Dolphin Mart Private Limited v. Avenue Supermarts Limited & Anr.

CONTENTIONS RAISED ON BEHALF OF THE PLAINTIFF:

14. On account of registrations in the d’mart trademarks, Plaintiff has acquired statutory rights by virtue of Section 28(1) of the 1999 Act to their exclusive use as well as to take action for infringement of the trademarks against third parties under Section 29 of the 1999 Act. Section 31 of the 1999 Act provides that in all legal proceedings relating to trademark registrations under the 1999 Act, original registration of the trademark shall be prima facie evidence of the validity thereof.

15. Defendants’ use of trademark amounts to infringement of Plaintiff’s statutory rights in trademarks and under Section 29(1) and (2)(c) of 1999 Act. All requirements and ingredients of Section 29(1) are met in the present case since the d’mart Trademarks of the Plaintiff are registered in Classes 14, 21 and 25; Defendant No.1 is not a registered proprietor or a permitted user of the in Classes 14, 21 and 25; Defendant No.1 uses the trademark in the course of trade, which is evident from its applications seeking registrations in all the three classes; and Defendants are using trademarks which are identical with or deceptively similar to the registered trademarks of the Plaintiff in respect of goods for which the Plaintiff’s trademarks are registered, with an intent to infringe. Plaintiff’s case for infringement under Section 29(2)(c) is also established since deceptively similar trademarks are used by the Defendants for identical goods. Section 29(3) provides that where a person, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of its identity with the registered trademark and identity of the goods/services covered by such registered trademark, the Court shall presume that it is likely to cause confusion on the part of the public and the present case squarely falls under Section 29(2)(c).

16. In fact, element of confusion is so high in the present case that even the Registrar of Trade Marks was confused between the two trademarks of the parties to the lis and associated them under Section 16 of the 1999 Act. Online status of TM Application No.2922593 shows that Plaintiff’s trademark registration for bearing No.578631 in Class 25 has been associated with Defendant No.1’s Application No.2922593 for in Class 25.

CONTENTIONS RAISED ON BEHALF OF THE DEFENDANTS:

17. Present suit is not maintainable and Plaintiff cannot assert a legal right on the composite trademarks or the word d’mart and any variant thereof to sue the Defendants for infringement as its trademarks were not registered on the date of filing of the suit. Registration in the composite label in Class 25 lapsed on 05.08.2016 and in the composite labels, d’mart Exclusif in Classes 14 and 21 lapsed on 16.01.2013.

18. A bare reading of the plaint shows that Plaintiff has not claimed proprietary rights in the word d’mart and cannot be permitted to do so in the absence of a separate registration in view of the prescription in Section 17 of the 1996 Act and the judgement of the Division Bench in Vardhman Buildtech Pvt. Ltd. & Ors. v. Vardhman Properties Ltd., 2016 SCC OnLine Del 4738. It is only where a composite mark is a mere stylized representation of the word alone, without any prefix or suffix, that one can claim monopoly over the word part of the mark and therefore, for the purpose of assessing deceptive similarity, to decide a claim of infringement under Section 29, rival marks have to be compared as a whole.

19. In any event, Plaintiff cannot sue the Defendants for infringement since Defendant No.1 has during the pendency of the suit acquired registrations in September and March, 2018 in Classes 14 and 21 respectively and in October, 2020 in Class 25. Pendency of the applications for registrations was mentioned in the written statement and it is open to the Defendants to refer to and rely on these registrations which take effect from the date of filing the applications. TM No.2922592 in Class 25 is valid from 16.03.2015, TM No.899370 in Class 14 is valid from 24.01.2000 and TM No.900816 is valid from 01.02.2000. Registration in Class 25 was granted after the Registrar of Trade Marks considered Plaintiff’s registration. Registration is a complete defence under Sections 28(3) and 30(2) and thus Plaintiff can now assert its rights premised on registration only in accordance with the procedure laid down in Section 124 of the 1999 Act, which requires a challenge to the validity of Defendants’ registrations to maintain the suit and seek interim relief under Section 124(1)(b).

20. Reliance by the Plaintiff on the word d’mart is barred by prosecution estoppel. Plaintiff in its letters addressed to the Trade Marks Registry, both dated 03.08.1992 and 27.08.1998, while responding to the First Examination Report (‘FER’) stated that the mark covered in TM No.578631 is a ‘composite logo’ and taken as a whole can be easily differentiated from the cited mark. Bare perusal of Defendants’ marks would show that they are different in form, colour, structure and design and there is no deceptive similarity. Sales figures of both parties would show that Defendants were far ahead of Plaintiff even when the suit was filed and have a different class of customers, primarily engaged in supermarkets. Therefore Defendants have no reason to take undue advantage of Plaintiff’s reputation or goodwill and with wide gap in class of customers and nature of business as well as dissimilarity of marks, there is no question of likelihood of confusion. Thus Plaintiff has failed in making out a prima facie case of passing off.

