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Judgment
Jayant Nath, J
IA No.9511/2018
This application is filed by the plaintiffs under Order 39 Rules 1 and 2 CPC seeking an interim injunction to restrain the defendants etc.from selling,
advertising, offering for sale, directly or indirectly, reproducing the infringing logo mark or any other mark/trade mark/logo/device which is identical
and deceptively similar to that of the plaintiffs logo mark.
The accompanying suit is filed for permanent injunction, restraining infringement of Trademarks, Copyright, passing off, dilution of goodwill, unfair
competition, rendition of accounts of profits/damages, delivery, etc. The plaintiffs seeks a decree of permanent injunction to restrain the defendants
etc. from selling, offering for sale advertising, directly or indirectly dealing or reproducing or using in any manner whatsoever the infringing logo mark
or any other trade mark or logo/device, which is identical to and/or deceptively similar to the plaintiffs†well known Logo
Mark amounting to infringement of the plaintiffs†registered trade marks. Other connected reliefs are also sought.
It is the case of the plaintiffs that plaintiff No.1 is a Dutch Limited Partnership and Proprietor of the well known and inherently distinctive
trademark Beverly Hills Polo Club (hereinafter referred to as “BHPCâ€) and other variants of these marks. It is pleaded that the business under
the BHPC brand alongwith the plaintiffâ€s logo mark was established in 1982. The plaintiffs commenced business under the BHPC brand in India in
2007. It is pleaded that the plaintiffs†logo mark is an invented and an inherently distinctive trademark which constitutes an essential feature of the
plaintiffs†overall branding of all the products sold by the plaintiffs. It is pleaded that the composite use of the distinctive Polo Player Device and the
distinctive word mark “Beverly Hills Polo Club†written in a stylized manner with other artistic elements, branding features and colour
combinations makes the plantiffâ€s logo mark unique and highly artistic/distinctive. It is pleaded that the Polo Player Device contained in the
plaintiffs†logo mark is an essential and distinctive feature of the plaintiffs†logo mark. It is further pleaded that the brand right from its adoption and
use was successful in the United States of America and has rapidly emerged as a global brand which is positioned as a premium brand. It is pleaded
that due to extensive, continuous and uninterrupted use, now spanning over 36 years globally and over a decade in India the plaintiffs†logo mark is
synonymous with high standards of quality in respect of products provided by the plaintiffs.
As far as the fragrance section is concerned the plaintiffs commenced sale of fragrance products bearing the plaintiffs†logo mark and the
plaintiffs†trade dress in the year 2012. From the said date the plaintiffs have been openly, extensively and continuously using the said logo mark and
trade dress in India on the entire range of products offered around the world. It is pleaded that the plaintiffs†range bears a unique, distinctive and
catchy trade dress which immediately creates a brand recall.
It has been stated that the plaintiff No.1 is the registered proprietor of the plaintiffs†logo mark in India under the Trademarks Act in various
classes including class 3 which specifically covers fragrance products such as deodorants, perfumes amongst others. The different details of the
registration of the trademarks are given in para 19 of the plaint. It is also stated that the plaintiffs are the exclusive proprietors of the artistic and
distinctive trade dress of their fragrance products. The sale turnover attributable to business in India alone, for the last two financial years it is pleaded
is approximately about Rs.400 crores with the promotional expenses being around Rs.5.6 crores for the said two years. It is stated that the trademarks
and artistic works of the plaintiffs enjoy unparallel goodwill and reputation in the work and has acquired the status of well-known marks within the
meaning of section 2(1)(zg) of the Trademarks Act and are entitled to be protected as such.
