The distinctiveness of a trademark, statutory defenses, and the descriptive use of trademarks were central to the court's decision.

JUDGMENT

Amit Bansal, J. - IA. No. 444/2022 (Order XXXIX Rules 1 and 2 of CPC)

1. By way of the present judgment, I propose to decide the application filed on behalf of the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC) for grant of interim injunction pending the disposal of the suit.

2. The plaintiff has filed the present suit seeking permanent injunction against the defendant from infringing/passing off, inter alia, the trademarks of the plaintiff and other ancillary reliefs. In the suit, it has been pleaded that:

(i) Plaintiff company, incorporated in 2012 is in the business of manufacturing, marketing and trading all goods relating to personal hygiene including sanitary preparations and allied products. Since January, 2020, the plaintiff ventured into the manufacturing and trading of diapers.

(ii) Plaintiff has obtained trademark registrations in its favour for the marks 'SUPER CUTESTERS', 'SUPER CUTES' and 'SUPER CUTEZ'. Details of the trademark/device mark/word mark of the plaintiff are set out below:

(iv) The plaintiff has given wide publicity to the said trademarks and the products under the said trademarks are identified and associated by the public and trade exclusively with the plaintiff. Famous celebrities have served as Brand Ambassadors in respect of the Plaintiff's products.

(v) The trademarks 'SUPER CUTESTERS', 'SUPER CUTES', and 'SUPER CUTEZ' have gained immense popularity and reputation in relation to the plaintiffs products amongst the plaintiffs consumers and the general public.

(vi) In support of this, the plaintiff has given the sales figures for the period April 2020 to March, 2021 and April, 2021 to December, 2021 and also the advertisement expenditure in respect of the aforesaid trademarks as per the Books of Accounts maintained by the plaintiff.

(vii) The plaintiff is the prior adopter and registered proprietor of various trademarks/device marks/wordmarks as mentioned above and enjoy exclusivity in respect of the said marks.

(viii) In October, 2021, as per the information of the plaintiff, the defendant company ventured into the business of 'baby diapers' adopting a trademark 'SUPER PANTS', which is deceptively similar to the various trademarks of the plaintiff company, in respect of which the plaintiff is a registered proprietor.

(ix) On 2nd April, 2021 and 4th December, 2021, cease and desist notices were issued by the plaintiff to the defendant calling upon the defendant not to use the aforesaid trademark.

(x) On the basis of the aforesaid pleadings, the present suit was filed on behalf of the plaintiff alleging infringement as well as passing off on behalf of the defendant of the trademarks of the plaintiff along with an application under Order XXXIX Rule 1 and 2 of the CPC for interim injunction.

3. The suit along with present application came up for hearing before this Court on 11th January, 2022 when summons were issued in the suit and notice was issued in the application. Pursuant to the said notice, defendant has filed written statement to the suit.

4. Counsel for the plaintiff has made the following submissions:

(i) The trademarks 'SUPER CUTESTERS', 'SUPER CUTES' and 'SUPER CUTEZ' are registered trademarks of the plaintiff and since the defendant is using deceptively similar trademark of "SUPER PANTS" in respect of identical goods i.e., diapers, the plaintiff is entitled to grant of injunction in terms of Sections 28, 29 read with Section 31 of the Trade Marks Act, 1999 (the Act).

(ii) The plaintiff is a prior user of the aforesaid trademarks in relation to diapers, whereas in the trademark application filed on behalf of the defendant for registration of the logo/device mark 'SUPER PANTS', the defendant has stated therein that the aforesaid mark would be on a 'proposed to use' basis.

(iii) No justification has been given by the defendant for adopting the deceptively similar trademarks to that of the plaintiff. Therefore, the adoption by the defendant is not bonafide.

(iv