21. More fundamentally, Plaintiff is disentitled to an equitable relief of interim injunction on account of unexplained delay and acquiescence. Admittedly, Plaintiff became aware of Defendants’ use of the impugned trademarks in 2003 when the first notice was issued by the Plaintiff to the sister concern of the Defendants namely, Amodini Real Estate. Defendants had responded on 31.12.2003 capturing their use and the extent of use. Despite this knowledge, Plaintiff waited until 2017 to institute the suit. Therefore, the suit is barred on account of acquiescence which is a statutorily recognized doctrine under Section 33 of the 1999 Act and is different from mere delay and on this count the principles laid down by the Supreme Court in Midas Hygiene Industries (P) Ltd. and Another v. Sudhir Bhatia and Others, (2004) 3 SCC 90, shall not aid the Plaintiff.

22. It is trite that interlocutory injunctions are equitable reliefs and if it is shown that Plaintiff has not come to Court with clean hands and/or has suppressed and concealed material facts or documents, interim injunction should be declined. Plaintiff has concealed in the plaint that it had issued a cease and desist notice to the sister concern of Defendant No.1 on 05.11.2003, asserting proprietary rights over the trademark d’mart. While not denying the exchange of this correspondence, when faced with the concealment and in order to overcome the same, a false statement has been made in the replication that non-disclosure of the letters exchanged was attributable to the fact that Mr. R.K. Saini, who had commenced the correspondence had left service of the Plaintiff on 22.12.2003 as also that the entire management of the Plaintiff Company had changed and Mr. Praveen Rao took over as the new President of the Plaintiff Company on 01.09.2004. Owing to this, the trail of communication was lost and the new management lost touch with the Plaintiff as well. It was only during the hearing in this Court on 08.03.2017 that Plaintiff learnt about these facts and was able to the recover trail after getting in touch with the erstwhile Attorney. This stand in the replication is false on the face of it. Mr. Praveen Rao is the son of the Promotor Mr. K.V. Rao and he was the one who took over and assumed charge of the Company. Significantly, both attended the mediation proceedings between the parties and the fact that there was no change in the management is evident from the Franchise Agreement dated 06.06.2003, which shows that Mr. K.V. Rao was the Chairman of the Plaintiff as he had signed the Agreement in that capacity. Further, the Dolphin Retail Handbook which has been filed on record shows that even when the instant suit was filed, he was the Chairman. This in itself is a ground to deny the interim relief to the Plaintiff.

23. It is important to highlight that the Plaintiff despite knowledge of Defendants’ impugned trademarks waited from 2003 to 2017 to file the present suit and approached the Court with the malicious intent only on the eve of the IPO of the Defendants. Over the years, Defendants have expanded their business and this was the factor which had weighed with Court when the suit was filed and interim injunction was not granted. Instead, at that stage Court had restrained the Plaintiff from advertising or publishing the pendency of the suit in any manner. Additionally, on 16.06.2017 Court also directed that Plaintiff shall not issue any communication requiring the distributors, packers and suppliers of the Defendants to cease and desist from dealing in products of the Defendants, bearing the impugned trademarks. The balance of convenience, therefore, heavily lies in favour of the Defendants and grave irreparable harm and injury will be caused if they are restrained from using their own unchallenged registered trademarks in Classes 14, 21 and 25, especially in view of the fact that Plaintiff has not been able to substantiate its case even prima facie.

REJOINDER SUBMISSIONS BY THE PLAINTIFF:

24. Stand of the Defendants that Plaintiff’s registrations have lapsed is incorrect as all the three registrations have been renewed and Plaintiff has filed Legal Proceedings Certificates in support thereof. Non-renewal of registration does not render the same invalid nor does the registered trademark become unregistered for lack of payment of renewal fee if the same has been paid within the stipulated period under Section 25 of the 1999 Act.

25. Plaintiff has already filed applications for registration of the mark in Classes 14, 21 and 25 and therefore, the conditions of Section 17 are satisfied and the judgment in Vardhman Buildtech Pvt. Ltd. & Ors (supra) will be inapplicable. It is denied that Plaintiff has been squatting on the registration in Class 25 since 1992. In any case, challenge to the registration of a trademark on the ground of non-use is not a challenge to the validity of trademark registration. In an action for infringement, the registered proprietor is not required to show use and reputation of the registered trademark as that is a requirement for passing off.