Regarding the defendants it is stated that defendant No.1 according to information available with the plaintiffs is a corporation organized and
existing under the laws of the United Kingdom and is in the business of sale of fragrance, apparel products, accessories such as belts, watches etc.
under the brand “Royal County of Berkshire Polo Clubâ€, which is used in conjunction with the infringing logo mark. Defendant No.2 is believed to
be engaged in the business of manufacturing, marketing and distribution of fragrances and perfumes. Defendant No.2 is also in management/stake
holder of an ex licensee of the plaintiffs†brand, namely, Air-Val, International S.A. The license was terminated in 2011. However, litigation took
place between the plaintiffs and Air-Val, International S.A. Defendant No.2 hence it is pleaded has complete knowledge of the plaintiffs†various
trademarks, trade dress, logo mark. Defendant No.3 said to be a company existing under the laws of India and is also engaged in the business of
contracts, manufacturing of fragrances and perfumes. It is an entity which has taken up the responsibility of manufacturing the infringing fragrance
products of defendant No.1 under the infringing logo mark and infringing trade dress in India. It was also in the past a shareholder of the company
Beverly Hills Polo Club Fragrances Pvt. Limited which was incorporated in the year 2012 for the purpose of manufacture and sale of fragrance
products under the plaintiffs†brand. Because of their past association with the plaintiffs they have been contracted by defendants.
It is pleaded that sometimes in May 2018 the plaintiffs learnt about the launch of identical fragrance products by defendant No.1 in collaboration
with other defendants under the infringing logo mark and infringing trade dress in India. It is pleaded that on a perusal of the plaintiffs†logo mark and
the infringing logo mark it is apparent that the infringing logo mark is an imitation and is visually and structurally identical/deceptively similar to the
plaintiffs†logo mark. The infringing logo mark contains an identical/deceptively similar Polo Player Device as contained in the plaintiffs†logo mark
in the same arrangement. The two marks of the plaintiffs and the defendant are as follows:-
Plaintiffs Defendants
Similarly, it is pleaded that a perusal of the plaintiffs†trade dress on its fragrance products and the defendants infringing trade dress on their
fragrance products when compared as a whole clearly reveal that the trade dress of the defendants is an imitation of and conceptually and visually
identical/deceptively similar to the plaintiffs†trade dress. The infringing trade dress of the defendants contains identical/deceptively similar get up,
colour combination arrangement of features figures/characters, logo, device amongst others.
It is pleaded that defendant No.1 has no excuse whatsoever or reason to adopt such a logo and trade dress. It is clear that the same is a dishonest
adoption and the act of the defendant would cause confusion in the minds of an unwary customer who would buy the fragrance thinking it to be
originating from the plaintiffs. The act of the defendants is purely to deceive the consumers and to piggyback on the reputation and goodwill of the
plaintiffs.
Defendant No.1 in the written statement has denied the above pleas of the plaintiffs. It has been pleaded that defendant No.1â€s mark and trade
dress of fragrance products are not identical or deceptively similar. It is stated that the mark has to be taken as a whole and no one can claim rights
over part of a trade mark. Hence, the plaintiffs do not have any registration of any part of the composite mark such as a polo player, horse, polo player
on a horse back, club mallet. It is further stated that the device of a polo player on a horse back per se is common to the trade and to claim exclusivity
on the same is absurd and illogical. It is further stated that the user of the defendants is bona fide.
It is also pleaded that defendant No.1â€s mark indicates its complete trade name, i.e. Royal County of Berkshire Polo Club. It is a well known polo
club in UK with its date of establishment dating back to the year 1985. HRH The Prince of Wales opened the club as its first member. It is further
stated that defendant No.1 has been using the said marks uninterruptedly for more than 30 years internationally.
It has also been pleaded that there is a “polo player on a horse back†device under registration in class 3 registered in the name of Polo/Lauren
Company L.P. since 1987. The “polo player on horse back†device was adopted by the Polo Ralph Lauren in the year 1967. Hence, the plaintiffs
are nothing but copycats and pirates of the well known trademark Polo/Lauren Company LP. Hence, it is pleaded that the device of a “polo player
on a horse back†is common to trade. Similarity of trade dress is also being denied.
