Interim Order 39

Order Details: COPY OF ORDER
Pdf Text: IN THE COURT OF MS VINEETA GOYAL,
DISTRICT JUDGE (COMMERCIAL)-03,
PATIALA HOUSE COURTS, NEW DELHI
CS (COMM) : 286/2023
In the matter of:
B.L Agro Industries Ltd.
…..... Plaintiff
Versus
Nutrivative Foods Private Limited
...... Defendant
Appearance: Sh. Rajesh Sharma and Sh. Shailender Kumar,
Ld. Counsels for the plaintiff
Ms. Kangan Roda, Sh. Tanishq Sharma and
Sh. Sarthak Sharma, Ld. Counsels for defendant.
ORDER
02.05.2025
1. The present order will dispose off an application being under
Order XXXIX Rules 1 and 2 of Code of Civil Procedure, 1908 (in
short CPC) filed by the plaintiff.
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2. The present suit has been filed for permanent injunction
restraining infringement of trademark, passing off, rendition of
accounts, damages etc.
3. The plaintiff, B. L. AGRO INDUSTRIES LIMITED
(formerly known as: B. L. Agro Oils Limited), Parsakhera
Industrial Area, Bareilly and Delhi office at 4, Janpath Bhawan,
Janpath Road, Janpath, New Delhi 110001, is a limited company
incorporated under the Indian Companies Act, 1956. The plaintiff
company claims to be carrying on its old and established business
as manufacturer and merchant of a vast range of products including
edible oils, ghee, fats, milk products, dairy products, pickles,
cheese, butter, lassi, chhach, curds, soups, preparations for making
soups, mixes for making soups, soup powders, sea foods, milk
shakes, flavoured milk, dried milk, milk powder, protein milk,
murabba, meat, fish, dried and cooked fruits and vegetables, jellies,
jams,eggs, scanned, processed and dried pulses, coffee, tea, cocoa,
sugar rice, pulses, tapioca, sago, flour and preparations made from
cereals, bread, pastry, confectionery, ices, honey, treacle, yeast,
baking powder, salt, mustard, vinegar, sauces (condiments),
namkeens, sweets, spices, biscuits, cakes, candy, chocolate,
condiments, pepper, popcorn, pizza, macaroni, pasta, corn flakes,
makhana, ready to eat snacks, mangodi, atta, maida, besan, sooji,
dalia, seeds, edible flaxseed (un-processed), flaxseed for animal
consumption and flaxseed meal for animal consumption etc. under
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the name and style of the aforesaid B. L. AGRO INDUSTRIES
LIMITED.
3.1. The plaintiff is the proprietor of trade mark NOURISH for
aforesaid goods falling in Classes 29, 30 and 31 of the Trade Marks
Act, 1999. The plaintiff adopted the trade mark NOURISH for
edible oils, ghee, fats, milk, dairy products etc. on 19.06.2007 and
with passage of time, extended the use of mark NOURISH for
products, including but not limited to pickles, cheese, butter, lassi,
curds, soups, milk shakes, flavoured milk, dried and cooked fruits
and vegetables, jellies, jams, pulses etc. The plaintiff is the
registered proprietor of mark NOURISH in Class 30 for rice, atta,
tea, spices etc and also the registered proprietor of mark NOURISH
in Class 31 w.e.f. 01.01.2017. Its various applications are also
pending under the Trade Marks Act,1999.
3.2. The plaintiff has claimed that it has got exclusive rights for
the mark NOURISH in all the registrations and no disclaimer
condition for NOURISH is imposed on any registration. The
plaintiff’s registrations are renewed and valid upto date. The
plaintiff’s labels/artworks under title NOURISH are also registered
under the Copyright Act, 1957. The plaintiff further claimed that in
order to protect its goodwill and reputation of its prior user,
adoption and registered trademark for the goods under the Classes
29,30 and 31, the plaintiff had further opposed various applications
for identical mark such as, NOURISH ORGANICS, NOURISH
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WELL, BRAND NOURISH, V NOURISH, COCO NOURISH
including LILYOU BY NOURISH YOU of the defendant’s
application for Class 30.
3.3. The plaintiff submitted that name NOURISH slowly become
synonymous of quality so much so its products have become a
major hit in the market and trade. Being the proprietor and prior
adopter, it has got the exclusive right to use the mark ‘NOURISH’
for its products. Further, the plaintiff’s products have been
advertised through various medias. It runs its own website
www.blagro.org and www.nourishstore.co.in. The increase in sales
of the plaintiff has been from Rs. 2.45 crores in the year 2012-13 to
Rs. 466.67 crores in the year 2022-23.
3.4. The plaintiff submitted that on 03.05.2023, the plaintiff for
the first time came to know about defendant’s product launched as
Millet milk, flour, seeds, muesli etc bearing identical and similar
trademark i.e. NOURISH YOU. The defendant advertised the mark
NOURISH YOU in newspaper ‘THE HINDU BUSINESS
TIMES’, Delhi on 29.03.2023 which was noticed by the plaintiff
on 03.05.2023. The plaintiff, thereafter, learnt that defendant had
applied for registration of mark ‘NOURISH YOU’ on 05.01.2023
in Class 29 under nos. 5751543 and 5751544 for dairy products
and dairy substitutes, milk based beverages etc on all India basis
claiming use as ‘proposed to be used’ which are yet pending. The
plaintiff has already opposed application Nos. 4364009 and
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5158937 filed in Class 30 by the defendant for the mark NOURISH
YOU under opposition Nos. 1118222 and 1139946 respectively.