26. There is no delay in approaching the Court and in any event, it is a settled that if the registered proprietor makes a case of infringement, delay cannot defeat the right. Plaintiff was unable to approach the Court earlier as it had lost the entire correspondence in 2003 with the sister concern of the Defendants on account of the employee-in-charge having left the job and there was a change in the management. Perusal of correspondence will show that knowledge of the Plaintiff, if any, was limited to a retail chain of supermarket falling under Class 35 and Plaintiff was not aware of the goods/services of the Defendants in Classes 14, 21 and 25 in which Plaintiff has registrations and thus no delay can be attributed. Even otherwise, Plaintiff has given up its plea of passing off or to seek injunction against the Defendants’ use of the mark in relation to its retail supermarkets for goods falling in Class 35.

27. Plaintiff is not seeking injunction against the Defendants for use of the mark d’mart in relation to supermarket retail services. Use of the mark as a service mark for retail services does not mean that the use is in relation to all goods that are retailed, e.g. if Defendants sell bread under the trademark ‘Harvest Gold’ or ‘Britannia’ in its stores, it does not mean that the trademark is used in relation to the breads. Defendants have been unable to show that their trademarks have been used in relation to goods falling under Classes 14, 21 and 25.

28. I have heard the learned counsels for the parties and examined their rival contentions.

ANALYSIS AND FINDINGS:

29. At the outset, it needs to be captured that Defendant No.1 in its written statement has taken a preliminary objection to the maintainability of the suit on the ground that on the date of filing of the suit, the d’mart Trademarks of the Plaintiff were not registered and thus unenforceable as registrations had lapsed. It is averred in the written statement that registration of the composite label registered under TM578631 in Class 25 lapsed on 05.08.2016 and registration for d’mart Exclusif trademarks registered vide TM 1167051 and 1167052 in Classes 21 and 14 respectively, lapsed on 16.01.2013. To counter this position, Plaintiff in its replication has stated that registrations have been renewed and the details are as follows:- Trademark Class Application No. Validity of 25 578631 05/08/2026 14 1167052 16/01/2023 21 1167051 16/01/2023

30. To deal with this objection, reference be made to Section 25 of the 1999 Act which relates to renewal, removal and restoration of registration. Sub-section (2) provides that the Registrar shall, on application made by the registered proprietor of a trademark in the prescribed manner and within the prescribed period and subject to payment prescribed fee, renew the registration for ten years from the date of expiry of original registration or of the last renewal of registration, as the case may be. Therefore upon renewal, the registrations of the Plaintiff’s d’mark trademarks shall take effect from the date of expiry of the earlier registrations, which were prior to the filing of the suit and prima facie it cannot be held that the suit is not maintainable on this score.

31. Before proceeding further, it needs a mention that during the pendency of the suit, Defendants’ trademarks in Classes 14, 21 and 25 have been registered and relevant details are as follows:- Sr. No. No. & Date of (DOR) Trademark Class Goods 1 899370 DOR – 18.09.2018 14 PRECIOUS METALS AND THEIR ALLOYS AND GOODS IN PRECIOUS METALS OR COATED THEREWITH (EXCEPT CUTLERY, FORKS AND SPOONS), JEWELLERY, PRECIOUS STONES; HOROLOGICAL AND OTHER CHRONOMETRIC INSTRUMENTS. 2 900816 DOR – 22.03.2018 D-MART (word mark) 21 SMALL DOMESTIC UTENSILS AND CONTAINERS (NOT OF PRECIOUS METAL NOR COATED THEREWITH); COMBS AND SPONGES; BRUSHES (OTHER THAN PAINT BRUSHES); BRUSHMAKING MATERIALS; INSTURMENTS AND MATERIAL FOR CLEANING PURPOSES; STEELWOOL; GALSSWARE, PORCELAIN AND EARTHWARE NOT INCLUDED IN OTHER CLASSES. 3 2922592 DOR - 02.10.2020 25 READYMADE GARMENTS, CLOTHING AND FOOTWEAR.

32. In response to the registrations of the Defendants, Plaintiff has brought forth in its reply to I.A. 7668/2022 that insofar as the registration in Class 25 bearing No. 2922592 is concerned, by virtue of order dated 21.03.2022 by this Court in W.P. (C)-IPD No. 4/2022 and other connected writ petitions, registration has been revoked. These writ petitions were dealing with the registrations granted during Pandemic COVID-19 and in view of the directions of the Supreme Court in Suo Motu WP (C) No. 3/2020 titled Re:Cognizance for Extension of Limitation, this Court extended the time for filing oppositions, where limitations had expired after 15.03.2020. Therefore, as the position obtains today, Defendants’ proprietary rights emanating out of registrations in their trademarks are limited to Classes 14 and 21. Registration in Class 25 is stated to be ‘opposed’ by the Plaintiff.

