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2025 Supreme(Online)(DEL) 601
HIGH COURT OF DELHI
MR. JUSTICE NAVIN CHAWLA, Shalinder Kaur, JJ
ARPITA AGRO PRODUCTS PVT LTD & ORS. – Appellant
Versus
ITC LIMITED – Respondent
FAO(OS) (COMM)-289/2024
Mr. Anirudh Bakhru, Ms. Vasundhra Bakhru, Mr. Kartikay Sharma, Ms. Vijay Laxmi Rathi, Mr. Sandeep Sethi, Mr. Arvind Nayar, Mr. Hemant Singh, Mr. Mamta Rani Jha, Ms. Shrutima Ehersa, Ms. Aiswarya Debadarshini, Ms. Sumer Seth, Ms. Shreya Sethi, Mr. Aksham Joshi
Trademark infringement occurs when a mark is deceptively similar to a registered trademark, especially when the infringer has previously assigned the trademark rights.
Headnote:
(A) Commercial Courts Act, 2015 - Section 13(1A) - Code of Civil Procedure, 1908 - Order XXXIX Rules 1, 2, and 4 - Trademark infringement - The court restrained the appellants from using the mark 'POWRNYM' as it was deceptively similar to the respondent's registered trademarks 'NIMYLE' and 'JOR-POWR' - The appellants had previously assigned these trademarks to the respondent and were found to be in violation of their contractual obligations. (Paras 1, 2, 6, 52)
(B) Trademark Infringement - The court emphasized that even a remote resemblance to assigned marks could justify an injunction against the appellants, who had a history of using the marks in question. (Paras 33, 34)
Facts of the case:
The appellants were previously engaged in manufacturing and selling products under the trademarks 'NIMYLE' and 'JOR-POWR', which were assigned to the respondent in 2018. The respondent discovered the appellants using the mark 'POWRNYM', which was similar to the assigned trademarks, leading to the suit. (Paras 3, 4)
Findings of Court:
The court found that the appellants' use of 'POWRNYM' was likely to cause confusion and deception among consumers, justifying the injunction. (Paras 52, 54)
Issues: The main issues included whether the appellants' mark was deceptively similar to the respondent's trademarks and whether the injunction was warranted based on the contractual obligations. (Paras 6, 52)
Ratio Decidendi: The court ruled that the appellants' adoption of 'POWRNYM' was a clear attempt to capitalize on the goodwill of the respondent's trademarks, constituting infringement and passing off. (Paras 34, 52)
Result: Appeal dismissed.
| Table of Content |
|---|
| 1. appeal filed under commercial courts act (Para 1 , 2) |
| 2. respondent's claims regarding trademarks (Para 3 , 4) |
| 3. appellants' defense against infringement (Para 5) |
| 4. court's view on prior business dealings (Para 6 , 7 , 8 , 9 , 10 , 11 , 12 , 13 , 14 , 15 , 16 , 17 , 18 , 19 , 20 , 21 , 22 , 23 , 24 , 25 , 26 , 27 , 28 , 29 , 30 , 31 , 32) |
| 5. court's reasoning on deceptive similarity (Para 33 , 34 , 35 , 36 , 37 , 38 , 39 , 40 , 41 , 42 , 43 , 44 , 45 , 46 , 47 , 48 , 49 , 50 , 51) |
| 6. court's dismissal of the appeal (Para 52 , 53) |
JUDGMENT :
NAVIN CHAWLA, J.
1. This appeal has been filed by the appellants under Section 13(1A) of the Commercial Courts Act, 2015 read with Order XLIII Rule 1(A) of the Code of Civil Procedure, 1908 (in short, „CPC‟), challenging the Order dated 08.10.2024 passed by the learned Single Judge of this Court in I.A. 19464/2023 and I.A.21893/2023 in CS (COMM) 698/2023, titled ITC Limited v. Arpita Agro Products Pvt. Ltd. & Ors. (hereinafter referred to as, „Impugned Order‟).
2. By the Impugned Order, the application under Order XXXIX Rules 1 and 2 of the CPC, being I.A.19464/2023, filed by the respondent herein (the plaintiff in the Suit) has been allowed, and the application filed by the appellants (defendants in the suit) under Order XXXIX Rule 4 of the CPC, being I.A. 21893/2023, has been dismissed, thereby, during the pendency of the above Suit, restraining the appellants, and all those acting on their behalf, from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in any natural cleaning products including but not limited to floor cleaners under the impugned mark 'POWRNYM' and/or any other mark which may be identical to or deceptively similar to or derived or be an imitation of the respondents registered trade marks 'NIMYLE', 'JOR-POWR' and/or any of 'NIM' family of marks, and/or any unauthorized use of the mark/label/packaging/get-up/trade dress, which is a colourable imitation and/or a substantial reproduction of the respondent‟s NIMYLE label/packaging/ get-up/trade dress, in any manner whatsoever, as the same is likely to cause confusion and/or deception, thereby amounting to infringement of the respondent‟s registered trademarks, copyright and passing off.
BRIEF FACTS: -
3. The respondent filed the aforementioned suit, contending therein that:-
A. The appellants nos. 1 to 3 were engaged in the business of manufacturing and selling herbal floor cleaners under the trademark „NIMYLE‟ and other trademarks from the „NIM‟ family from 1996 to 2018. In 2018, these trademarks were assigned by the appellant no. 1 to the respondent. The „NIMYLE‟ herbal floor cleaners were packaged in distinctive trade dresses and get-ups and were marketed by the appellant nos. 1 to 3 in bottles supplied by the appellants nos. 4 to 6. Thus, prior to the assignment, „NIMYLE‟ herbal floor cleaners were collectively manufactured, bottled, and marketed by the appellants.
B. Pursuant to the Asset Purchase Agreement dated 05.04.2018, the respondent acquired exclusive ownership rights, title, and interest in the trademarks, know-how, regulatory information, advertising material, as well as all formulations, specifications, manufacturing processes, quality processes, and design rights related to the production and manufacture of floor cleaners, insect repellents, toilet soaps, liquid hand wash, and scouring bars, as listed in Annexures A, B, and C of the said Agreement.
C. In furtherance of the Asset Purchase Agreement dated05.04.2018, the appellant no. 1, through the Brand Assignment Agreement dated 19.04.2018, executed by the appellant nos. 2 and 3, assigned several trademarks listed in Schedule A thereof, along with the associatedgoodwill, to the respondent. The assigned trademarks as enlisted in Schedule A of the said Brand Assignment Agreement are reproduced as under:
TABLE 2
| SI. NO. | Trade Mark | Class & Description of Good(s) | Registration No. & Date | User Claimed | Status & Validity | |
| 1. | NIMYLE (wo | |||||
