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IN THE HIGH COURT OF DELHI AT NEW DELHI
C. Hari Shankar, J.
Zenith Dance Institute Pvt. Ltd. – Appellant
Versus
Zenith Dancing And Music – Respondent
CS(COMM) 36 of 2021 & I.A. 3851 of 2022
Decided On : 18-07-2023
TRADEMARK - INFRINGEMENT - PASSING OFF - INTERLOCUTORY INJUNCTION - SIMILARITY OF MARKS - LIKELIHOOD OF CONFUSION - PRIOR USER - ESTOPPEL - ACQUIESCENCE - BALANCE OF CONVENIENCE - IRREPARABLE HARM.
Fact of the Case:
Plaintiff, a dance institute, filed a suit against the defendant, also a dance institute, for infringement of its registered trademarks and passing off. The plaintiff claimed that the defendant's use of the mark "ZENITH" was infringing its registered trademarks "ZENITH ARTS" and "[Device Mark]". The defendant contended that it had been using the mark "ZENITH" since 1999, prior to the plaintiff's registration of its trademarks, and that the plaintiff was estopped from claiming infringement due to its response to an examination report issued by the Trade Marks Registry.
Finding of the Court:
The court held that the plaintiff had a prima facie case of infringement and passing off. It found that the defendant's use of the mark "ZENITH" was likely to cause confusion in the minds of the public, as the marks were deceptively similar. The court also held that the plaintiff had priority of user, as it had been using the mark "ZENITH" since at least 1999, while the defendant's use of the mark dated back only to 2006. The court further held that the plaintiff was not estopped from claiming infringement, as its response to the examination report was made in a generalized manner and did not specifically address the defendant's mark. The court also found that the plaintiff had not acquiesced in the defendant's use of the mark, as it had taken steps to protect its rights, including filing a rectification petition with the Trade Marks Registry and instituting the present suit.
Issues: 1. Whether the defendant's use of the mark "ZENITH" infringed the plaintiff's registered trademarks "ZENITH ARTS" and "[Device Mark]"? 2. Whether the plaintiff was estopped from claiming infringement due to its response to an examination report issued by the Trade Marks Registry? 3. Whether the plaintiff had acquiesced in the defendant's use of the mark "ZENITH"? 4. Whether the plaintiff was entitled to an interlocutory injunction?
Ratio Decidendi: 1. The court held that the defendant's use of the mark "ZENITH" was infringing the plaintiff's registered trademarks "ZENITH ARTS" and "[Device Mark]" because: (a) the marks were deceptively similar and were likely to cause confusion in the minds of the public; (b) the plaintiff had priority of user, as it had been using the mark "ZENITH" since at least 1999, while the defendant's use of the mark dated back only to 2006; and (c) the plaintiff was not estopped from claiming infringement, as its response to the examination report was made in a generalized manner and did not specifically address the defendant's mark. 2. The court held that the plaintiff had not acquiesced in the defendant's use of the mark "ZENITH", as it had taken steps to protect its rights, including filing a rectification petition with the Trade Marks Registry and instituting the present suit.
Final Decision: The court granted the plaintiff's application for an interlocutory injunction, restraining the defendant from using the mark "ZENITH" or any other deceptively similar mark in relation to dance services.
JUDGMENT
1. The plaintiff Zenith Dance Institute alleges that, by using the mark.ZENITH. for dance institutes run by it, the defendant is infringing the registered trademarks of the plaintiff and is also passing off the services rendered by it as those rendered by the plaintiff. Accordingly, the plaintiff has instituted the present suit before this Court, seeking an injunction, restraining the defendant from providing services under the mark ZENITH or any other deceptively similar mark, apart from rendition of accounts, damages and costs.
2. The plaintiff has also filed, with the plaint, IA 1114/2021, under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1980 (CPC), seeking interlocutory injunctive reliefs.
3. At the time of issuing summons in the suit on 22 January 2021, this Court passed an ex parte ad interim order, restraining the defendant, as well as all others acting on its behalf, from directly or indirectly dealing in goods or services bearing the mark ZENITH, or any other deceptively similar mark. The said interlocutory order has been continued from time to time, and is in force as on date.
4. The defendant has also filed IA 3851/2022 under Order XXXIX Rule 4 of the CPC, seeking vacation of the interlocutory injunction granted by order dated 22 January 2021 supra.
5. Pleadings have been completed in IA 1114/2021 and IA 3851/2022. I have heard Ms. Diva Arora Menon, learned counsel for the plaintiff and Mr. Sridharan Ramkumar, learned Counsel for the defendant, at length.
6. This judgment disposes of IA 1114/2021 and IA 3851/2022.
Rival Contentions
Submissions of Ms. Diva Arora Menon
7. Tracing the history of the adoption and use, by the plaintiff, of the mark "Zenith", Ms. Menon submits that Ritu Kapoor, a finance expert, had a passion for dance, which prompted her to open a dance Institute using the trademark ZENITH, in 1997. In 2001, Ritu Kapoor formed the proprietorship, under the name "Zenith Class Institute". On 27 May 2005, Zenith Dance Institute Pvt Ltd, i.e. the plaintiff, was incorporated.
8. The plaintiff, submits Ms. Menon, is the proprietor of the registered device mark [IMG] and the registered word mark ZENITH ARTS, registered w.e.f. 7 June 2007 and 25 April 2014 respectively, claiming user, in each case, from 1 April 1997. She asserts that the "plaintiff group" has been using "Zenith", as a part of its registered trademark ZENITH ARTS and device mark [IMG] continuously and extensively since 1997, and as part of its trading style "Zenith Dance Institute" and, thereafter, "Zenith Dance Institute Pvt Ltd. since 2001. The plaintiff has, all through, been engaged in providing education in relation to various forms of dance.
9. Furthermore, submits Ms. Menon, the plaintiff also holds a copyright registration, dated 17 July 2014, for the mark [IMG], as an original artistic work.
10. Ms. Menon has drawn my attention to various assertions in the plaint, intended at vouchsafing the reputation of the plaintiff. It is asserted that the plaintiff has performed more than 10000 live shows all over the world and operates fully equipped studios in Delhi and Mumbai. It is further asserted that the plaintiff offers the largest dance troupe in India with 18 international and 120 prominent Indian choreographers. The plaintiff is also the recipient of various awards, and has performed and choreographed for leading names in the film world. The plaintiff also operates through the websites www.zenithdancetroupe.com and www.zenithdanceacademy.in, which were registered in February 2004 and April 2019 respectively.
11. Ms. Menon submits that, the plaintiff, in May 2014, came across the registration, in favour of the defendant, of the mark [IMG] in Class 41, in relation to music and dance institutes, w.e.f. 1 September 2006, claiming user since 12 May 1999. The plaintiff applied to the learned Intellectual Property Appellate Board ("the learned IPAB") under Section 57 of the Trade Marks Act, 1999, for rectificatio
The court affirmed the registered trademark holder's rights against similar marks and clarified standards for proving prior use and confusion under trademark law.
The central legal point established in the judgment is the significance of prior use and the principles of honest adoption, delay, and acquiescence in trademark disputes.
Trademark infringement occurs when a registered mark's rights surpass an unregistered mark's claims, especially when confusion is likely.
The importance of placing all facts before the court for dispensing justice and the disentitlement to relief due to deliberate omission of placing a counterstatement on record.
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