33. Since both the Plaintiff and Defendants are registered proprietors of their respective trademarks in Classes 14 and 21, in view of Section 28(3) read with Section 30(2)(e) of the 1999 Act, an action for infringement would not be maintainable at the instance of the Plaintiff and infringement analysis is confined to Defendants’ trademark in Class 25. For establishing infringement under Section 29(2) of the 1999 Act, Plaintiff would have to prima facie establish similarity/identity of rival marks, similarity/identity of goods such that there is likelihood of confusion amongst the members of the public and/or likelihood of association. Therefore, the first step would be to see if the rival trademarks in Class 25 are identical or deceptively similar and for which a comparative table is extracted hereunder:- Plaintiff’s Marks Defendants’ Mark

34. It is evident that the rival marks are composite marks and their registration will not grant an exclusive right in the word ‘d mart’. Admittedly, Plaintiff does not have registration in the word ‘d mart’. It is well settled that a composite trademark is not to be dissected to determine whether there is any deceptive similarity with the impugned trademark and comparison has to be by taking the rival marks as a whole. This observation was made by the Division Bench in Vasundhra Jewellers Pvt. Ltd. v. Kirat Vinodbhai Jadvani and Another, 2022 SCC OnLine Del 3370, relying on an earlier judgment of the Division Bench in M/s. South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. & Anr., 2014 SCC OnLine Del 1953, wherein the Court while explaining the ‘anti-dissection rule’ reiterated that conflicting composite marks are to be compared by looking at them as a whole, rather than breaking the marks into their component parts for comparison. It was held that while a trademark is to be considered in entirety, yet it is impermissible to accord more or less importance or ‘dominance’ to a particular portion or element of a mark in cases of composite marks. Relevant passages from the judgment in Vasundhra Jewellers Pvt. Ltd. (supra) are as follows, where Court has relied on a passage from McCarthy, which is highly relevant for present case:- “32. It is well settled that a composite trademark or label trademark is not required to be dissected to determine whether there is any deceptive similarity with another trademark. The question whether there is any deceptive similarity between two trademarks has to be ascertained by examining the marks in question as a whole. In South India Beverages India Private Limited v. General Mills Marketing Inc, 2014 SCC OnLine Del 1953, the Division Bench of this Court had explained the ‘anti-dissection rule’ in some detail. The Court reiterated that “conflicting composite marks are to be compared by looking at them as a whole, rather than breaking the marks up into their components parts for comparison”. However, the Court had also observed that “while a mark is to be considered in entirety, yet it is impermissible to accord more or less importance or ‘dominance’ to a particular portion or element of a mark in cases of composite marks”.

33. Having stated the above, it is also necessary to bear in mind that examining the dominant part of the trademark for comparing it with the conflicting mark is solely for the purpose of determining whether competing marks are deceptively similar when viewed as a whole. It is, thus, not permissible to hold that two competing marks are deceptively similar by examining a portion of one mark and comparing it with the portion of another mark, if the composite marks viewed as a whole are dissimilar. It is relevant to refer to the text from McCarthy on Trademarks and Unfair Competition, which explains the said principle as under:— “23.15 Comparing Marks: Differences v. Similarities [1] The Anti-Dissection Rule [a] Compare composites as a Whole: Conflicting composite marks are to be compared by looking at them as a whole, rather than breaking the marks up into their component parts for comparison. This is the “anti dissection” rule. The rationale for the rule is that the commercial impression of a composite trademark on an ordinary prospective buyer is created by the mark as a whole, not by its component parts. However, it is not a violation of the anti-dissection rule to view the component parts of conflicting composite marks as a preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole. Thus, conflicting marks must be compared in their entireties. A mark should not be dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof, that is important. As the Supreme Court observed:“The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety.” The antidissection rule is based upon a common sense observation of customer behavior: the typical shopper does not retain all of the individual details of a composite mark in his or her mind, but retains only an overall, general impression created by the composite as a whole. It is the overall impression created by the mark from the ordinary shopper's cursory observation in the marketplace that will or will not lead to a likelihood of confusion, not the impression created from a meticulous comparison as expressed in carefully weighed analysis in legal briefs. In litigation over the alleged similarity of marks, the owner will emphasize the similarities and the alleged infringer will emphasize the differences. The point is that the two marks should not be examined with a microscope to find the differences, for this is not the way the average purchaser views the marks. To the average buyer, the points of similarity are more important that minor points of difference. A court should not engage in “technical gymnastics” in an attempt to find some minor differences between conflicting marks. However, where there are both similarities and differences in the marks, there must be weighed against one another to see which predominate. The rationale of the anti-dissection rule is based upon this assumption:“An average purchaser does not retain all the details of a mark, but rather the mental impression of the mark creates in its totality. It has been held to be a violation of the anti-dissection rule to focus upon the “prominent” feature of a mark and decide likely confusion solely upon that feature, ignoring all other elements of the mark. Similarly, it is improper to find that one portion of a composite mark has no trademark significance, leading to a direct comparison between only that which remains.” [Underlined for Emphasis]