I have heard learned counsel for the parties. Learned counsel for the plaintiffs has submitted as follows:-
(i) The defendants†infringing logo mark and infringing trade dress when compared as a whole appear to be nothing but a slavish imitation of the
Beverly Hills Polo Club logo mark and trade dress of the defendants. The manner and use of numerals, the use of colour combinations and identical
placement of infringing logo mark clearly show that the defendants are guilty of infringement under section 29 of the Trademarks Act, 1999 passing
off and unfair competition.
(ii) It is settled law as laid down by the Supreme Court of India in Amrit Dhara Pharmacy vs. Satyadeo Gupta, AIR 1963 SC 449 that the overall
impression or any similarity of the mark have to be seen and the court is not to undertake a side by side comparison and disconcur the dissimilarities to
enquire as to whether the mark used by the defendants is deceptively similar or identical to that of the plaintiffs†mark. It is pleaded that if in this
case the court were to compare the two logo mark and the trade dress as a whole it would be clear that the impugned trademark and trade dress are
deceptively similar to that of the plaintiffs.
(iii) Reliance is also placed on the judgment of the Division Bench of this court in United Biotech Private Limited vs. Orchid Chemicals &
Pharmaceuticals Ltd. & Ors. ILR (2012) V Delhi 325 to submit that the essential features of a composite trademark are protected by registration of
the composite mark. Hence, the polo player device being an essential feature need not separately be registered for protection of the plaintiffsâ€
registered logo mark.
(iv) It is further stated that on 23.7.2018 when the matter came up before this court for hearing the defendant stalled an injunction order being passed
by submitting that their infringing logo mark is registered in India. It turned out that this infringing logo mark was not registered in India for Fragrance
products. Their application is pending and has been opposed by the plaintiffs.
(v) Reliance is also sought to be placed on an order passed by the Second Board of Appeal in case R. 1374/2012-2, dated 25.07.2013 between the
parties titled Lifestyle Equities CV vs. Royal County of Berkshire Polo Club Limited which dealt with an application filed by the defendants herein
which sought to register its trade device under various classes. The order went on to record that the signs in issue are having visual, phonetic and
conceptual similarities and are identical in nature with respect to the goods concerned.
Learned senior counsel for the defendants has stated as follows:-
(i) It is pleaded that horse is a common feature in a lot of marks as it portrays strength and beauty. Plaintiffs cannot claim exclusivity to a horse
device. It has also stated that the plaintiffs are mere pirates. Their device is a copy of the device used by Ralph Lauren and Denver.
(ii) It is pleaded that the device, namely, a polo player on a horse is juris publici. Plaintiffs cannot claim any exclusive use of a polo playing player.
(iii) Further, it has been pleaded that there are various differences in the device used by the plaintiffs and the defendants. The figures of the horse are
different. The defendantâ€s horse is only half a horse. The font used is different. The writing appears at a different place. Reliance is placed on
section 35 of the Trademarks Act, 1999.
(iv) It is further pleaded that the defendants are a prestigious polo club in England. Prince Charles is also a member of the Club. Whereas the plaintiffs
are not a polo club. Being a polo club the defendant is entitled to use the device of polo playing player.
(v) It is reiterated that what is registered is the full logo and not the figure of the horse. A false representation is being made that the figure of the
horse is registered. Use of the horse would not amount to deceptive similarity. Reliance is placed on the judgment of this Court in Intex Technologies
(India) Ltd. and Ors. vs. AZ Tech (India) and Ors. 2017 (70) PTC 118. Similarly, it is stated that the trade dress is different.
(vi) It is also pleaded that the use by the defendant of the impugned device is bona fide and has started two years ago.
The first issue that arises is as to whether the trademark used by the defendants are deceptively similar to the registered mark of the plaintiffs. In
this context, reference may be had to the judgment of the Supreme Court in Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd., (2001) 5 SCC
73 where the Supreme Court held as follows:-
……It is important that the marks must be compared as wholes. It is not right to take a portion of the word and say that because that portion of
the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is
whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed
to the existing trade mark. Thus in Lavroma case Lord Johnston said:
we are not bound to scan the words as we would in a question of comparatio literarum. It is not a matter for microscopic inspection, but to be taken
from the general and even casual point of view of a customer walking into a shop.
