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The Delhi High Court said that while trade mark registration offers statutory benefits, it does not obliterate prior common law rights established through actual use and accrued goodwill in the market.
The hearing in the present matter was concluded on 15-02-2023 and the Senior Examiner of Trade Marks passed the impugned order on 14-02-2024, i.e. after a period of one year.
The Court opined that had the plaintiff disclosed the facts, about the knowledge of the date of usage of the logo, then the ad interim relief without notice would not have been granted to the plaintiff. Even otherwise, the Court opined that the plaintiff had suppressed the material facts.
The Court stated that physicians, doctors, and chemists are knowledgeable in their field, however they are not infallible, and in respect of medicinal and pharmaceutical products there cannot be any leeway for mistakes, since even a possibility of a mistake may prove fatal to the consumers.
The Court stated that mere addition of prefix and/or suffix to the impugned mark is inconsequential, thus, it rejected Dubond Products India’s contention that the use of the word “HYDROBUILD” before “LW” in the impugned marks is sufficient to distinguish from the marks of Pidilite Industries.
Notwithstanding the abolition of IPAB and the power of rectification reverting to the High Court, a Trial Judge would have to stay in its hands once it is apprised of pendency of a rectification.
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“Even after the termination of their contractual relationship and the explicit withdrawal of rights to use the plaintiff’s trademarks and logos, defendants have unauthorisedly continued use of their deceptively similar marks.”
“What is striking, in this case, is that Respondent 1 has produced no document whatsoever which would prove their use since 1957, as claimed.”
To render an impression of authenticity, Defendant 1 is also circulating a forged Guarantee Agreement that mentions plaintiffs’ trade marks, trade name, registered address, Corporate Identity Number, and signatures of their founder.
Defendant earlier using the mark “Ashirvad by Aliaxis” and adopting “ARTISTRY” only after plaintiff’s “ARTIZE” mark gained repute, prima facie, shows that there is a conscious attempt to ride on plaintiff’s reputation.
After considering the inventory of the infringing products and the conduct of defendants, the Court decreed the suit in favour of plaintiff for Rs 50 lakh on account of damages and Rs 2 lakh are awarded as costs.
Plaintiff, Wow Momo made out prima facie case for grant of ex parte ad interim injunction and balance of convenience also lies in favour of plaintiff.
The present case is a classic example of typo-squatting, which relies on mistakes or typos made by internet users at the time of entering a website address/URL on the web browser and is bound to create confusion in the minds of the consumers.
Respondents are operating in the same industry of food and beverages and running cafes, and simply prefixing the word ‘BE’ is obviously causing deceptive similarity with petitioner’s registered mark having a prior user.
It is alleged that Defendants 1 and 2 are perpetrating fraud on the public by creating a false association with plaintiff, resulting in grave financial losses to the public.
“Defendant’s mark ‘RALLEYZ’ is constituted in such a manner so as to phonetically sit remarkably close, if not together, and squeezed with, plaintiffs’ mark ‘RALEIGH’. It is clearly in the core zone of deceptive similarity, likely to cause confusion and likely to have an association with plaintiff’s mark.”
“The findings of the reports of the Local Commissioners also clearly indicate that defendants are actively involved in the sale, distribution, and manufacturing of counterfeit HERO Oil, thereby infringing upon plaintiffs’ registered HERO marks.”
“The risk of having others bona fide using ‘JINDAL’ as a name for their products, and in the marks used on their products, is a risk that plaintiff consciously took, when it obtained registration of the mark ‘JINDAL’.”
“If ‘JAVA’ is being used by defendants in a way that capitalizes on its trade mark value established by plaintiff, and not merely in reference to the programming language, then it constitutes infringement.”