34. In the facts of the present case, the learned Single Judge had found that the appellant held registration of the device marks/composite marks that contain the word ‘Vasundhra’ but it did not have any registration of the word mark ‘VASUNDHRA’. It is material to note that the appellant had applied for registration of the word mark but the same has not been granted to it as yet. The Court had, thus, found that the appellant did not have an exclusive right to use the word ‘Vasundhra’ except as part of its device trademarks.

35. This Court finds no infirmity with the said view. This Court concurs with the view that a proprietor of a trademark cannot expand the area or protection granted to the mark. Indisputably, the appellant does not enjoy the monopoly for use of the word ‘Vasundhra’.

36. This Court is also of the view that competing marks viewed as a whole - ‘The VASUNDHRA Trademarks’ and the device mark “VASUNDHRA FASHION/ ” - are not deceptively similar. The contention that the word ‘Vasundhra is a dominant part of the trademarks and therefore, entitled to protection is, prima facie, unpersuasive for several reasons.

37. First, that on a plain comparison of the VASUNDHRA Trademarks with the device mark “ /VASUNDHRA FASHION”, it is apparent that the trademarks are not similar. Even if it is accepted that the word ‘Vasundhra’ is a dominant part of the VASUNDHRA Trademarks, the device label “ /VASUNDHRA FASHION” cannot be accepted to be deceptively similar merely because it includes the word ‘Vasundhra’. The dominant part of the said trademark is a leaf, which is not common to the competing marks.”

35. In light of the observations of the two Division Benches of this Court and Section 17 of the 1999 Act, Plaintiff cannot claim exclusivity over the word d’mart in the absence of separate registration and therefore, the rival composite marks have to be compared as a whole without dissecting them into individual elements. Prima facie, Defendants are right in their submissions that word part of the label or device mark which is composite in nature can be asserted where the composite mark is a mere stylized representation of the word alone without any prefix or suffix. It needs to be highlighted that even now Plaintiff has only filed applications to register (device mark) in Classes 14, 21 and 25 vide TM Nos.3538246, 3538247 and 3538248, as can be seen from the documents filed on record and not for the word ‘d mart’, perhaps on a realization that a generic word such as ‘d mart’ may not succeed in registration.

36. From a comparison of the rival marks as a whole, this Court does not find any deceptive similarity, applying the principles laid down by the Division Bench in Vasundhra Jewellers Pvt. Ltd. (supra), which are captured by the learned Single Judge of this Court in Vasundhra Jewellers Pvt. Ltd. v. Vasundhara Fashion Jewelery LLP and Another, 2023 SCC OnLine Del 4185. Relevant paras read as follows:-

53. In view of the aforesaid stand taken by the plaintiff, the plaintiff cannot take a contrary stand in the present suit to the effect that the mark of the defendant no. 1 is deceptively similar to that of the plaintiff The plaintiff cannot be permitted to approbate and reprobate. Reliance in this regard may be placed on the judgment in Raman Kwatra v. KEI Industries Limited, 2023 SCC OnLine Del 38, the relevant extract of which is set out below:

54. A comparison of the marks of the plaintiff and the defendant no. 1 is given below: S.NO.

TRADEMARKS OF PLAINTIFF TRADEMARKS OF DEFENDANT NO.1

1. Application No.- Date of Application: 23/05/2003 User Detail: 01/01/1999 [Class: 14] Jewellery In Precious Metal And Gems. Application No.- 1207102 Date of Application: 17/06/2003 User Detail: 01/06/2001 [Class: 14] Precious Metals or coated therewith, Jewellery including imitation Jewellery and Precious Stones all being goods included in class 14.

2. Application No.- 22/05/2019 User Application No.- 1671186 Date of Application: 01/04/2008 [Class: 14] Goods of precious metals or coated therewith, Jewellery Detail:28/10/1999 [Class 14] Precious metals or coated therewith jewellery including imitation jewellery and precious stones. All being goods included in class 14. imitation Jewellery and Precious Stones all being goods included in class 14.