On the facts of that case this Court came to the conclusion that taking into account all circumstances the words Protovit and Dropovit were so
dissimilar that there was no reasonable probability of confusion between the words either from visual or phonetic point of view.
xxx
With respect, we are unable to agree that the principle of phonetic similarity has to be jettisoned when the manner in which the competing words
are written is different and the conclusion so arrived at is clearly contrary to the binding precedent of this Court in Amritdharas case (supra) where
the phonetic similarity was applied by judging the two competing marks. Similarly, in Durga Dutt Sharmas case (supra), it was observed that:
In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendants mark is likely to deceive, but where the similarity
between the plaintiffs 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 plaintiffs rights are violated.â€
Reference may also be had to the judgment of the Supreme Court in the case of Amritdhara Pharmacy v. Satya Deo Gupta, (supra). That was a
case in which the respondent had applied for registration of the trade name “Lakshmandharaâ€. The appellant stated that the word
“Amritdhara†was already registered as a trade name and filed its objections. The Supreme Court held as follows:
“7. Let us apply these tests to the facts of the case under our consideration. It is not disputed before us that the two names 'Amritdhara' and
'Lakshmandhara' 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 v. Shangrila Food Products Ltd.
[1960]1SCR968 , 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 'Lakshmandhara' is, in our opinion, likely to deceive or cause
confusion. We must consider the overall similarity of the two composite words 'Amritdhara' and 'Lakshmandhara'. We do not think that the learned
Judges of the High Court were right in saying 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 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 otherwise 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 persons
educated in the Hindi language would go by the etymological 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 his ailments.
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 medicinal
preparations of the same description. We are aware that the admission of a mark 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. In the case of the application to register 'Erectiks' (opposed by the proprietors of the trade
mark 'Erector') Farwell, J. said in William Bailey (Birmingham) Ltd.'s Application (1935) 52 R.P.C. 137 :
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 work"".
Nor do we think that the High Court was right in thinking that the appellant was claiming a monoploy in the common Hindi word 'dhara'. We do not
think that is quite the position here. What the appellant is claiming is its right under s. 21 of the Act, the exclusive right to the use of its trade mark, and
to oppose the registration of a trade mark which so nearly resembles its trade mark that it is likely to deceive or cause confusion.â€
The Supreme Court in Ramdev Food Products (P) Ltd. vs. Arvindbhai Rambhai Patel and Others, (2006) 8 SCC 726 held as follows:-
“91. Although the defendant may not be using the actual trade mark of the plaintiff, the get-up of the defendant's goods may be so much like the
plaintiff's that a clear case of passing-off could be proved. It is also possible that the defendant may be using the plaintiff's mark, the get-up of the
defendant's goods may be so different from the get-up of the plaintiff's goods and the prices also may be so different that there would be no
probability of deception to the public. However, in an infringement action, an injunction would be issued if it is proved that the defendant is improperly
using the plaintiff's mark. In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the court will not enquire
whether the infringement is such as is likely to deceive or cause confusion. The test, therefore, is as to likelihood of confusion or deception arising
from similarity of marks, and is the same both in infringement and passing-off actions. (See Ruston & Ltd. v. Zamindara Engg. Co. [(1969) 2 SCC
727] )â€
Hornsby
Similarly, reference may also be had to the judgment of the Division Bench of this court in the case of United Biotech Pvt. Ltd. v. Orchid
Chemicals Ltd. & Ors. (supra). In that case, the Division Bench was dealing with a case where the appellant had got registration of the trade mark
FORZID in class 5. The respondent objected to this and filed an application for removal of the aforesaid mark on the ground that the said trade mark
