In the case of Avtar Singh & Ors. v. Sakshi Srivastava &Anr., CS (COMM) 385/2020, the High Court of Delhi dealt with an extremely prevalent issue in the arena of Intellectual Property Rights, i.e., infringement of trademark and deceptively similar trademarks.
FACTS
M/S Aero Club (hereinafter referred to as the “Company”) comprising of four partners namely Mr. Avtar Singh, Mr. Harkirat Singh, Aero Traders Private Ltd., and Aero Associates Pvt. Ltd. (hereinafter collectively referred to as the “Plaintiff”) hold the lawful ownership of the trademark WOODS in India. Plaintiffs claimed to be the users of the said trademark since 1994 under Class 25 and Class 3. Plaintiffs also registered the trademarks under the trade name WOODLAND, WOODLAND (Styled) and other WOODLAND marks on different dates.
Since the inception of the Company, Plaintiff adopted and conceived the trademark WOODLAND in its true essence to safeguard the ingenuity of its trade. In due time, the Plaintiff horizontally expanded the business around the globe under its brands WOODS and WOODLAND by including apparels such as jackets, t-shirts, casual shirts, and sweatshirts.
On the other hand, the Defendants are the founders/co-owners of M/s. Siddhi Vinayak Clothes & Concepts. The Defendants had filed the application for the registration of the marks NUWOODLEY and were already using the mark WOODLEY for its apparel range and the same was mentioned in the TM Journal for registry.
The Plaintiffs opposed the trademark application for WOODLEY stating it to be deceptively and confusingly similar to the trademarks WOODS and WOODLAND and hence, filed the present suit.
Section 28 of the Trademarks Act, 1999 (the Act) confers to the licensees the exclusive right to exploit the trademark in relation to the goods for which they are used. Under Section 31, the original registrations are regarded as the evidence of their validity.
ISSUES BEFORE THE TRIBUNAL
1. Whether the mark of the Defendants is deceptively similar to the mark of the Plaintiffs?
2. Whether the claim of infringement of a dissected mark is valid or does it need to be considered in its entirety?
3. Whether the Defendant’s mark causes confusion in the mind of the customers?
CONTENTIONS OF THE PARTIES
The Plaintiffs contended that the Defendant’s trademark WOODLEY is deceptively similar to the Plaintiffs mark and thereby is creating confusion in the minds of the customers. It was argued that the trademarks of the Plaintiffs and the Defendant are not only visually, but also phonetically similar.
It was noted that even the style of the trademark WOODLEY, including the font, colour of the text, and background is similar to that of the Plaintiff’s marks. The inclusion of “Carnaby St. London” under the impugned mark WOODLEY further added to the confusion as it falsely implied that the Defendant’s goods are affiliated to the Plaintiff’s brand.
On the contrary, the Defendants contended that the Plaintiff has been aware of their presence and the impugned trademark since the year 2017. However, the Plaintiff strategically chose to file the present suit after three years, in 2020, when the company has already opened 22 retail outlets. The Defendants asserted that the delay in filing the suit was purposely done by the Plaintiffs after knowing that the Defendants invested a huge sum of money in the brand and retail ventures.
The Defendants further contended that there could be no claim on the exclusivity of the word ‘WOOD’. The styling of the impugned mark sets it apart from the Plaintiff’s trademark and even phonetically, the pronunciation of the two marks were very different. In light of the same, the Defendants claimed that Section 29(4) of the Act does not apply to the facts of this case as the goods in question are similar but not identical.
The Defendants stated that the targeted customers of the two companies are different, i.e., the Plaintiff’s company caters to the rich as well as the upper middle class, whereas the Defendant’s company caters to the lower middle class only. In the backdrop of the same, the Defendants argued that their rights are protected under Section 34 of the Act and placed reliance on the two judgements of the Hon’ble Supreme Court i.e., Nandini Deluxe vs. Karnataka Co-operative Milk Producers Federation Ltd., AIR 2018 SC 3516 and Mittal Electronics vs Sujata Home Appliances (P) Ltd. &Ors., MANU/DE/1695/2020 for the same.