3. 19/12/2017 User Detail: 17/08/2016 [CLASS: 14]: Precious metals or coated therewith jewellery including imitation jewellery and precious stones. All being goods included in class 14. Application No.- 2645427 Date of Application: 19/12/2013 [Class: 14] Precious Metals or coated therewith, Jewellery including imitation Jewellery and Precious Stones.

4. Application No.- 3041398 Date of Application: 22.08.2015 [Class: 42] Jewellery Designing

55. The comparison of the above would show that there is a difference in spelling of the marks of the plaintiff and the defendant no. 1. The plaintiff uses the mark ‘VASUNDHRA’, whereas the mark of the defendant no. 1 includes an additional ‘A’ i.e., ‘VASUNDHARA’. Undoubtedly both the marks are phonetically identical. However, apart from the difference in the spellings of the marks of the plaintiff and the defendant no. 1, the manner and style of writing is also completely different. The plaintiff itself in its reply to the Examination Report dated 18th June, 2019 of the Trade Mark Registry, stated that there is no similarity and therefore, the same would not create any confusion in the minds of consumers when read as a whole. In my prima facie view, the marks when compared as a whole bear no deceptive similarity to each other and hence, would not create any confusion in the minds of consumers. Therefore, it cannot be said that the defendant no. 1 is passing off its goods as those of the plaintiff.” (Emphasis supplied)

37. It can be easily gleaned from the rival marks that Plaintiff’s mark has the word ‘Dolphin’s’ with a distinct image ‘ ’ over the word ‘d mart’, where ‘d’ is in a larger font compared to the word ‘mart’ and on a first impression test, the two words do not come across as a single word. The word ‘mart’ has two spiral lines underneath, depicting a wave, since Dolphin is really the takeaway of the trademarks. On the other hand, the impugned mark of the Defendants is a composite mark with a bright green background and the alphabet ‘D’ is separated from the word ‘Mart’ by a star placed over several horizontal lines in a triangular format i.e.. Therefore, in my prima facie view, the rival marks are not deceptively similar least of all identical and sans deceptive similarity, which is a sine quo non of infringement under Section 29, there is no likelihood or possibility of confusion on the part of the public and Plaintiff cannot assert infringement by the Defendants.

38. This Court has come to the aforesaid prima facie conclusion, based on the observations of the Division Bench in Vasundhra Jewellers Pvt. Ltd. (supra), that for analysing deceptive similarity in composite marks, anti-dissection is the rule. Be that as it may, even assuming for the sake of argument if the ‘dominant part’ test is to be applied, Plaintiff fails to meet the yardstick. In M/s. South India Beverages Pvt. Ltd. (supra), the Division Bench has held that dominant features are significant because they attract attention and consumers are more likely to remember them for identification of the product and therefore, the dominant part of the mark is that which has greater strength. Descriptive or generic components having little or no source identifying significance are generally less significant in analysis. Seen in this light, ‘d mart’ cannot be held to be the dominant part of Plaintiff’s trademarks, entitling it to protection. What appears distinctive/dominant in the mark is the alphabet ‘d' which cannot be given protection and as far as the word ‘mart’ is concerned, in English language it plainly means market and is generic and common to trade. Several entities are commonly known to use the word ‘mart’ such as JioMart, DailliMart, V-Mart etc. for retail stores. Therefore, intrinsically and inherently, it is difficult to say that ‘mart’ or its combination ‘d mart’ are strong marks entitled to protection in the absence of secondary evidence, which would be a matter of trial. It is also important to mention here that if Plaintiff would have sought registration in the word ‘d mart’ perhaps it may not have succeeded in getting registration and conscious of this fact while applying for registration of the composite mark. It is also to be noted that with respect to Plaintiff’s registration of the trademark in Class 25, in response to the First Examination Report, Plaintiff had stated ‘the subject mark DOLPHIN’s d mart is a composite logo mark and the same taken as a whole can be easily differentiated from the cited mark’, in order to differentiate its mark from the cited mark. Therefore, Plaintiff is estopped from asserting a right on the word ‘d mart’. In this context, I may refer to the judgement of the Division Bench in Raman Kwatra and Another v. KEI Industries Limited, 2023 SCC OnLine Del 38 and of the learned Single Judge of this Court in Vasundhra Jewellers Pvt. Ltd. (supra).

39. Insofar as the Plaintiff’s trademarks in Classes 14 and 21 are concerned, while no claim can be asserted for infringement, however, this would not preclude the Plaintiff from asserting a claim of passing off in view of the judgment of the Supreme Court in S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683.