FORZID was deceptively similar to an earlier registered trade mark ORZID (lebel mark) standing registration in the name of respondent No.1 in class
IPAB allowed the rectification of the application with the direction to Registrar of the Trademarks to remove the trade mark FORZID belonging to
the appellant from the register. In those facts the Division Bench held as follows:
“22. The argument was that as per sub-Section (1) of Section 17 of the Act, the exclusive right of the registered proprietor is to use the trademark
taken as a whole"" and not ""in part"" which the respondent was trying to claim. It was argued that from the reading of the latter part of sub-Section(2)
of the aforesaid provision. It was made abundantly clear that the registration would not confer any right in the matter forming only art of the whole of
the trade mark was registered and the IPAB had ignored the words ""not"" and ""in"" occurring in this petition thereby committing a grave error. Relying
upon the judgment in the case of Aravind Laboratories Vs. Modicare (decided on 05.07.2011), which is a Single Bench judgment of the Madras High
Court. It was argued that the objects & reasons behind insertion of Section of the Trade Mark Act, 1999 were to omit the provision relating to
requirement of disclaimer under Section 17 of the Trade and Merchandise Marks Act, 1958 and to explicitly state the general proposition that the
registration of a trade mark confers exclusive right to the use of the trade mark taken as a whole and not separately to each of its constituent part. To
buttress this submission, reference was made to Section 15 of the Act which permits a proprietor of a trade mark to apply for parts of a trade mark, if
he claims to be entitled to the exclusive use of any part thereof separately. It was argued that since this was not done by the respondent in the instant
case, it was permissible for the respondent to claim statutory right in the word ""ORZID"" (perse)……
…….
The entire arguments are on the wrong premise and it proceeds on the basis of common feature of the two marks suffix ""ZID"" and since the
respondent has registration and trade mark ""ORZID"", it cannot bare a part of it, i.e., ""ZID"". What has been seen in a case like this is as to whether the
mark ""FORZID"" is deceptively similar to ""ORZID"". That is the test which is to be applied and in a process, it is to be seen as to whether the two
marks are structurally and phonetically similar and would cause deception in the minds of consumers. When we judge the matter from this angle, we
find ourselves in agreement with the view taken by IPAB as well as the learned Single Judge. Although the mark ""ORZID"" is a label mark, the word
mark ""ORZID"" is an essential feature which has been covered by the registration. Therefore, the learned counsel for the respondent appears to be
right in his submission on this aspect, which is predicated on the Supreme Court decision in Ramdev Food Products Ltd. (supra). Following dicta on
the said decision is pertinent:
In Ashok Chandra Rakhit Ltd. (supra), whereupon reliance has been placed by Mr. Nariman, this Court was concerned with a proprietary mark of
'Shree'. It was claimed that the mark 'Shree' was a trade mark apart from the device as a whole and it was an important feature of its device. The
respondents were carrying on business in the name and style of Shree Durga Charan Rakshit. It was in the peculiar factual background obtaining
therein, this Court, referred to the decision of Lord Esher in Pinto v. Badman [8 RPC 181] to say that where a distinctive label is registered as a whole
such registration cannot possibly give any exclusive statutory right to the proprietor of the trade mark to the use of any particular word or name
contained therein apart from the mark as a whole. This Court in the aforementioned factual backdrop opined:
This, as we have already stated, is not quite correct, for apart from the practice the Registrar did advert to the other important consideration, namely,
that on the evidence before him and the statement of counsel it was quite clear that the reason for resisting the disclaimer in this particular case was
that the Company thought, erroneously no doubt but quite seriously, that the registration of the trade mark as a whole would, in the circumstances of
this case, give it a right to the exclusive use of the word ""Shree"" as if separately and by itself it was also its registered trade mark and that it would be
easier for it to be successful in an infringement action than in a passing off action. It was precisely the possibility of such an extravagant and untenable
claim that called for a disclaimer for the purpose of defining the rights of the respondent company under the registration.
(Emphasis supplied)
…….
