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IN THE HIGH COURT OF DELHI
Navin Chawla, J.
MS Dreams Lingerie Products - Appellant
Versus
Akash Chawdhary - Respondent
CS(COMM) 370 of 2022
Decided On : 21-09-2022
Important Points
Subject
Intellectual Property - Trademark
Headnote
(B) Injunctions - The court upheld the ad-interim injunction against the defendant for using a similar mark, emphasizing that the prior relationship as distributor influenced the determination of mala fide intentions. (Paras 37)
Facts of the case:
The plaintiff sells undergarments/lingerie under the trademark 'DREAMS' since 2006, claiming the mark as well-known, while the defendant adopted a similar mark after being a distributor.
Findings of Court:
The defendant's application to vacate the injunction was dismissed, confirming the plaintiff's claim of trademark rights.
Issues: The court addressed whether the defendant's mark was deceptively similar to the plaintiff's and the implications of the historical partnership.
Ratio Decidendi: The court applied the 'average intelligence' test for likelihood of confusion in trademarks, affirming the necessity to protect established trademarks from dilution and confusion.
Result: The ad-interim injunction is confirmed; the defendant's application is dismissed.
| Table of Content |
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| 1. plaintiff claims well-known trademark status. (Para 2 , 3 , 4 , 5 , 6) |
| 2. defendant argues against deceptive similarity. (Para 9 , 10 , 11 , 12) |
| 3. plaintiff highlights partner's non-interest in trademark. (Para 13 , 14 , 15 , 16) |
| 4. plaintiff refutes defendant's claims based on prior business. (Para 17 , 18 , 19 , 20) |
| 5. court rejects defendant's request to vacate injunction. (Para 22 , 23 , 24 , 25 , 26) |
| 6. court emphasizes the importance of overall impression in trademark cases. (Para 27 , 28 , 29 , 30 , 31) |
| 7. court concludes marks are deceptively similar, rightfully favoring plaintiff. (Para 32 , 33 , 34 , 35 , 36) |
| 8. court confirms injunction and concludes the order. (Para 37 , 38 , 39) |
JUDGMENT
I.A. 8665/2022 & 11026/2022
1. By this order, this Court shall be disposing of the above two applications; the first filed by the plaintiff, being IA No. 8665 of 2022, under Order XXXIX Rule 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 (in short, `the CPC'); the second filed by the defendant, being IA No. 11026 of 2022, under Order XXXIX Rule 4 read with Section 151 of the CPC.
FACTUAL BACKGROUND
2. It is the case of the plaintiff that the plaintiff is the registered proprietor of the mark `DREAMS LINGERIE' which was adopted by it in the year 2003 with respect to the undergarments/lingerie in Class 25' It claims to be selling and marketing its products under the trade mark `DREAMS' since the year 2006. The details of the registrations and the pending applications for the mark `DREAMS' or bearing the formative' mark `DREAMS' are given by the plaintiff in paragraph 5 of the plaint, detailed as under:
| S.NO. | Application Number with User Details | Trademark with Type | Dt. Of App. | Status | Image and Disclaimer (if any) |
| 1. | 1218380 Proposed to be used. |  | 28/07/2003 | Registered | Trademark Journal is Not available on the website of the Trademark Office. Legal proceedings Certificate Applied |
| 2. | 1921771 01/07/2009 |  | 12/02/2010 | Registered | Disclaimer to the word dreams and device of stars. |
| 3. | 3620406 Proposed to be used. |  | 25/08/2017 | Registered | No disclaimer |
| 4. | 3620407 Proposed to be used. |  | 25/08/2017 | Opposed | No disclaimer |
3. The plaintiff also gives the figures of turnover with respect to goods sold under the trade mark `DREAMS' in paragraph 9 of the plaint, reproduced as under:
| YEAR | TURNOVER IN INR |
| 2008 | 1,97,81,893 |
| 2009 | 2,92,99,416 |
| 2010 | 2,16,80,956.20 |
| 2011 | 6,31,40,295.53 |
| 2012 | 6,13,01,917.21 |
| 2013 | 7,85,83,866.99 |
| 2014 | 10,39,91,776.51 |
| 2015 | 12,34,64,864.69 |
| 2016 | 14,64,21,492.30 |
| 2017 | 16,33,35,761.33 |
| 2018 | 20,09,93,626.36 |
| 2019 | 22,89,82,118.77 |
| 2020 | 24,03,51,970.75 |
| 2021 | 26,41,30,536.44 |
| 2022 | 39,81,64,887.10 |
| TOTAL | 214,36,25,379.38 |
4. The plaintiff claims that the long use of the mark `DREAMS' by the plaintiff, entitles it to be declared as a `well-known trade mark' in terms of Section 2(1)(zg) of the Trade Marks Act, 1999 (in short, `the Act').
5. The plaintiff further claims that the defendant who was the erstwhile distributor of the plaintiff-firm for the territory of Ghaziabad and Western Uttar Pradesh during the period of 2018 to 31.01.2022, has adopted a deceptively similar mark, being `DREAM COMFORT', for the identical goods' The defendant has also applied for registration of its mark on 10.03.2022 under the application no. 5364877 in Class 25 on a `proposed to be used' basis.
6. It is further claimed that the father of the defendant, Mr. Ajay Kumar, was employed as a manager with the plaintiff-firm from the year 2006 to December 2021. It is claimed that the defendant, in his capacity of being a distributor of the plaintiff-firm, and his father, being the manager of the plaintiff-firm, had full access to the dealer network, vendors, trade channels, internal business details, product supply chain, price points, product demands, product details et cetera and, therefore, the adoption of a deceptively similar mark is clearly mala fide and intended to draw a connection with the plaintiff and to ride on its reputation. 7. It is asserted by the plaintif
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