Delhi High Court: The present suit was filed by plaintiff seeking a decree of permanent injunction restraining defendant, and all those under it, from directly or indirectly dealing in products and services under the trade mark ‘RALLEYZ’ (‘impugned mark’) or any other trade marks/logo/device/domain name which might be identical or deceptively similar to plaintiff’s trade mark ‘RALEIGH’. Anish Dayal, J.*, granted an interim injunction in favor of plaintiff till the pendency of the suit and thus injuncted defendant, its partners, officers, agents, distributors, licensees, and all others acting on its behalf, from selling and/or offering for sale, advertising, directly or indirectly, dealing with bicycles or bicycle related services and products under the impugned mark ‘RALLEYZ’, or any other mark deceptively similar to plaintiff’s mark ‘RALEIGH’.
Background
Plaintiff was a company organized and existing under the laws of Switzerland and was operating the business of cycles internationally, and claimed to be the pioneer of cycling in Europe and owned a wide range of bicycle brands including ‘RALEIGH’. In India, the mark was in commercial use since 1939 and plaintiff claimed that its mark ‘RALEIGH’ was inherently distinctive in nature, having no specific dictionary meaning.
Plaintiff’s grievance pertains to defendant’s use of the impugned mark, which was claimed to be deceptively and phonetically similar, to plaintiff’s mark, and was being used for identical goods i.e., bicycles. Plaintiff, therefore, claimed rights confirmed by registration under Section 28 of the Trade Marks Act, 1999 (‘the Act’), and had filed the present suit due to infringement of their registered trade mark by defendant under Sections 29(1) and 29(2)(c) of the Act.
Analysis, Law, and Decision
The Court opined that plaintiff’s and defendant’s marks, at first glimpse, were not ‘identical’ since one was ‘RALEIGH’ and the other was ‘RALLEYZ’. The Court observed that the word ‘RALEIGH’, by virtue of the letters ‘eigh’ might invite a pronunciation somewhat akin to the word ‘sleigh’ which, as per the pronunciation key in the Oxford English Dictionary, was in the nature of ‘convey’. However, according to the online Cambridge English Dictionary, the word ‘RALEIGH’ might also be pronounced as ‘rah-lee’, thereby being somewhat akin to ‘rally’, with pronunciation in the nature of ‘keys’.
The Court further observed that defendant’s mark ‘RALLEYZ’, after the first set of syllables infused in ‘ral’ introduced letters ‘eyz’ and invited a pronunciation as for ‘rally(s)’ in the nature of ‘keys’. However, by using an ‘eyz’ formulation, the pronunciation could easily be as in ‘convey(s)’. Therefore, the word ‘RALLEYZ’ could either be pronounced akin to ‘keys’ or akin to the word ‘convey(s)’ and there could be no determination or fixation on how an Indian consumer might pronounce the same. Therefore, the Court opined that both ‘RALLEYZ’ and ‘RALEIGH’ involve similar kinds of variations in their pronunciation and each mirrors the other, with no real distinction and difference.
The Court opined that defendant’s mark was constituted in such a manner so as to phonetically sit remarkably close, if not together, and squeezed with, plaintiffs’ mark. It was clearly in the core zone of deceptive similarity, likely to cause confusion and likely to have an association with plaintiff’s mark.
The Court relied on K.R. Chinna Krishna Chettiar v. Sri. Ambal & Co., (1969) 2 SCC 131; Encore Electronics Ltd. v. Anchor Electronics & Electircals Pvt. Ltd., 2007 SCC OnLine Bom 147; and Indian Hotels Company Ltd. v. Ashwajeet Garg, 2014 SCC OnLine Del 2826, and opined that “it would be difficult to not grant the benefit of prima facie finding on a phonetic similarity between the two marks”.
The Court noted that defendant’s claim for use was from December 2021, however, the set of invoices for sale of bicycles which bear the mark ‘RALLEYZ’ was only from August 2022. Thus, the Court opined that plaintiff prima facie appeared to have been in the business of bicycles for more than a century, and had established prior use, at least, at the interim stage.
The Court noted defendant’s claim that due to the price range in which plaintiff’s and defendant’s bicycles were sold, the end user would necessarily be a sophisticated and discerning buyer, and therefore, there would be no confusion between the marks. The Court relied on Baker Hughes Ltd. v. Hiroo Khushlani, (2004) 12 SCC 628, wherein it was held that “phonetic similarity would be likely to cause “initial confusion” even amongst sophisticated and knowledgeable purchasers under a mistaken belief that there was some association between products of two different companies. Sophistication of a buyer would be too tenuous an element to assess in order to dilute the aspect of a strong prima facie case”.
The Court after noting defendant’s submission that delays in filing of the suit and the injunction application would preclude any relief in plaintiff’s favour, relied on Midas Hygiene v. Sudhir Bhatia, (2004) 3 SCC 90, wherein the Supreme Court held that “in cases of infringement of trade mark or copyright, mere delay in bringing action was not sufficient to defeat the grant of injunction”.
The Court opined that if defendant’s sales figures were to be believed, backed by defendant’s avowed commercial heft, denial of interim injunction in plaintiff’s favour, in all likelihood, would obliterate, erode, and efface the existence of ‘RALEIGH’ in India, despite its earliest registration since 1942, use since 1939, and a history that traces back to the pre-independence era.
Thus, the Court granted an interim injunction in favor of plaintiff till the pendency of the suit and thus injuncted defendant, its partners, officers, agents, distributors, licensees, and all others acting on its behalf, from selling and/or offering for sale, advertising, directly or indirectly, dealing with bicycles or bicycle related services and products under the impugned mark ‘RALLEYZ’, or any other mark deceptively similar to plaintiff’s mark ‘RALEIGH’.
[Swiss Bike Vertriebs Gmbh Subsidiary of Accell Group v. Reliance Brands Ltd., 2024 SCC OnLine Del 1605, decided on 4-3-2024]
*Judgment authored by: Justice Anish Dayal
Advocates who appeared in this case :
For the Plaintiff: Chander M. Lall, Senior Advocate; Manisha Singh, Abhai Pandey, Varun Sharma, Swati Mittal, Yashi Agrawal, Gautam Kumar, Abhinav Bhalla, Manish Aryan, Shivani Singh, Dhruv Tandon, Advocates
For the Defendant: Ajay Sahni, Chirag Ahluwalia, Mohit Maru, Advocates
Buy Trade Marks Act, 1999 HERE