3.5. In the present application, the plaintiff has submitted that
defendant is neither registered proprietor nor the prior adopter of
mark NOURISH YOU (impugned mark). The adoption and use of
impugned mark in respect of same goods i.e. dairy products, milk
products, food products, tea, spices, noodles, flour etc. infringes the
valuable rights of the plaintiff. The use of impugned mark is only
to cause confusion and deception in minds of purchaser and would
create an impression that defendant’s products are in some way
connected with products of plaintiff, this is contrary to the honest
practices in commercial matter and detrimental to the distinctive
character of plaintiff’s prior adopted, prior used, well established
and registered mark NOURISH. Ld. Counsel for plaintiff submitted
that a
prima facie case is made out. The balance of convenience
lies in its favour as the plaintiff is the prior user of registered
trademark. Furthermore, the plaintiff would suffer irreparable loss
and injury if the defendant did not restrain manufacturing,
marketing and sale of products i.e. Millet milk, dairy products,
substitute seeds, muesli, flour etc and allied and cognate under the
mark NOURISH YOU.
4. The defendant on the other hand, resisted the application on
account of various reasonings. First and foremost reason relied by
the defendant is that the defendant’s brand ‘nourish you’ is India’s
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first superfood India to produce and sell homegrown, organic
quina and Chia seeds and is carrying on its business under the
name and style of ‘nourish you’ from year 2015. It is built by
young entrepreneurs with a vision of creating a sustainable world
where everyone is the healthiest version of themselves, nourish you
brings ancient food wisdom to modern day customer and helps
them switch to a healthier lifestyle with plant based superfoods.
Recently in the year 2023, the defendant launched ‘nourish you’,
first plant-based vegan and lactose-free alternative i.e. Millet Milk.
This new product marks the defendant’s foray into the alternative
dairy category and is an outcome of two years of research in
partnership with ICRISAT (International Crops Research Institute
for the Semi-Arid Tropics) on innovative millet-based products
undertaken by ‘nourish you’. The defendant products / superfoods
have an extremely low carbon and water footprint, ensuring
sustainable production practices. It has partnered with local farmers
to reduce the distance between the farm and the plate, minimizing
transportation and carbon emissions. The defendant has been
registrant of website http://nourishyou since October, 20, 2014.
4.1. Ld. Counsel for defendant contended that the defendant’s
mark and plaintiff’s mark is structurally, visually and phonetically
different. The two marks when compared as a whole are
completely dissimilar to each other. The trade dress of both
plaintiff and defendant are completely different. Moreover,
defendant deals in superfood, muesli, oats, millets etc, whereas,
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plaintiff deals in general and conventional products such as ghee,
oil, unpolished dals etc.
4.2. Ld. Counsel for defendant further submitted that the plaintiff
cannot claim any monopoly over generic word ‘NOURISH’. There
are multiple third parties in the market which are trading and
operating in the business under different marks containing the word
‘NOURISH’. The registration of a mark in one class does not give
monopoly to the proprietor in all the classes when the said party is
not using said trademark in respect of certain goods falling under
the same class, therefore, plaintiff cannot claim exclusive
proprietory rights of the word NOURISH when the mark is being
used in respect of different goods by the defendant.
4.3. With regard to the prior use, ld. Counsel for the defendant
pointed out that the defendant has filed documents to establish that
they are prevalent in the market since 2015 in Class 30. With
regard to Class 29, the only product which plaintiff is
manufacturing and marketing presently is Millet milk and there is
no product of plaintiff which is available in the market till date
which is identical or similar to that of defendant.
4.4. Ld. Counsel for defendant further submitted that no case has
been made out by the plaintiff for grant of prayer as made as the
plaintiff has suppressed the material facts. The plaintiff has itself
pleaded that plaintiff had filed opposition on 09.08.2021 and
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inspite of having complete knowledge regarding existing of
products and market presence and having opposed the application,
in order to cover its delay and latches, the plaintiff has alleged that
it came to know about defendant on 03.05.2023.
4.5. Lastly, it is submitted by ld. counsel for the defendant that
defendant has registered trademark ‘nourish you (word)’ under
Class 35 from 25.08.2015 and ‘nourish you’ device under Class 35
and Lil.You by nourish you (device) and word vide no. 5158938
and no. 5158939 respectively under Class 5 from 14.10.2021, the
suit deserves to be dismissed as per Section 31 of the Trade Marks
Act, 1999, registration is
prima facie evidence of validity and the
defendant has right to use the same. The plaintiff has also
concealed and suppressed the fact that there are multiple trademark
applications applied by plaintiff which has been either opposed by
third party, objected, refused and abandoned to file Trademark
registry under Classes 29, 30 and 31 and has mentioned several
trademarks in the synopsis wherein status of the trademark were
wrongly provided.
4.6. Ld. Counsel for defendant has relied upon the cases,
i.Prasar
Bharti v. Dish TV India Ltd, 2024, SCC Online Del 1694; ii.