We find that the learned Single Judge rightly held that when a label mark is registered, it cannot be said that the word mark contained therein is not
registered. We, thus, are of the opinion that although the word ""ORZID"" is a label mark, the word ""ORZID"" contained therein is also worthy of
protection. The learned Single Judge has rightly observed that the judgment of the Supreme Court in Ramdev Food Products Ltd. (supra) is the
complete answer. This aspect is considered and the argument of the appellant is rejected in the following words:
On whether the OCPL could successfully ask for rectification for UBPL's word mark FORZID notwithstanding that OCPL held registration only
for a label mark, the judgment of the Supreme Court in Ramdev Food Products Ltd. v. Arvindbhai Rambhai Patel : AIR 2006 SC 3304 is a complete
answer. The Court there referred to an earlier decision in Registrar of Trade Marks v. Ashok Chandra Rakhit: AIR 1955 SC 558, which concerned
the proprietary mark 'Shree' which formed part of the device as a whole and was an important feature of the device. The Supreme Court observed
that registration of a trade mark as a whole would give the proprietor ""a right to the exclusive use of word ""Shree"" as if separately and by itself.
Therefore it would not be correct for UBPL to contend that the registration held by OCPL does not cover the word mark ORZID.
The above judgment of the Division Bench was followed by Calcutta High Court in the case of Shambhu Nath & Brothers and Ors. Vs. Imran
Khan, MANU/WB/0951/2018 where the Court held as follows:-
“58. In Pidilite Industries Limited v. Jubilant Agri & Consumer Products Ltd. reported at 2014 (57) PTC 617 (Bom): 2014 (2) ABR 142, Section
17(1) of the Act came up for consideration. It is stated:â€
“It is true that the registration of a composite mark confers upon the registered proprietor a monopoly over the trademark taken as a whole. It is
not the plaintiff's contention that the registration of a composite mark confers upon the registered proprietor exclusivity over each and every
constituent part thereof (no matter how minuscule or insignificant it may be in relation to the mark considered as a whole). The Court therefore has to
examine the mark as a whole. As a part of this evaluation process, the Court is required to determine what is/are the prominent and/or essential
features of the mark taken as a whole. The protection and/or exclusivity will be conferred on these features and not on insignificant trivia. This Court
has therefore at the outset after considering the relevant factors prima facie come to the conclusion that the word “MARINE†forms a prominent
and/or essential feature of the registered trademark (considered as a whole). If the Defendant's arguments are accepted, the consequences will be
startling. Composite marks will become useless. The same will be infringed with impunity by the simple expedient of using a trademark which has, as
its essential or prominent feature(s), the essential and prominent feature of the registered mark with the addition of other matter. The mandate of
Section 17(1) will be totally frustrated.â€
“The argument advanced by the counsel for the defendant in that as per Section 17(1) of the Act, the exclusive right of the registered proprietor is
to use the trademark “taken as a whole†and not “in part†which the plaintiff is trying to claim. A recent judgment of the Division Bench of
this Court in the case of Unitech Biotech Pvt. Ltd. (supra) has very explicitly taken care of the aforesaid issue. The contention raised by the counsel
for the appellant in the said case was that the registration of respondent's trademark was in respect of label mark “ORZID†and it is only the label
which needs to be protected by virtue of Section 17 of the Act. Dismissing such contention raised by the counsel for the appellant, the Court observed
that the essential feature of the mark is also protected if the mark is registered as a whole. After placing reliance on the judgment of Hon'ble Supreme
Court in the case Ramdev Food v. Arvindbhai Rambhai reported at (2006) 8 SCC 726 : AIR 2006 SC 3304, the Division Bench of this Court observed
in Paragraphs 24 and 25 as under:â€
“The entire arguments are on the wrong premise and it proceeds on the basis of common feature of the two marks suffix “ZID†and since the
respondent has registration and trade mark “ORZIDâ€, it cannot bare a part of it, i.e., “ZIDâ€. What has been seen in a case like this is as to
whether the mark “FORZID†is deceptively similar to “ORZIDâ€. That is the test which is to be applied and in a process, it is to be seen as to
whether the two marks are structurally and phonetically similar and would cause deception in the minds of consumers. When we judge the matter
from this angle, we find ourselves in agreement with the view taken by IPAB as well as the learned Single Judge. Although the mark “ORZID†is
a label mark, the word mark “ORZID†is an essential feature which has been covered by the registration. Therefore, the learned counsel for the
respondent appears to be right in his submission on this aspect, which is predicated on the Supreme Court decision in Ramdev Food Products Ltd.
