:
It is clear that no exclusivity can be claimed in respect of the expression “SUPER” which is laudatory; descriptive and is widely used on not only products of similar nature but in respect of various different products and services. It is also clear from bare visual perusal of DABUR’s mark that word “SUPER” is used in conjunction with word “PANTS” and is, thus, used in a descriptive manner along with its other well-known trademark, i.e. “DABUR.” This, prima-facie, is to convey that diapers being manufactured and marketed by DABUR are of a good quality - Section 15 of Act provides that proprietor of a trademark claiming to be entitled to the exclusive use of any part thereof can separately apply to Registrar for registration of not only whole trademark but also part thereof as a separate trademark - Section 17 of Act categorically provides that when a trademark consists of several matters, its registration confers on proprietor exclusive right to use the trademark taken as a whole - Learned counsel for SOOTHE to highlight point that even an ordinary English word, even if descriptive or laudatory, can be protected if it has acquired a secondary meaning and has come to be associated with proprietor’s product/business - Indisputably, the term “SUPER” is widely used in respect of various products not only of similar nature but also of different class and categories. SOOTHE cannot, therefore, prima-facie claim that use of word “SUPER” by DABUR in its mark is deceptively similar to SOOTHE’s registered trademark for the reason that word “SUPER” also appears in SOOTHE’s marks referred in ‘paragraph 2’ above. SOOTHE also cannot prima-facie claim that word “SUPER” appearing in its registered mark has acquired a secondary meaning or a distinctive character when used in a particular product of SOOTHE, i.e. diapers.
Result: Appeal is dismissed.

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” and “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 is pending 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 Feel and

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2022 Supreme(Del) 536

IN THE HIGH COURT OF DELHI AT NEW DELHIVIBHU BAKHRU, AMIT MAHAJAN, JJ.Soothe Healthcare Private Limited – AppellantVersusDabur India Limited – RespondentF.A.O. (OS) (COMM.) No. 100 of 2022, C.A.V. No. 112 of 2022, C.M. Application Nos. 20947, 20948 of 2022Decided On : 11-07-2022

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.

Cases Referred (1)

IN THE HIGH COURT OF DELHI AT NEW DELHI
VIBHU BAKHRU, AMIT MAHAJAN, JJ.
Soothe Healthcare Private Limited – Appellant
Versus
Dabur India Limited – Respondent
F.A.O. (OS) (COMM.) No. 100 of 2022, C.A.V. No. 112 of 2022, C.M. Application Nos. 20947, 20948 of 2022
Decided On : 11-07-2022