Britannia Industries v. ITC Ltd, (2021) 86 PTC 618; iii. Pianotist
Appl. (1906) 23 RPC 774; iv. Soothe Healthcare Pvt Ltd v/s Dabur
India Ltd, 2022 SCC Online Del 645; v. Pidlite Industries Ltd vs.
Sanjay Jain & Anr, 2024 SCC Online Del 2168; vi. Sanjha Chulha
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v/s Sanjha Chulha & Ors (2023) 93 PTC 373; vii. Nandhini Deluxe
v. Karnataka Co-Operative Milk Producers Federation Ltd. 2018
(9) SCC 183; viii. Vishnudas Trading as Vishnudas Kishendas v.
Vazir Sultan Tobacco Co. Ltd; ix. Mittal Electronics v. Sujata
Home Appliances (P) Ltd & Ors 2020 (83) PTC 358 Del; x. S.
Syed Mohindeen vs. P. Sulochana Bai 1989 ILR (1) Delhi 115; xi.
Khadi & Village Industries Commission v. Girdhar Industries &
Anr, 2023 SCC Online Del 8446, xii. Ramjas v/s Union of India,
(2010) 14 SCC 38; xiii. Columbia Sportswear Company vs. Harish
Footwear, (2017) 70 PTC 489 and xiv. Vasundhra Jewellers Pvt Ltd
v/s Kirat Vinodbhai, MANU/DE/4006/2022.
5. Countering the aforesaid reasons, ld. Counsel for the
plaintiff submitted that defendant is claiming to be prior user of
impugned mark for its products falling under Class 30. The
defendant has not filed any document to show the use of mark
‘nourish you’ for any products falling in Class 5, 29 and 30. He
further submitted that prior to 29.03.2023, the defendant never
used mark ‘nourish you’ on its product falling under afore-stated
Classes. In application no. 2917291 in Class 30 filed on
02.12.2019, the defendant filed manufactured documents. The very
first bill is dated 13.07.2014 which also bears GST no. (which law
itself came into existence w.e.f. 01.07.2017). On bills dated
27.11.2014 and 08.03.2015 also the GST number is mentioned. The
documents upto 2018 filed by defendant bear the mark ‘nourish
you’ but only the device mark. Further, in the application nos.
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5273751, 5273961 and 5273812 in Class 30, the plaintiff’s mark
was cited as conflicting marks. The defendant replied that marks
are different though claim to be using since 2014. Further, the
defendant has taken stand in written statement as well as reply that
defendant claims user since 2015 whereas, in the application before
Registrar of Trademarks, the defendant claimed use w.e.f.
27.11.2014. Ld. Counsel further submitted that since the defendant
himself applied for registration of trademark ‘nourish you’, it is
estopped under law to allege that the mark ‘NOURISH’ to be
generic/descriptive. The plaintiff further asserted that since plaintiff
opposed defendant’s application in Class 30, the use of impugned
mark by defendant is at its own peril. Ld. Counsel further
explained that plaintiff in the plaint has not relied upon the
trademark nos. 44360555 and 5401616, only stated in the synopsis.
5.1. Ld. Counsel for plaintiff has relied upon the following
cases:-
i.Pankaj Goel v/s Dabur India Ltd, 2008 (38) PTC 49 (Del.)
DB, ii. Bata India Limited v/s Chawla Boot House & Anr, CS
(Comm)-110/2019, decided on 16.04.2019, iii. Bayerische Motoren
Werke AG v/s Om Balajee Automobile (India) Pvt Ltd, 2020 (82)
PTC 194 (DEL); iv. Rajnish Aggarwal & Ors v/s Anantam, 2010
(43) PTC 442 Del; v. Sunil Mittal & Anr v/s Darzi on Call, 2010
(70) PTC 346 Del; vi. Burger King Corporation v/s Ranjan Gupta
& Ors, 2023/DHC/001661; vii. Astral Poly Technik Limited & Anr
v/s Astralglee Through its Proprietor Ms. Pooja Surendra Ayre &
Ors, 2022(92) PTC 513 (Del); viii. Chandra Kishore Chaurasia v/s
CS(Comm)- 286/2023 Page 10 of 28
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RA Perfumery Works Private Limited, 2022/DHC/004454; ix.
United Biotech Pvt Ltd v/s Orchid Chemicals & Pharmaceuticals
Ltd, 2012 (50) PTC 433 (Del) (DB); x. Order dated 30.11.2024, in
case of BL Agro Industries Ltd v/s Nurrish Elite Diversities LLP,
passed by court of Sh. Vidya Prakash, Ld. District Judge,
Commercial Court-02, PHC, New Delhi; xi. Under Armour Inc.v/s
Aditya Birla Fashion & Retail Ltd, Neutral Citation:
2023:DHC:2711; xii. Marico Limited v/s Pratik Goyal & Anr, 2014
(60) PTC 185 Del; xiii. Vasundhra Jewellers Pvt Ltd v/s Kirat
Vinodbhai Jadvani & Ors, MANU/DE/4006/2022; xiv. K.E
Mohammed Aboobacker by his duly agnt A.A.S Shaik Dawood
v/s Nanikram Maherchand and Parmannad Maherchand trading as
Satguru Traders, decided on 25.06.1997, CS No. 53 of 1957.
