Back
IN THE HIGH COURT OF DELHI
Prathiba M. Singh, J.
Malook Chand Cotton and Oil Mills - Appellant
Versus
Abhishek Gupta Trading as Hariom Enterprises - Respondent
CS(COMM) 253 of 2022
Decided On : 06-10-2022
A trademark is deemed confusingly similar if its overall presentation is likely to cause consumer confusion, particularly when associated goods are identical or closely related.
Headnote:(A) Trade Marks Act, 1999 - Section 29 - Permanent injunction sought in relation to the trademark 'DOUBLE HIRAN' and its accompanying label - Plaintiff's predecessor adopted the mark in 1942, with established registrations and significant market goodwill - Defendant's mark 'DOUBLE HORN' found to be phonetically similar and confusingly similar to Plaintiff’s mark - Plaintiff made out a prima facie case for an ad interim injunction due to potential irreparable injury and significant goodwill at stake - Defendant agreed to withdraw conflicting trademark applications and not use the ‘DOUBLE HORN’ mark - Court granted permanent injunction restraining Defendant from using said mark or any confusingly similar mark. (Paras 7, 13, 14)
(B) Trademark Infringement - When determining similarity of marks, the overall look and feel of the products is crucial, especially when products are for human consumption - Balance of convenience favored Plaintiff as the original adopter and user of the mark. (Paras 21, 22)
| Table of Content |
|---|
| 1. trademark ownership and prior use. (Para 2 , 3 , 4 , 5 , 6) |
| 2. criteria for granting interim injunction. (Para 7) |
| 3. defendant's proposal and willingness to amend. (Para 8 , 9 , 10) |
| 4. injunction and withdrawal of trademark applications. (Para 11 , 13 , 14) |
| 5. resolution of dispute and court fee refund. (Para 15 , 18) |
JUDGMENT
Prathiba M. Singh, J. (Oral)--This hearing has been done through hybrid mode.
2. The present suit has been filed by the Plaintiff- M/s Malook Chand Cotton and Oil Mills against the Defendant- Mr. Abhishek Gupta, trading as M/s Hariom Enterprises. The Plaintiff seeks permanent injunction in respect of its mark `DOUBLE HIRAN' as also the accompanying label which is used in respect of mustard oil and other edible oils. The case of the Plaintiff is that its predecessor- M/s Tilak Ram & Sons (P) Ltd., adopted the mark `DOUBLE HIRAN' in 1942 and over the course of time, the label changed and evolved. The right to use the said mark was given to the Plaintiff by its predecessor vide sale deed dated 18th August, 1982.
3. The first registration of the device mark bearing no.2774 was granted in the name of the predecessor of the Plaintiff on 29th July, 1942. As per ld. Counsel for the Plaintiff, the said mark may not be valid and standing on the Register as on date. However, the current status of the trade mark erroneously shows that the same is renewed till 29th July 2049. Apart from the said registration, the Plaintiff also has trademark registration for the word mark `DOUBLE HIRAN' written in English bearing trademark number 1476828 from 7th August, 2008 with user from 1st January 1977. Two label marks of `DOUBLE HIRAN' are also registered in favour of the Plaintiff as of 2008 and 2014 under classes 29 and 35 in respect of edible oil including mustard oil. The user claimed in both the trademark registrations is of 1960.
4. The label of the Plaintiff is also registered under the Copyright Act, 1957 bearing registration no. A44332/84, a copy of which has been placed on record. The Plaintiff also promotes its business and the products through the website www.doublehiranoil.com. The mark `DOUBLE HIRAN' with the device of two deer standing one behind the other forms the essential and prominent feature of the Plaintiff's brand. It is claimed that the Plaintiff's mark `DOUBLE HIRAN' and the accompanying device/label has acquired enormous goodwill and reputation in the market. The sales figure of mustard oil and mustard cake in the last year 2021-2022 is claimed to be to the tune of Rs.135 crores and Rs.5 crores respectively. The yearwise turnover has also been placed on record.
5. The grievance of the Plaintiff, is that the Defendant has adopted a phonetically similar mark `DOUBLE HORN' along with a label consisting of two deer in the same colour combination in respect of identical products. The Plaintiff came to know of the Defendant when it searched the trademark database and realized that the Defendant had filed two applications which were initially registered but they have since been opposed and the status of the marks stands changed to `OPPOSED'.
6. In the said applications bearing no. 5025293 and 4830123, the Defendant has stated that the marks are `proposed to be used'. The Plaintiff has since opposed these marks. The Defendant is also stated to have wrongfully obtained a `Search Certificate', under Section 45 of the Copyright Act, from the Trademark Office for copyright registration of the label. The Defendant's products have been purchased by the Plaintiff and the photographs of the products have also been placed on record. Mr. Bansal, ld. Counsel for the Plaintiff submits that the Plaintiff's products bearing the mark `DOUBLE HIRAN' are promoted and sold extensively in Delhi including by its website www.doublehiranoil.com.
7. The Plaintiff's grievance was, thus, against use of the mark `DOUBLE HIRAN' with the device having two deer in an identical colour combination, label, layout an