(supra).â€
…….
In Three-N-Products Pvt. Ltd. (supra), it is held that the registration of a device or label would entitle the proprietor to protection against use of
such device or label by a rival in trade if the rival's use is identical or similar to the registered trade mark and the use is in connection with identical or
similar goods or services covered by such registered trade mark and if it appears to court that the rival's mark is likely to cause confusion or is likely to
have an association with the registered mark. The identity or similarity of the marks has to be assessed on the basis of the entirety of the mark as
registered. If a device mark is pitted against another device mark or a word mark is pitted another word mark, the tests would be simpler. It has been
held that if the owner can establish exclusivity aliunde, the owner can assert the exclusivity and the registered owner is entitled to protection of its
goodwill in such prominent feature as in an action for passing off unless the registered owner seeks to rely on Section 17(2)(b) of the Act in respect of
a distinctive matter not common to the trade. In such context, in Paragraph
36 of the said judgment, the plaintiff's claim of infringement based on its “AYUR†mark as part of its device registration was found to be
unacceptable. The said Paragraph reads:â€
“36. But it would appear that an infringement action may not be run on the basis of an unregistered part of the registered whole of a trademark.
Alternatively, and even if it is assumed for argument's sake that Section 17(2)(a) of the 1999 Act does not altogether preclude a claim of exclusivity
over a part of a registered mark, such part has to be registrable under the Act to qualify for protection.
The word “Ayurâ€, prima facie, does not appear to be capable of distinguishing the goods or services of a person from those of another as it seems
to consist exclusively of an indication which may serve in the trade to designate the nature of the goods. The plaintiff's claim of infringement based on
its “Ayur†mark as part of its device registrations is found to be unacceptable at the interlocutory stage.â€
Similarly, the learned Single Judge of this court in Stiefel Laboratories, Inc. & Anr. vs. Ajanta Pharma Ltd., 2014 (59) PTC 24 (Del.) held as
follows:-
“29. In the case of Indian Hotels Company Limited versus Ashwajeet Garg & Others (CS (OS) 394 of 2012 Order dated 01.05.2014), I had the
occasion of considering various judicial pronouncements and culling out the following legal principles for determining the deceptive similarity of marks:
i. Action for infringement is a statutory remedy conferred on the registered proprietor of a registered trademark. Kaviraj Pandit Durga Dutt Sharma v.
Navaratna Pharmaceutical Laboratories: AIR 1965 SC 980
ii. Registration of trademark gives the proprietor the exclusive right to the use of the trademark in connection with the goods in respect of which it is
registered. American Home Products v. Mac Laboratories : AIR 1986 SC 137
iii. If the essential features of the trademark 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 shows marked differences, or indicate clearly a trade origin different from that of the registered proprietor of
the mark would be immaterial. American Home Products v. Mac Laboratories : AIR 1986 SC 137
……
vii. Resemblance between the two marks must be considered with reference to the ear as well as the eye. K.R. Chinna Krishna Chettiar v. Sri.
Ambal & Co. and Anr.: AIR 1970 SC 146
viii. The rival marks have to be compared as a whole. The two competing marks must be judged both by their look and by their sound. All the
surrounding circumstances must be considered. Amritdhara Pharmacy versus Satyadeo Gupta : AIR 1963 SC 449
ix. Where the similarity between the Plaintiffs and the Defendant's 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 Plaintiffs rights are violated. Kehsav Kumar Aggarwal Versus
M/s. NUT Ltd. 2013 (199) DLT 242
x. Competing marks have to be compared keeping in mind an unwary purchaser of average intelligence and imperfect recollection. Amritdhara
Pharmacy versus Satyadeo Gupta : AIR 1963 SC 449
xi. Broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any marked differences
in the design and get up…â€
It is clear that the rival marks have to be compared as a whole. The two marks have to be compared keeping in mind an unwary purchaser of an
average intelligence and imperfect recollection. The marks have not to be placed side by side to find out if there are material differences in design and
get up. In the present case, in my opinion prima facie, the impugned logo mark has broad similarities with that of the plaintiffs. An average consumer
with imperfect recollection is likely to get confused and is likely to be deceived into accepting the impugned mark as that of the plaintiffs. The manner
of depiction of the impugned logo mark is strikingly similar to that of the plaintiffs and is bound to lead to confusion. Further the parties are using the
said mark for the same product, i.e. Fragrances.