6. As it is evident from the narration of facts and submissions
made by ld. Counsels for parties, the present dispute between the
parties is use of mark ‘nourish you’ by the defendant. The plaintiff
claims to have adopted the trademark ‘NOURISH’ in year 2007 for
the goods falling in Class 29 and for the goods falling in Class 30
and 31 since 2017. On the other hand, the defendant is claiming its
adoption of trademark ‘nourish you’ and its user since 2015. At this
juncture, it is relevant to refer to documents annexed to the
application no.2917291 in Class 30 filed by defendant before
Trademark Registry claiming to be using the trademark ‘nourish
you’ (device) in Class 30 since 27.11.2014, which reveals that bills
dated 13.07.2014, 27.11.2014 and 08.03.2015 bear GST number.
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Similarly, these bills do not mention of the mark ‘nourish you’.
Though the defendant tried to justify that defendant had printed the
invoice in the new/present format pursuant to GST details have
been printed on the invoices even before the year 2017, this would
not come to the rescue of the defendant to establish that defendant
used the mark ‘NOURISH’ since 2015, rather shows a deliberate
attempt to show its adoption in the year 2015. The purported
explanation given by defendant appears not to be plausible. It is
well settled that in absence of credible explanation with regard to
adoption, Courts would readily infer dishonest adoption and pass
an order of injunction against such users. There is no dispute that
plaintiff has 53 registrations in trademark for Class 29, 6 in Class
30 and 5 in Class 31. The plaintiff has filed evidence to show its
prior adoption and use of the mark NOURISH stand alone also
since 2007 in the form of registration certificates, invoices starting
from year 2012, advertising and social media platforms. These
documents would clearly
prima facie show that use of the mark
NOURISH by the plaintiff was prior to the defendant’s adoption of
the mark ‘nourish you’ and the defendant is later entrant in the
field.
7. Coming to the defendant’s arguments that its mark is totally
different from that of plaintiff and plaintiff’s products are general
and conventional such as, ghee, oil, unpolished dals etc and
defendant’s foods are superfoods such as muesli, oats etc and no
monopoly can be claimed by plaintiff over the word and entire
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Class is misplaced. Firstly, assuming that plaintiff deals with
general and conventional products, the use of NOURISH still
amounts to infringement as these products are allied and cognate to
each other and sold through the same trade channel i.e. grocery
shop. It is useful to refer to the observation made by Hon’ble Court
in case of
Mayo Foundation For Medical Education and Research
vs. Bodhistva Charitable Trust, 2023 DHC:003799, wherein it was
held that,
“12 In Corn Products (supra), the Supreme Court held that
if a trade connection can be established between the two
commodities having similar trademarks there is likelihood
of confusion or deception in the market. In the said case the
Supreme Court held that there was a trade connection
between glucose manufactured by the appellant and biscuits
manufactured by the respondent. Similarly, in FDC (supra)
a Co-ordinate Bench of this Court held that
'pharmaceuticals preparations' and 'booking of appointment
of doctors' are allied and cognate as they stem from same
healthcare sector and hence, granted an interim injunction
against the defendants as the defendants were using
identical trademark in respect of allied and cognate
services.
x x x x x x x x
14. In the present case also, the plaintiff had registration
under Class 16. Applying the ratio of the aforesaid
judgments to the facts of the present case, in my view,
'hospitals' and 'education services providing courses of
instruction in medicine and health care' would be allied and
cognate to 'medical journals and periodicals' as all of them
relate to the healthcare and medical education sector. Since,
the defendants are using identical marks in respect of
services that are similar to the services of the plaintiff, it is
likely to cause confusion in the public and is also likely
show an association with the registered trademarks of the
plaintiff. Therefore, a prima facie case of infringement in
terms of Section 29(2)(a) of Trade Marks Act, 1999 is made
out.
15. The plaintiff obtained registration of the mark 'MAYO
CLINIC' under Class 41 on 26th August, 2008, whereas the
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defendants began to use 'MAYO' for education purposes
only in the year 2011/2012 as admitted by them in
paragraph 30 of their reply to I.A.22385/2022. Therefore,
the defence of prior use under Section 34 of the Trade
Marks Act, 1999 would not be available to the defendants
in respect of its medical education services.”
8. Section 2 (m) of the Act,1999 gives an inclusive definition
of mark which includes amongst others ‘word’. Under Section 29
of the Act, 1999, a registered trademark is infringed if (a) the mark
is identical and is used in respect of similar goods or services; b)
the mark is similar to the registered trademark and there is an
identical or similarity of goods or services covered by the
trademark; c) the trademark is identical and is used in relation to
identical goods or services and that such use is likely to cause
confusion on the part of public or is likely to be taken to have an
association with the registered trademark. Section 2 (1) (h) defines
deceptively similar as- A mark shall be deemed to be deceptively
similar to another mark if it is so nearly resemble that other mark
as to be likely to deceive or cause confusion. A mark is said to be
infringed by another person, if even without using the whole of it,
the later uses one or more of its essential features.
