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IN THE HIGH COURT OF DELHI AT NEW DELHI
C. Hari Shankar, J.
Natures Essence Private Limited - Appellant
Versus
Protogreen Retail Solutions Private Limited & Ors - Respondent
C.S. (Comm) No. 581 of 2020; I.A. No. 12750 of 2020
Decided On : 09-03-2021
In a trademark infringement case, the court held that the defendant's mark was deceptively similar to the plaintiff's registered trademarks and granted an interlocutory injunction restraining the defendant from using the infringing mark.
Fact of the Case:
The plaintiff, a manufacturer of cosmetics and toiletries, alleged that the defendant was infringing its registered trademarks "NATURE'S" "NATURE ESSENCE" and "NATURE'S ESSENCE". The plaintiff claimed that the defendant's mark "NATURE'S TATTVA" was deceptively similar to its registered trademarks and was likely to cause confusion among consumers.
Finding of the Court:
The court found that the defendant's mark was deceptively similar to the plaintiff's registered trademarks. The court noted that the marks were visually and phonetically similar, and that they conveyed a similar idea to consumers. The court also found that the defendant had deliberately imitated the plaintiff's marks, and that the infringement was not innocent or coincidental.
Issues: Whether the defendant's mark was deceptively similar to the plaintiff's registered trademarks; Whether the plaintiff was entitled to an interlocutory injunction.
Ratio Decidendi: The court held that the defendant's mark was deceptively similar to the plaintiff's registered trademarks. The court applied the "Pianotist test" to compare the marks and found that they were visually and phonetically similar, and that they conveyed a similar idea to consumers. The court also found that the defendant had deliberately imitated the plaintiff's marks, and that the infringement was not innocent or coincidental. The court held that the plaintiff was entitled to an interlocutory injunction because it had established a prima facie case of infringement and the balance of convenience favored the grant of an injunction.
Final Decision: The court granted an interlocutory injunction restraining the defendant from using the infringing mark.
JUDGMENT
C Hari Shankar, J. - This order disposes of I.A. 12750/2020 in CS(COMM) 581/2020, preferred under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC).
Facts
2. The plaintiff alleges infringement, by the defendants, of the plaintiff's registered trademarks "NATURE'S" "NATURE ESSENCE" and "NATURE'S ESSENCE". The prayer, in the plaint, is specifically for an injunction, against the defendants, from making or dealing in any goods (particularly cosmetics), using any mark/name identical or deceptively similar to the aforesaid registered trademarks of the plaintiff.
3. I may observe, even at this point, that in the list of registered trademarks of the plaintiff, provided in para 7 of the plaint, there is no registration of the word or mark "NATURE'S". The mark "NATURE'S INC." and "NATURE'S ESSENCE" are, however, registered in favour of the plaintiff, and the logos of the plaintiff, relating to the said marks, appear thus:
4. The trademark of the defendants, with which the plaintiff is essentially aggrieved, appears thus:
5. The case set up by the plaintiff in the plaint may be explained as under:
(i) Since 1998, the plaintiff has been carrying out its business under the aforesaid trademarks, in respect of goods and services included in Classes 03, 05 and 35 of the Schedule to the Trade Marks Rules, 2002. These trademarks stand renewed from time to time and are presently valid, subsisting and in existence.
(ii) The trademarks being registered in the plaintiff's favour, exclusive right to use the trademarks vests in the plaintiff. The registrations also constitute prima facie evidence of the validity of the marks, in view of Section 31 of the Trade Marks Act, 1999 (hereinafter referred to as "the Act"). By dint of long user, valuable goodwill has been created in the aforesaid marks of the plaintiff. The plaintiff's products have attained national recognition, being widely advertised in the print as well as online portals, and publicised through the websites of the plaintiff. As a result, it is asserted that the aforesaid trademarks have, by long, open, extensive, continuous and exclusive use, coupled with large scale publicity, acquired secondary meaning and distinctiveness, and have become identified and recognised with the products of the plaintiff. The plaintiff has also provided details of its turnover, from 2007-2008, till the date of filing of the plaint. The turnover has increased from Rs. 12,94,349/- in 2007-08 to Rs. 122,97,32,824/- in 2019-2020.
(iii) As against this, it is alleged that the defendant adopted the trademark "NATURE'S TATTVA", in respect of essential oils and cosmetics, in respect of which the defendants have applied for registration in Class 3. Defendant No. 1 has applied for registration of the said trademark in respect of goods which are manufactured by Defendant No. 3 and marketed by Defendant No. 2. The plaint alleges that the trademark "NATURE'S TATTVA", of the defendants, is closely identical and deceptively similar to the registered trademark "NATURE'S ESSENCE" of the plaintiff, and is inevitably likely to convey an impression, in the minds of the purchasing public, that the products of the defendants emanate from the plaintiff. This, it is alleged, would result in tarnishing of the reputation and goodwill amassed by the plaintiff over the years. Resultantly, it is alleged that the defendants have infringed the registered trademark of the plaintiff, and are also passing off their goods as those of the plaintiff.
(iv) The plaint also contains a tabular depiction, intended at comparing the product of the plaintiff with that of the defendants, thus:
6. Predicated on this submission, the plaintiff prays for
"i. an order of permanent injunction restraining the Defendant(s), their principal officers, directors, partners, agents, franchisees, servants, licensees and all others acting for and on their behalf, from making, selling, offering for sale, advertising and in any manner dealing in "Co
Important Point :The use of a trademark that is phonetically and visually similar to a registered trademark can lead to confusion, constituting infringement, especially when dishonest conduct is evid....
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 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....
Generic and descriptive terms in trademarks cannot be exclusively claimed, and likelihood of confusion must be assessed holistically from the average consumer's perspective.
Section 24(4)(c) does not expect the registered trade mark of the plaintiff to have become a well-known Trade Mark within the meaning of Section 2(1)(z)(g)”.
The main legal point established in the judgment is the likelihood of confusion as a key factor in determining trademark infringement under Section 29(2) of the Trade Marks Act. The judgment also cla....
The court established that the rights of the prior user of a trademark are superior to those of a subsequent user, emphasizing the elements of goodwill, misrepresentation, and damage in passing off c....
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