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IN THE HIGH COURT OF DELHI
Manmohan, Navin Chawla, JJ.
Rajesh Kumar Modanwal - Appellant
Versus
A.R. Spares Pvt. Ltd. - Respondent
FAO (COMM) 193 of 2021 & CM Appls. 43309-43310 of 2021
Decided On : 13-12-2021
Likelihood of confusion due to phonetic similarity in trademarks can justify an injunction, irrespective of the defendant’s prior registration.
Headnote:(A) Trade Marks Act, 1958 - Sections 27(2) - Appeal challenging ex-parte injunction granted in trademark infringement suit - The appellant-defendant's registered trademark 'AR GOLD' contrasted with the plaintiff's trademark 'A.R' and 'A.R (DEVICE)' - Court emphasized likelihood of confusion based on phonetic similarity and prior use. (Paras 4, 7, 10)
(B) Passing Off - Concept that passing off can succeed on similar evidence where infringement fails - Requirement of proof for intent in passing off actions, with emphasis on prior use. (Paras 9, 10)
Facts of the case:
Respondent-plaintiff claims exclusive rights on the trademark 'A.R' and sought a permanent injunction against the appellant-defendant who claimed ownership of the trademark 'AR GOLD', which is visually and phonetically distinct.
Findings of Court:
The trial court found similarities between the trademarks of both parties, establishing a prima facie case for the plaintiff and reasoning that balance of convenience favored the plaintiff as the prior user.
Issues: Whether ex-parte injunction was warranted given the appellant's claims of distinctiveness and lack of similarity in goods.
Ratio Decidendi: The court reinforced the principle that the likelihood of confusion among consumers based on phonetic similarity justified the trial court's issuance of an injunction. The absence of the appellant's product launch also supported this decision.
Result: Appeal dismissed.
| Table of Content |
|---|
| 1. background of trademark dispute (Para 1 , 2 , 3 , 4) |
| 2. arguments regarding trademark usage (Para 5 , 8) |
| 3. court's analysis on confusion and passing off (Para 6 , 7 , 9) |
| 4. conclusion on the injunction appeal (Para 10) |
JUDGMENT
Manmohan, J. Present appeal has been filed challenging the impugned order dated 20th February, 2020 passed by learned District Judge (Commercial Court) West District, Tis Hazari Court. Appellant-Defendant also seeks a direction to stay further proceedings in CS (COMM) No. 407/2019 till the disposal of the present appeal.
2. Learned counsel for the Appellant-Defendant states that the Appellant-Defendant is engaged in the business of sale and supply of motorcycle auto spare parts included in class 12 under the Trade mark no 3718530 which was granted to the Appellant-Defendant on 3rd January, 2018.
3. He states that the Respondent-Plaintiff instituted a Civil Suit No. 407/2019 for permanent injunction restraining infringement of trademark, delivery upon, rendition of accounts of profit along with damages against the Appellant-Defendant for using trademark `AR Gold'.
4. Learned counsel for the Appellant-Defendant states that the Respondent-Plaintiff has been using the trademark "A.R" and A.R. (DEVICE) which it purchased from its predecessors-in-title and has been carrying on business of manufacturing, marketing, and exporting spare parts for motor vehicles included in class 12 since 1971. He points out that the Appellant-Defendant is using the trademark AR GOLD auto parts which does not have any similarity with any other registered user in the same class and is distinctive in design, colour, phonetics, etc. He emphasises that the Appellant-Defendant was lawfully granted the said trademark by the Registrar of the Trademark, Mumbai.
5. He states that vide impugned order dated 20th February 2020, the District Judge without application of mind and without appreciating the fact that the Appellant is himself the owner of the registered trademark "AR GOLD" which is clearly distinguishable visually and phonetically from the Respondent's Trademark granted ex-parte injunction in favour of the Respondent. He also points out that the learned District Judge has failed to appreciate that the appellant does not deal in the items which the Plaintiff Respondent deals in and there is no dishonest intention of the appellant to use the trademark AR.
6. The Supreme Court in Wander Ltd and Anr. v. Antox India P. Ltd., 1990 (supp) SCC 727, has held that in the appeals before the Division Bench against the exercise of discretion by the Trial Court, the appellate court will not interfere with the exercise of such discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily or capriciously or perversely or where the court had ignored the settled principle of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle.
7. In the present case, the Trial Court has found that the marks of the Appellant-Defendant and Respondent-Plaintiff are phonetically and visually similar and as both the parties manufacture similar/cognate goods, there is likelihood of confusion and deception. The relevant portion of the impugned order is reproduced hereinbelow:
"...12. I have perused the trademark of the plaintiff as well as trademark of the defendant. Word `AR' is written in style by the plaintiff. Whereas the word `AR' is written in wrapper of the defendant in different manner. However, word `AR' is prominent and both are user of AR word in the same field i.e. auto spare parts. The word `AR' and `AR GOL' are phonetically similar therefore there is every likelihood that common buyer get confused or mislead defendant trademark with that of plaintiff trademark. Further to an ordinary unwary customer, use of the trademark/label and the trade dress by the