9. In the instant case, ‘NOURISH’ is an essential feature and
dominant feature of the plaintiff. The plaintiff has consistently
taken the stand that said mark is prominent. In order to discern, the
similarities between the comparing marks of plaintiff and
defendant, a side by side comparison is depicted as under :-
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Defendant Plaintiff
10. The above shows that both marks incorporate ‘NOURISH’,
the use of mark ‘you’ by the defendant would not mitigate the
visual and phonetical resemblance as judicial precedents highlights
that dominant element of a mark place a crucial role in the
likelihood of confusion analysis. It appears that essential features
of the trademark of the plaintiff has been adopted by the defendant
and in view thereof the goods may be different would not be
relevant and would be immaterial. The test of similarity of goods
is to be considered from a business and commercial point of view.
It is well settled that the nature and composition of goods, the
respective uses of the articles and the trade channels through which
they are brought and sold all go into consideration in this context.
Further, the registration of word mark itself is
prima facie evidence
of validity of such registration as the registration of mark gives the
owner of the mark a valuable and indefeasible right to use it
exclusive and protect such mark as opposed to an action based on
passing of which solely rests on the concept of prior user.
11. In case of
Amritdhara Pharmacy vs. Satya Deo Gupta, 1962
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SCC OnLine SC 13, it was held that,
“7. Let us apply these tests to the facts of the case under
our consideration. It is not disputed before use that the two
names 'Amritdhara' and 'Lakahmandhara' are in use in
respect of the same description of goods, namely, a
medicinal preparation for the alleviation of various
ailments, Such medicinal preparation will be purchased
mostly by people who instead of going to a doctor wish to
purchase a medicine for the quick alleviation of ;their
suffering, both villagers and townsfolk, literate as well as
illiterate. As we said in Corn Products Refining Co. v.
Shangrila Food Products Ltd (1); the question has to be
approached from the point of view of a man of average
intelligence and imperfect recollection. To such a man the
overall structural and phonetic similarity of the ,two names
'Amritdhara' and 'Lakshmandbara' is, in our, opinion likely.
to deceive or ; cause confusion. We must consider, the
overall similarity of the two composite words 'Amritdhara'
and 'Lakshman- dhara'. We do not think that the learned
Judges of the High Court were right in Paying that no
Indian would mistake one 'for the other. An unwary
purchaser of average intelligence and imperfect recollection
would not, as the High Court supposed, split the name into
its component parts and consider the etymological meaning
thereof or even consider the meanings of the composite
words as 'current of nectar' or current of Lakshman'. He.
would go more by the overall structural and phonetic
similarity and the nature of the medicine he has previously
purchased, or has been told about, or about which has other
vise learnt and which he wants to purchase. Where the trade
relates to goods largely sold to illiterate or badly educated
persons, it is no answer to say that a person educated in the
Hindi language would go by the entymological or
ideological meaning and, see the difference between
'current of nectar' and current of Lakshman'. 'Current of
Lakshman in a literal sense has no meaning to give it
meaning one must further make the inference that the
'current or stream' is as pure and strong as Lakshman of the
Ramayana. An ordinary Indian villager or townsmen will
perhaps know Lakshman, the story of the Ramayana being
familiar to him but we doubt if he would etymologine to the
extent of seeing the so called ideological difference
between 'Amritdhara'and 'Lakshmandhara'.. He would go
more by the similarity of the two names in the context of
the widely known medicinal preparation which he wants for
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his ailments.
8. We agree that the use of the word 'dhara' which literally
means 'Current or stream' is not by itself decisive of the
matter. What we have to consider here is the overall
similarity of the composite words, having regard to the
circumstance that the goods bearing the two names are
medicina l preparations of the same description. We are
aware that the admission of a mar is not to be refused,
because unusually stupid people, "fools or idiots", may be
deceived. A critical comparison of the two names may
disclose some points of difference. but an unwary purchaser
of average intelligence and imperfect recollection would be
deceived by the overall similarity of the two names having
regard to the nature of the medicine he is looking for with a
somewhat vague recollection that he had purchased a
similar medicine on a previous occasion with. a similar
name. The trade mark is the whole thing the whole word
has to be considered a the case of the application to register
'Erectiks' (opposed by the proprietors of the trade mark
'Erector') Farwell, J. said in William Bailey (Bir- mingham)
Ltd.8 Application (1) : "I do not think it is right to take a
part of the word and compare it with a part of the- other
Word; one word must 'be considered as a whole and
compared with the other word as a whole................ I think
it is a dangerous method to adopt to divide the word up, and
seek to distinguish a portion of it from a portion of the other
word".
xxxxxx
12. On a consideration of all the circumstances, we have
come to the conclusion that the overall similarity between
the two names in respect of the same description of goods
was likely to cause deception or confusion within the
meaning of s. 10(1) of the Act and Registrar was right in the
view he expressed. The High Court was in error taking a
contrary view”
12. In case of
South India Beverages vs. General Mills
Marketing, 2014 SCC OnLine Del 1953, it was held that
“23. It is also settled that while a trademark is supposed to
be looked at in entirety, yet the consideration of a trademark
as a whole does not condone infringement where less than
the entire trademark is appropriated. It is therefore not
improper to identify elements or features of the marks that
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are more or less important for purpose of analysis in cases
of composite marks.
X x x x x x x
25. Therefore, the submission of the appellant-defendant
predicated upon the principle of 'anti-dissection' that action
for infringement would not lie since use of the word
'D'DAAZS' does not result in complete appropriation of the
respondent-plaintiff's mark 'HAAGEN DAZS', which is to
be viewed as an indivisible whole, is liable to be rejected.