Defendants claimed that this present suit was a malafide attempt to deviate from the ongoing proceedings under specialized authority i.e., the Trademark Registry for the last 3 years, wherein the parties are already contesting the issue of the similarity of the marks.
The Defendants also argued that the Plaintiffs cannot claim exclusivity over the trademark by dissecting Wood and Land and by removing ‘s’ from WOODS. It was stated that the word WOOD is moreover non-distinctive and generic in nature and therefore exclusivity cannot be claimed under Section 17(2)(b) of the Act. To strengthen the contentions, Defendants also argued that the impugned mark was inspired by the environment activist Ms. Shailene Woodley, who was well-known for her tree hugging movement.
On conducting further research, the team of the Defendants found that there exist various trademarks under Class 25, in the market, with the similar marks as that of the Plaintiffs and that the trademark WOODS was also owned by another entity.
DECISION AND FINDINGS
In consonance of the First Issue, the Delhi High Court (the Court) relied on the case of Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980, which held that “if the essential features of the trademark are imitated and other features indicate a different trade origin, then no further evidence is required and this difference is considered invalid in nature.”
The Court also relied on the its judgment of M/S. South India Beverages Pvt. Ltd. v. General Mills Marketing INC., (2015) 61 PTC 231 which stated that “if the marks are phonetically similar and are utilised for a similar commodity, then there exists a possibility of confusion.”
Therefore, in the present case, on visual examination and scrutiny, it was adjudged by the Court that the Defendant’s trademark WOODLEY is deceptively similar to that of the Plaintiff’s and that the essential features of the Plaintiff’s mark has been copied by the Defendants. The Court observed that the Defendant’s trademark was likely to create confusion in the minds of customers with usually average memory.
While dealing with the Second Issue, the Ld. Court held that the Defendant’s plea is misconceived in nature. For the same, the Court has relied on the judgement of M/S. South India Beverages Pvt. Ltd. v. General Mills Marketing INC., (supra) in which it was held that if the dominant part of the trademark has similarity, then it would be considered as an infringement. The Court observed that principle of anti-dissection does not impose an absolute embargo.
The Court placed reliance on the United States District Court’s judgment of Allen Corp. v. Paco Impressions Corp., 405 F. Supp. 530 (1975), wherein it was held that “the consideration of the infringement of the trademark as a whole does not invalidate the claim of infringement where less than the entirety of the mark is imitated.” Moreover, the Court held that the dominant features are likely to be remembered by the consumers and people rely on it for the purpose of identification of the products. Thus, in the present case, the claim of the Defendant based on the principle of anti-dissection does not hold ground.
The Court relied on its judgement of Jagan Nath Prem Nath v. Bhartiya Dhoop Karyalaya, AIR 1975 Del 149 and held that in this case, the infringement suit for a mark can also succeed if it proves that the Defendant’s mark is similar to the Plaintiff’s and people remember it and associate the products with it.
The Court noted that in the present case, the claim made on the basis of the target customers will also not stand as the discrimination is being made on the customer’s financial standing. The Court referred to the High Court of Justice, Chancery Division’s judgment of Bollinger J. and Ors. v. Costa Brava Wine Coy., 1960 (1) RPC 16 and came to the observation that the type of the commodity in question also matters. For example, goods like premium alcohol, luxury cars, and exclusive perfumes are expected to have more mature and niche customers.
In the backdrop of the aforementioned, the contention of price difference was dismissed by the Court.
Accordingly, the Court held that the Plaintiffs made out a prima facie case and thereby allowed the present suit.
AMLEGALS REMARKS
The present case deals with an extremely prevalent issue in the arena of IPR, i.e., infringement of trademark and deceptively similar trademarks. Another instance which is pertinent to note is that the Court disregarded the discrimination between the target customers based on financial standing. This shows the importance of considering socio-economic factors while observing the facts of any case.
The brands and companies should pay special attention to the details and conduct thorough research before designing their trademarks in order to avoid such scenarios wherein the respective trademark is deceptively similar to another trademark. Such circumstances create confusion in the minds of the customers and in turn affect the goodwill of the companies.
– Team AMLEGALS, assisted by Ms. Divya Pandey (Intern)
For any query or feedback, please feel free to get in touch with arushi.vyas@amlegals.com or mridusha.guha@amlegals.com.
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