The Delhi High Court in the case of Nirma Limited v. Purnima Gupta & Anr, C.O. (COMM.IPD-TM) 292/2022 held that the undue usage of a well-known trademark by a proprietor who is not the bona fide owner of the said well-known trademark, merely in order to benefit from the goodwill of a such trademark, would amount to unfair competition.
Nirma Limited (hereinafter referred to as the “Petitioner”) filed the present petition for seeking the removal of the trademark ‘NIMA’ registered in favour of Purnima Gupta (hereinafter referred to as the “Respondent”) for jewelry and precious stones. The Petitioner adopted the trademark ‘NIRMA’ and ‘NIMA’ in the years 1962 and 1982 respectively.
The Petitioner is primarily engaged in the sector of hygiene and toiletries such as soaps, detergents, and toothpaste and has also started to expand in various other industries such as building materials, chemicals, etc.
The trademark ‘NIRMA’ and ‘NIMA’ has been used by the Petitioner continuously and uninterruptedly, not just in India, but also across the globe for the Petitioner’s goods and services. The mark ‘NIMA’ is registered as an associated mark of the trademark ‘NIRMA’ and the Petitioner has taken various legal actions in respect of the same, where their rights pertaining to the marks ‘NIRMA’ and ‘NIMA’ have been recognized and upheld, and prevented from being misused.
Subsequently, owing to the popularity and the quality associated with the Petitioner’s mark, the trademark ‘NIRMA’ has been declared as a ‘well-known trademark’ under Section 2(1)(zg) of the Trademarks Act, 1999 (hereinafter referred to as “the Act”).
In the recent past, it came to the knowledge of the Petitioner that the Respondent had obtained the registration for their trademark “NIMA” and had also stated that the impugned mark had been in use since 01.06.2000. In light of the foregoing, the Petitioner preferred the present petition before the Delhi High Court (hereinafter referred to as the “High Court”).
ISSUES BEFORE THE HIGH COURT
- Whether the mark ‘NIMA’ is phonetically similar to ‘NIRMA’?
- Whether the Respondent’s impugned mark ‘NIMA’ is identical to that of the Petitioner?
- Whether the Respondent is trying to take unfair advantage of the goodwill of the ‘well-known trademark’ of the Petitioner?
CONTENTIONS OF THE PARTIES
The Petitioner primarily claimed that as the trademark of Respondent is confusingly similar to the Petitioner’s mark “NIRMA” which has been declared a “well-known trademark,” the registration of Respondent should be revoked.
Furthermore, the Petitioner also brought it to the attention of the High Court that the claim of the Petitioner with regards to the year of usage of the trademark was unproven and false as the sales invoices produced by the Respondent are from the year 2005 onwards, whereas in its trademark application, the Respondent has submitted that the trademark is in use since the year 2000.
Subsequently, the Petitioner contended that in light of the foregoing, the Respondent is merely a subsequent adopter of the trademark ‘NIMA’; hence, the impugned trademark is liable to be removed from the Trade Marks Journal.
The Petitioner placed reliance on the judgment of the High Court in the case of Shantaben Karsanbhai Patel & Ors. v. S.C. Jain & Anr., 2001 PTC 427 (Del), and asserted that since the trademark of the Petitioner has become a popular name in every Indian household and has attained good reputation across the market, adoption of the same by the Respondent herein is not bona fide.
Lastly, the Petitioner contended that the impugned mark of the Respondent is phonetically similar to that of the Petitioner and hence, is liable to be removed from the Register of Trade Marks, and for the same, the Petitioner placed reliance on the judgment of the High Court in the case of FDC Limited v. Docsuggest Healthcare Services Pvt. Ltd. & Anr., 2017 (69) PTC 218 (Del.).
On the other hand, the Respondent argued that the goods with regards to the impugned mark belong to a distinctive trade as compared to that of the Petitioner and hence, there is no scope of confusing similarities or deception.
DECISION AND FINDINGS
The High Court observed that the impugned mark ‘NIMA’ of the Respondent is deceptively similar to the Petitioner’s mark ‘NIRMA’, and the same is also phonetically similar to the registered well-known trademark of the Petitioner.
The High Court further observed that, as per Section 2(1)(zg) of the Act, the Petitioner’s mark ‘NIRMA’ has also been recognized as a well-known trademark, which means that the mark has become so well known, that a substantial segment of the public which uses such goods or receives such services, recognizes the brand by the trademark associated with such goods or services. The High Court also noted that in comparison to the Respondent, the Petitioner was an early adopter and user of the marks “NIMA” and “NIRMA”.
The High Court observed that Section 11(2) of the Act doesn’t allow for a trademark to be registered which is similar to a well-known trademark in India. Use of such a trademark would amount to taking unfair advantage of the well-known trademark and the same shall not be registered.
The High Court relied on its decision in the case of Tata Sons Ltd. V. Manoj Dodia & ors, CS(OS) No. 264/2008, and explained the meaning of a well-known trademark. The High Court held that when a person uses another person’s ‘well-known trademark’, he tries to take advantage of the goodwill that such a ‘well-known trademark’ enjoys. Such an act constitutes unfair competition and causes dilution of a ‘well-known trademark’.
Thus, based on the above observations, the High Court allowed the present rectification petition, and the mark of the Respondent was instructed to be removed from the Register of Trademarks.
Vide the present judgment, the High Court has dealt with certain pivotal aspects with regard to the infringement of a well-known trademark and its association with unfair competition and dilution of a registered trademark.
With regards to the concept of deceptive similarities and the intention of passing off, a proprietor cannot utilize another proprietor’s trademark, nor can he adapt/use a mark originating from another person with a well-established reputation and goodwill that creates, or is likely to cause public confusion or deceit.
Therefore, this judgement of the High Court will have considerable relevance in respect of the protection of well-known trademarks, even if the trademarks in question are from distinct markets.
– Team AMLEGALS, assisted by Ms. Pratishtha Vaidya (Intern)
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