26. Dominant features are significant because they attract
attention and consumers are more likely to remember and
rely on them for purposes of identification of the product.
Usually, the dominant portion of a mark is that which has
the greater strength or carries more weight. Descriptive or
generic components, having little or no source identifying
significance, are generally less significant in the analysis.
However, words that are arbitrary and distinct possess
greater strength and are thus accorded greater protection.
[174 F. Supp. 2d 718, 725 (M.D. Tenn. 2001) Autozone,
Inc. v. Tandy Corporation]”
13. in the case of
Cadila Healthcare Ltd. vs. Cadila
Pharmaceuticals,
2001(5) SCC 73 while laying down the criteria of
dictating deceptive similarities, the Hon’ble Apex Court observed
that various factors should be taken into account to determine
whether the mark is deceptive which includes the nature of the
goods ; or the services to which mark relates to ; b) resemblance
between the two marks ; c) the type of mark whether it is a word or
a symbol or a phrase ; and d) target audience / customer. In the
present case, marks in question are not only phonetically and
structurally similarly, but it is to be noted that there is significant
potential of confusion among both trade partners and general
consumers. Given that both plaintiff and defendant targets same
class of consumers and utilized same distribution channels, the risk
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of confusion is further heightened and there is possibility of
leading them to believe that defendant’s products are affiliated with
the plaintiff. Further, it is evident that defendant has added ‘you’
with word ‘nourish’. It is well beyond the realm of coincidence and
shows a deliberate attempt to come as close to that of plaintiff.
14. Further, in case of
Walter Bush Nell Private Limited and Ors
v/s Miracle Life Sciences & Anr, reported as 2014 (59) PTC 339
(Del), the Hon’ble High Court lays down that when the defendant
has not challenged the registered trademark of plaintiff and there is
no material on record to show that it is a generic name, the court
must recognize that a registered trademark holder is enjoying an
exclusive and statutory rights which would be adequately
protected. It was also held that unless the trademark challenged by
defendant is cancelled or ratified, it is not the practice to infringe
the same in an action for infringement of trademark.
15. In the case in hand, no application has been filed by the
defendant before the Registrar for cancellation of trademark
adopted by the plaintiff.
16. Coming to the next plea of the defendant that there are some
other third party entities that are using the word ‘nourish’ as a part
of their brand/mark/label and it is common to the trade, it is settled
legal proposition that use of a registered mark or essential features
thereof by others is not a defence available to the defendant in an
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action for infringement and passing off. Merely because plaintiff
has chosen to sue one infringer first and has not at such time sue
others for infringement is also no defence in an action for
infringement and passing off and it is also settled law that it is
prerogative of the plaintiff/registered proprietor/owner of a mark
whom to sue so as to protect its rights. Furthermore, the plaintiff
has demonstrated that he has time and again taken legal action
against the infringers of the trademark and has secured orders in its
favour from various other courts against the use of deception
similar name by third parties.
17. Further, to determine whether the goods under mark ‘nourish
you’ can create a deception as to the source or origin, it is useful to
refer to
Baker’s Hauges Limited v/s Hiroo Kaushalani, 74 (1998)
DLT 715 wherein it was observed that:-
“There can be an informed class of purchasers
who have a degree of knowledge and a sense of
discrimination more substantial than that of an ordinary
purchaser, but the mere fact that the customers are
sophisticated, knowledgeable and discriminating does
not rule out the element of confusion if the trade
marks/trade names/corporate names of two companies
are identical or if the similarity between them is
profound. In several cases it has been held that initial
confusion is likely to arise even amongst sophisticated
and knowledgeable purchasers under a mistaken belief
that the two companies using the same corporate name,
trading name or style are inter-related. It is the
awakened consumers who are more aware of the
modern business trends such as trade mark licensing,
mergers, franchising, etc. It is this class of buyers who
are likely to think that there is some sort of association
between the products of two different companies when
they come across common or similar trade names or
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corporate names or trading styles used by them. The
sophistication of a buyer is no guarantee against likely
confusion. In some cases, however, it is also possible
that such a purchaser after having been misled into an
initial interest in a product manufactured by an imitator
discovers his folly, but this initial interest being based
on confusion and deception can give rise to a cause of
action for the tort of passing off as the purchaser has
been made to think that there is some connection or
nexus between the products and business of two
disparate companies.”
18 In case of
Punjab Tractors Ltd. vs. Pramod Kumar Garg,
reported at 85 (2000) DLT 567, the Hon’ble Delhi High Court held
that,
“…….any criteria for determining what is likely to
deceive or cause confusion. Therefore, every case has to
be judged on its own particular facts. What is to be
considered is whether the trade mark by its resemblance
to another trade mark already on the register is likely to
deceive in the normal course of its legitimate use in the
trade. In coming to the aforesaid conclusion it is to be
kept in mind that the object of Section 12(1) of the
Trade and Merchandise Marks Act is to prevent
registration of a trade mark which is likely to deceive or
cause confusion by virtue of a registration already
granted to another trader. The broad question therefore,
is whether the goods are such that by virtue of some
similarity, affinity or other circumstance the purchasing
public will consider them as coming from the same
source if marketed under similar trade marks. The
approach has to be from a business and commercial
point of view and the test of sameness and description
should be a business an practical test. Various decisions
pronounced by the courts have laid down factors to be
taken into consideration for deciding whether the goods
are of the same description or not. In judging the same
the nature and composition of the goods, their
respective usages and functions and the trade channels
through which they are bought and sold are to be taken
notice of.”