40. Passing off is a right which finds genesis in common law and it is no longer res integra that three essential elements/ingredients have to be satisfied by the party alleging passing off against the opposite party as held by Lord Diplock in Erven Warnink BV v. J. Townend & Sons (Hull) Ltd., [1979] 2 All ER 927 and it would be apposite to refer to them hereunder: “(1) a misrepresentation, (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence), and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or in a quiatimet action will probably do so.”

41. In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, the Supreme Court elucidated the essential elements which constitute passing off and the same are as follows:-

42. Plaintiff’s claim of passing off will have to be examined in light of the aforementioned principles. Comparison of the rival marks of the Plaintiff as well as the Defendants is extracted hereunder, for ready reference:- Plaintiff’s Marks Defendants’ Mark (Class 25) (Class 14) (Class 25) (Class 14) (Class 21) D-MART (word mark) (Class 21)

43. From a bare perusal of the table above it can be seen prima facie that there is no deceptive similarity. Colour scheme; stylized manner of writing the word ‘d’mart’; distinct image of dolphin with or without the word ‘Exclusif’ in blue/red color in Plaintiff’s marks and star with horizontal lines separating the word ‘D’ from the word ‘Mart’ in the impugned marks, leads this Court to prima facie conclude there can be no confusion. In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, (1965) 1 SCR 737, the Supreme Court has held that in the case of passing off, unlike in the case of infringement, the Defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the Plaintiff. Relevant paragraph is as follows:

44. It is trite that ‘confusion’ arising out of ‘misrepresentation’ is the sine qua non of an action of passing off and in its absence no injunction can be granted. Defendants have pleaded and argued that there is wide gap in the revenues generated by the sale of products by the competing parties under their respective trademarks and even in 2016, before the suit was filed, the competitive sale figures were Rs.17.46 crores (Plaintiff) and Rs.8771.90 crores (Defendants). Therefore, this Court does not agree with the Plaintiff that Defendants are taking undue advantage of its reputation and goodwill to misrepresent and pass off their goods as that of the Plaintiff. It is also the unrebutted case of the Defendants that while Defendants run departmental stores/supermarkets, selling products at affordable prices, Plaintiff is into international home décor, art pieces, corporate gifts to connoisseurs ranging from silverware, handmade crystalware, bronzeware, etc. selling these products at a high price range. Emphasis was laid on the list of prominent clients of the Plaintiff filed as a part of Plaintiff’s documents which includes franchisees (B2B), prestigious clubs, star hotels, MNCs, embassies, builders, celebrities and media to argue that there is a huge difference in the class of consumers, leaving no room for confusion. Plaintiff has not placed enough material on record to enable the Court to draw a conclusion otherwise and on the contrary, photographs placed on record by the Plaintiff supports the case of the Defendants that majority of the stores of the Plaintiff are high-end stores with exclusive items selling at high prices.

45. In Britannia Industries Ltd. v. ITC Ltd. and Others, 2021 SCC OnLine Del 1489, this Court has emphasised and ingeminated that while examining the aspect of deception or confusion, Court has to identify the precise consumer base. It is also observed that there is no doubt that confusion or deceptive similarity is a sine qua non of an action of passing off, but Court is not expected to ferret out points of dissimilarity between two marks and has to only generally assess whether there is a deceptive extent of similarity, irrespective of individual dissimilar features. It is equally undisputed that the test is of a person of average intelligence and imperfect recollection and applying the test, this Court at this stage, is unable to gloss over the differences that Defendants have brought forth between the two rival marks and hold that a case of passing off is made out by the Plaintiff.

46. Last but not the least, the question that now arises is whether Plaintiff is entitled to an interim injunction, grant of which is governed by the trinity principles i.e. prima facie case, balance of convenience and irreparable harm and injury. As noted above, Plaintiff has been unable to establish a prima facie case of infringement and/or passing off. Balance of convenience is not in favour of the Plaintiff for multifarious reasons. The suit was filed in 2017 on the eve of the publication of the IPO of Defendant No.1. Court did not grant interim injunction and the factum of the suit having been filed on the eve of the IPO of Defendant No.1 finds a mention in the order dated 08.03.2017. Instead, the Court in a subsequent order dated 26.04.2017 directed the Plaintiff not to advertise/publish the pendency of the suit in any manner. By a further order dated 16.06.2017, Court restrained the Plaintiff from issuing any communication requiring the distributors, packers and suppliers of the Defendants to cease and desist from dealing in products of the Defendants and bearing their impugned mark. In the meantime, as per the position adopted by the Defendants, they have expanded their business and are currently running 234 stores across 11 States with an annual revenue of Rs.23,787 crores. If the figures given by the Defendants are correct, based on CA Certificate, sales invoices, etc., placed on record, then even in 2016 Defendants’ sales were to the tune of Rs.8,771.90 crores as against Plaintiff’s sale of Rs.17.46 crores. In these circumstances, if at this stage an injunction is granted against the Defendants, irreparable harm and injury shall be caused to the Defendants. Plaintiff has accepted the present position from 2003 when it had sent a cease and desist notice to the sister concern of Defendant No.1 and in these circumstances, this Court does not deem this to be a case where the position obtaining between the parties today should be altered to the detriment of the Defendants. In coming to this prima facie conclusion, this Court finds strength from the judgment of the Supreme Court in Wander Ltd. and Another v. Antox India P. Ltd., 1990 (Supp) SCC 727, where the Supreme Court held as follows:-