The plea of the defendants that the plaintiffs cannot claim exclusively the polo player device is misplaced. There can be no dispute that the polo
player device is an essential and significant feature of the mark of the plaintiffs. The defendants have used a device that is deceptively similar to the
essential features of the plaintiffâ€s logo mark.
Regarding the trade dress the relevant comparison of the trade dress is as follows:-
It would be wrong to say that there are striking similarities in the impugned trade dress used by the defendants when compared to the trade dress
used by the plaintiffs. The colour combinations used are different. Merely because the length and circumference of the bottle has some commonality
would not per se prima facie manifest that an average consumer would get confused by looking at the trade dress. Hence, it is not possible to grant
any relief to the plaintiffs on the plea that there is a commonality of the trade dress being used by the defendants.
I may also deal with the submissions of learned senior counsel for the defendant. First, it has been pleaded that a horse device is publici juris and
the plaintiffs are pirates and have copied the features from Ralph Lauren and Denver. In my opinion, the plea is misplaced. Ralph Lauren and Denver
has not in any manner objected to the use of the said device/the concerned logo mark by the plaintiffs. Plaintiffs have been using the mark since 1982.
The mark has also been used in the fragrance sector since 2012. Pursuant to an application filed in 1992 the mark was registered in class 25. It is also
registered in class 3,9,18 and 24 pursuant to an application filed in 2006. There are more than a dozen such registrations in favour of the plaintiffs. The
defendants themselves have applied for registration of the impugned logo mark with the polo player device. There is no merit in the said plea of the
learned senior counsel for the defendants.
The next argument raised was about difference in the figures of the horse, difference of font being used. The plea is again misplaced as noted by
me above. It is quite clear that the device being used by the defendants is structurely similar to that of the plaintiffs. What is sought to be protected is
an essential and prominent feature of the mark. A comparison of the two marks would make it manifest that the mark of the defendants is deceptively
similar to that of the plaintiffs and relates to the same goods. It is likely to cause confusion. The mark of the defendants as a whole is deceptively
similar to the mark of the plaintiffs. The polo player device is an essential feature of the label mark of the plaintiffs and cannot be separated and
compared separately as sought to be urged.
Regarding the fact that the defendant No.1 is a prestigious polo club and hence is using the phrase Royal County of Berkshire Polo Club, the
learned counsel for the plaintiffs had clearly stated that here was no objection to the name being used by the defendants, namely, Royal County of
Berkshire, Polo Club. What is being objected to is the logo mark being used by the defendants which is deceptively similar to that of the plaintiffs.
There is no merit in the said pleas of learned senior counsel for the defendants. Plaintiffs have made out a prima facie case. Balance of
convenience is also in favour of the plaintiffs inasmuch as the defendants had started use of the impugned trade mark in May, 2018 whereas the
plaintiffs had filed the suit in July, 2018. At the initial stage when the matter was heard on 23.07.2018 injunction was not granted to the plaintiffs as a
submission had been made by the defendants in court that the mark being used by the defendants is a registered device in India whereas actually there
was no registration under class 3 in favour of the defendants.
Accordingly, the defendants, its agents, affiliates, distributors etc. are restrained from selling or dealing or advertising any product which uses the
impugned logo mark which is currently being used by the defendants or any other mark which is deceptively similar to the plaintiffs†logo mark.
This application is disposed of, as above.