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19 In the instant case, the ground of ld. Counsel is to be rejected
as in deciding the question with regard to similarity between two
marks, the marks have to be considered as a whole. Thus, the
addition of word ‘you’ as a suffix will not change the name of
substantial trademark. Coming to other submissions of the
defendant that the plaintiff cannot be permitted to be monopolized,
this argument is devoid of any substance for the reason that
defendant itself has applied for the registration of trademark
described by it ‘nourish you’ as the leading and essential feature.
20 So far as the argument of the defendant that the plaintiff
inspite of having knowledge regarding its products and filing
opposition to its application on 09.08.2021 in order to cover its
delay and latches has concocted that plaintiff came to know on
03.05.2023, is concerned, it is explained by the plaintiff that
plaintiff first time came to know that the defendant had launched
its product bearing the identical /deceptively similar mark when the
defendant had advertised the mark ‘nourish you’ in newspaper ‘The
Hindustan Business Line, Delhi’ on 29.03.2023, therefore, the
question of delay in filing the suit if any does not arise. In this
reference, in
Tata Oil Mills Co.Ltd v/s Wipro Limited, AIR 1986
DEL 345, the Hon’ble Court has held that mere delay in filing of
suit for infringement is not fatal, the relevant portion thereof is
reproduced herein below:-
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7. There is then the question of delay. Learned counsel for the
respondents had urged that the delay is fatal to the grant of an
injunction. We are not so satisfied. A delay in the matter of seeking an
injunction may be a ground for refusing an injunction in certain
circumstances. In the present case, we are dealing with a statutory right
based on the provisions of the Trade and Merchandise Marks Act, 1958.
An exclusive right is granted by the registration to the holder of a
registered trade mark. We do not think that statutory rights can be lost
by delay. The effect of a registered mark is so clearly defined in the
Statute as to be not capable of being mis-understood. Even if there is
some delay, the exclusive right cannot be lost. The registered mark
cannot be reduced to a nullity. The principles governing other types of
injunctions are not be readily applied to a case like the present. Of
course, if it was a case of a similar mark as opposed to the same mark,
the concurrent user coupled with delay might be a ground for refusing
an injunction. However, when the same mark-is being used, in a sense,
the public is deceived into purchasing the defendant"s good on the
belief that they are the plaintiff"s goods, so a registered trade mark is a
casualty, it is the duty of the Court to protect the registered mark. That
is the whole concept of registration. So, we cannot refuse an injunction
even if there is some delay especially when the mark is the same. To
refuse the injunction would tantamount to permit a fraud being
practised on unwary customers. There is a matter of principle on which
the Court cannot refuse the injunction."
21. Further, in the case of
Midas Hygeine Industries P. Ltd v/s
Sudhir Bhatia and ors (2004) 3 SCC 90, it has been held by
Hon’ble Apex Court:-
The law on the subject is well settled. In cases of infringement either of
Trade Mark or of Copyright normally an injunction must follow. Mere
delay in bringing action is not sufficient to defeat grant of injunction in
such cases. The grant of injunction also becomes necessary if it
prima
facie appears that the adoption of the Mark was itself dishonest.
22. Further, it is also settled law that any infringer who uses or
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adops someone else’s trademark must be aware of consequences
which may follow. The plaintiff has already opposed the
defendant’s trademark application thus any growth after such
opposition is at the risk and peril of the defendant.
23 Further, in
Kaviraj Pandit Durga Dutt Sharma v/s Navratna
Pharmaceuticals Laboratories, AIR 1965 SC 980, the test of
infringement and passing off is given which reads as under:-
28………..The action for infringement is a statutory remedy conferred
on the registered proprietor of a registered trade mark for the
vindication of the exclusive right to the use of the trade mark in relation
to those goods (Vide s. 21 of the Act). The use by the defendant of the
trade mark of the plaintiff is not essential in an action for passing off,
but is the sine qua non in the case of an action for infringement. No
doubt, where the evidence in respect of passing off consists merely of
the colourable use of a registered. trade mark, the essential features of
both the actions might coincide in the sense that what would be a
colourable imitation of a trade mark in a passing off action would also
be such in an action for infringement of the same trade mark. But there
the correspondence between the two ceases. In an action for
infringement, the plaintiff must, no doubt, make out that the use of the
defendant's mark is likely to deceive, but where the similarity between
the plaintiff's and the defendants mark is so close either visually,
phonetically or otherwise and the court reaches the .conclusion that
there is an imitation, no further evidence is required to establish that the
plaintiff's rights are violated. Expressed in another way, if the essential
features of the trade mark of the plaintiff have been adopted by the
defendant, the fact that the get- up, packing and other writing or marks
on the goods or on the packets in which he offers his goods for sale
show marked differences, or indicate clearly a trade origin different
from that of the registered proprietor of the mark would be immaterial;
whereas in the case of passing off, the defendant may escape liability if
he can show that the added matter is sufficient to distinguish his goods
from those of the plaintiff.