47. Relevant it would be in this context to refer to the judgment of this Court in Sun Pharma Laboratories Ltd. v. Finecure Pharmaceuticals Ltd. and Others, 2023 SCC OnLine Del 4932, relevant paragraph of which is as follows:- “115. Balance of convenience: Given the above facts and findings, and keeping in mind the fact that the plaintiff has, despite being aware of the use, by the defendants, of the impugned PANTOPACID mark since 2009, taken no steps till 2023 to injunct such use, during which time the defendants have also grown into a formidable market player, the balance of convenience would, in my opinion, clearly not justify bringing the use, by the defendants, of the PANTOPACID mark to a complete halt, at this late stage. Rather, the interests of justice would be subserved if the defendants are directed to maintain accounts of their earnings from use of the impugned PANTOPACID mark, and periodically submit them to the Court, pending disposal of the suit.”

48. The judgments relied upon by the Plaintiff no doubt lay down various propositions of law, which are beyond any debate, however, the same do not aid the Plaintiff. Reliance was placed on the judgment in Renaissance Hotel Holdings Inc. v. B. Vijaya Sai and Others, 2022 SCC OnLine SC 61, deals with infringement of the registered word mark ‘Renaissance’, which the Supreme Court found was infringed by the Defendants’ mark ‘Sai Renaissance’ on ground of visual, phonetic and structural similarity as also because use of the impugned mark by the Defendant as a trade name was hit by Section 29(5) of the Act. However, in the present case, Plaintiff does not have registration in the word ‘d mart’ and comparison of the registered device marks of the Plaintiff with the Defendants’ marks show no similarity. The judgment in United Biotech Pvt. Ltd. v. Orchid Chemicals & Pharmaceuticals Ltd. & Ors., 2012 SCC OnLine Del 2942, was relied upon by the Plaintiff to show that in the said case, Plaintiff only had registration in the label mark ‘ORZID’, yet protection was given to the word ‘Orzid’ being an essential feature of the label mark. The judgment is simply distinguishable as in the said case, the Court had found the word ‘ORZID’ to be the dominant part of the label mark and more importantly, being a matter related to medicines, the Court was of the view that the threshold of confusion was on a different yardstick. The judgment in Kaviraj Pandit Durga Dutt Sharma (supra) was relied on to point out the differences in proving a statutory action of infringement and common law remedy of passing off and how difference in get-up, packaging, etc. can be a ground to escape liability in an action of passing off. To my mind, this judgment aids the Defendants for the reasons stated above. Judgments in ITC Limited v. Godfrey Philips India Limited, 2010 SCC OnLine Cal 2343 and Godfrey Philips (India) Limited v. I.T.C. Limited, 2011 SCC OnLine Cal 1160 were cited by the Plaintiff to contend that the challenge to the registration of a trademark on the ground of non-use is not a challenge to the validity of the trademark registration. To my mind, this issue is irrelevant to the adjudication of the present application as this Court is not examining the question of validity of the trademarks. The judgment in Shri Swaran Singh Trading as Appliances Emporium v. M/s. Usha Industries (India) New Delhi and another, 1985 SCC OnLine Del 387, was relied on for the proposition that delay cannot come in the way of grant of interim injunction if Plaintiff is able to make out a case of infringement. There can be no quarrel with the proposition. However, as aforementioned, Plaintiff has not made out a prima facie case for infringement or passing off.

49. For the aforesaid reasons, this Court is of the view that the Plaintiff has failed to make out a prima facie case in its favour and balance of convenience also does not lie in favour of the Plaintiff. Rather, the balance of convenience tilts in favour of the Defendants at this stage and it is the Defendants who will suffer irreparable loss and injury if the injunction is granted in favour of the Plaintiff.

50. Accordingly, the application is dismissed. Defendants shall, however, maintain accounts of sales and file the same on an affidavit once in four months.

51. Needless to state that the observations and opinion of the Court expressed in the present judgment are only prima facie and will have no bearing on the final adjudication of the suit on merits.