Back
SAYY Partnership Firm Wins Against 'SCALP SAYY' For
The has granted an to M/s SAYY Partnership Firm, restraining the defendant, Bhuva Ankitkumar Jaysukhbhai, a sole proprietor, from using the mark 'SCALP SAYY' for hair care and cosmetic products. Justice Jyoti Singh, presiding on , ruled that the defendant's mark was to the plaintiff's prior-used trademark 'SAYY', establishing a case for protection of in .
Background and Timeline
The plaintiff partnership firm adopted and used the trademark 'SAYY' since for soaps, perfumery, cosmetics, and hair care products. It filed a trademark application on , which has been accepted and published. The plaintiff built goodwill through online sales on platforms like and , its own website www.sayy.in, and social media promotion.
The defendant filed a trademark application for 'SCALP SAYY' on on a "proposed to be used" basis and began commercial exploitation for its 'Scalp Revival Hair Serum' around , marketing through , , and other e-commerce platforms.
The plaintiff alleged the defendant's adoption of 'SCALP SAYY' was dishonest and attempted to ride on the goodwill of the plaintiff's mark. It further contended the defendant copied the overall and packaging, resulting in actual confusion as evidenced by a consumer complaint dated .
Plaintiff's Arguments
, representing the plaintiff, argued that the plaintiff is the prior adopter and of the 'SAYY' mark. Despite knowledge of the plaintiff's prior rights, the defendant adopted a mark that wholly subsumes the plaintiff's mark. He submitted that the prefix 'SCALP' is merely descriptive of the goods and insufficient to distinguish the marks. Given identical trade channels and consumer base, there is a high likelihood of confusion. He also highlighted the copying of to misrepresent association with the plaintiff.
Court's Legal Analysis
Justice Jyoti Singh examined the rival marks and noted that the defendant's mark 'SCALP SAYY' subsumes the plaintiff's mark 'SAYY' in its entirety. The court observed that the plaintiff's prior registration application had been accepted and published, while the defendant's later application was still at a preliminary stage. The court held that , as a common law right, is enforceable even without registration.
The court stated:
"Defendant has attempted to sail close to the Plaintiff and encash on the formidable goodwill and reputation built by the Plaintiff in a short span of time."
Key Observations
Quoting from the order, the court observed:
"It is settled that infringement, which involves a mark-to-mark comparison, is predicated on registration of the proprietor’s mark, however,
is a common law right and can be enforced even in the absence of registration.
, there is deceptive similarity in the rival marks and in fact, Defendant’s mark SCALP SAYY subsumes Plaintiff’s mark SAYY (word) in entirety."
The court also noted that the lay in favour of the plaintiff, and would result if the injunction was not granted.
Court's Decision
The court restrained the defendant from manufacturing, marketing, selling, advertising, or dealing in goods under the mark 'SCALP SAYY' or any mark amounting to . It directed the defendant to remove all references to the mark from online platforms, including , , and social media, within two weeks. The plaintiff was directed to comply with within two weeks. The matter is listed for further hearing on .
The order also disposed of various applications, including granting exemption from pre-institution mediation under , in light of the urgent relief sought and citing the Supreme Court's decision in .