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24. In the case of
Laxmikant P.Patel v/s Chetan Bhai Shah & Anr
(2002) 3 SCC 65, it held as under:-
8. It is common in the trade and business for a trader or a
businessman to adopt a name and/or mark under which he would
carry on his trade or business. According to Kerly (Law of Trade
Marks and Trade Names, Twelfth Edition, para 16.49), the name
under which a business trades will almost always be a trade mark
(or if the business provides services, a service mark, or both).
Independently of questions of trade or service mark, however, the
name of a business (a trading business or any other) will
normally have attached to it a goodwill that the courts will
protect. An action for passing-off will then lie wherever the
defendant companys name, or its intended name, is calculated to
deceive, and so to divert business from the plaintiff, or to
occasion a confusion between the two businesses. If this is not
made out there is no case. The ground is not to be limited to the
date of the proceedings; the court will have regard to the way in
which the business may be carried on in the future, and to its not
being carried on precisely as carried on at the date of the
proceedings. Where there is probability of confusion in business,
an injunction will be granted even though the defendants adopted
the name innocently.
10. A person may sell his goods or deliver his services such as in
case of a profession under a trading name or style. With the lapse
of time such business or services associated with a person acquire
a reputation or goodwill which becomes a property which is
protected by courts. A competitor initiating sale of goods or
services in the same name or by imitating that name results in
injury to the business of one who has the property in that name.
The law does not permit any one to carry on his business in such
a way as would persuade the customers or clients in believing
that the goods or services belonging to someone else are his or
are associated therewith. It does not matter whether the latter
person does so fraudulently or otherwise. The reasons are two.
Firstly, honesty and fair play are, and ought to be, the basic
policies in the world of business. Secondly, when a person adopts
or intends to adopt a name in connection with his business or
services which already belongs to someone else it results in
confusion and has propensity of diverting the customers and
clients of someone else to himself and thereby resulting in injury.
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16. There was no delay in filing the suit by the plaintiff. The
plaintiff filed the suit with an averment that the defendants were
about to commit an injury to the plaintiff. The defendants took a
plea that they had already commenced the business with the
offending trade name without specifying actually since when
they had commenced such business. This has to be seen in the
background that the defendants business earlier was admittedly
being carried on in the name and style of Gokul Studio. The
commencement of such business by the defendants could
therefore have been subsequent to the institution of the suit by the
plaintiff and before the filing of the written statement by the
defendants. In such a situation, on the plaintiff succeeding in
making out a prima facie case, the court shall have to concentrate
on the likelihood of injury which would be caused to the plaintiff
in future and simply because the business under the offending
name had already commenced before the filing of the written
statement or even shortly before the institution of the suit would
not make any difference and certainly not disentitle the plaintiff
to the grant of ad-interim injunction.”
25. Now, coming to the point raised by the defendant that the
defendant holds registrations in Class 35 for ‘nourish you’, it is
relevant to refer Schedule IV of Trademark Rules, 2002, which
provides the Classes wherein classification of goods and services
has been provided. A bare perusal of Schedule reveals that Class 35
related to advertising, business management, business
administration, official functions. A reading of Section 28(3) of the
Act, 1999 provides that if the two registered marks are identical or
deceptively similar to each other, the registered proprietor will not
have any exclusive right against each other, and both proprietors
will have equal rights against each other. Meaning thereby,
between the two persons, who are registered owner of the trade
mark, there is no exclusive right to use the said trade mark against
each other, thus giving concurrent right to both to use the registered
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trade mark against each other. Thus, in the given facts, there can
be no finding of infringements against a registered trademarks,
unless there is a finding of that the registration to be invalid. The
defendant’s trade mark ‘NOURISH YOU’ is registered in its
favour, there is no
prima facie basis to hold that registration of
defendant ‘NOURISH YOU’ is invalid. Having observed so, the
plaintiff is not entitled for any injunction as against the defendant
in respect of goods falling under Class 35 in so far as its mark
‘nourish’ is concerned.
26. In view of the foregoing discussion, a
prima facie case is
made out, the plaintiff has succeeded in establishing that it has
prima facie case and balance of convenience lies in its favour and
in case, the defendant is not restrained, irreparable loss and injury
will cause to the plaintiff. Further, all the elements of trinity test of
passing off are
prima facie established and in case the defendant is
not restrained from using trademark ‘nourish you’ from selling
impugned goods wherein the trademark and would amount to
action of passing off. Accordingly, the defendant and all others
acting on its behalf are hereby restrained from using impugned
trademark ‘nourish you’ or any other trademark in any form or a
manner which are identical or deceptively similar to the registered
mark of plaintiff NOURISH with respect to goods falling in
Classes 29,30 and 31 till the pendency of the suit. However, to
meet the ends of justice, considering that the defendant has
launched some of its products in year 2023 and the goods being
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perishable in nature and the defendant may deplete their existing
stocks bearing their trademark ‘nourish you’ falling under Class 29,
30 and 31 within three months and file an affidavit in this regard
giving complete details of stocks within four weeks from the date
of passing of order.
27. The application is hereby allowed and stands disposed off
accordingly.
28. Nothing mentioned hereinabove shall tentamount to be an
expression of opinion on merits of the case.
Pronounced in the open (VINEETA GOYAL)
Court on 02.05.2025. District Judge (Commercial)-03
Patiala House Courts
New Delhi
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