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HIGH COURT OF DELHI
CS(COMM) 207/2021
ZED LIFESTYLE PVT LTD ..... Plaintiff
Through Mr. Sanjiv sindhwani, Sr. Adv. with Ms. Anuradha Salhotra, mr. Sumit Wadhwa, Mr. Ankit Rastogi, Ms. Saugaat Khurana and Ms. Aditi Menon, Adv.
PANSHERIYA & ORS. ..... Defendants
Through None for Defendant Nos. 1 and Ms Sneha Jain and Ms Surabhi Pande, Advs. for Defendant No.3
JUDGMENT
16.08.2021 (Video-Conferencing)
2. By order dated 4 IA 5970/2021 (Order XXXIX Rules 1 and 2 CPC) in CS(COMM) 207/2021
1. Defendant Nos. 1 and 2, who ought to be the main contesting defendants in this matter, have repeatedly remained absent. th May, 2021, I had injuncted Defendant Nos. 1 and 2 from using the impugned “BEARDO” mark on goods in respect of which they did not hold valid and subsisting registrations and in respect of which, on the other hand, valid registrations were held by the plaintiff. The plaintiff holds valid registrations of the word mark 2021:DHC:2485 “BEARDO” as well as the device mark, in conjunction with the picture of a bearded gentleman who bears an uncanny resemblance to Herge’s Captain Haddock. The plaintiff holds 18 registrations for the said device mark and word mark in as many as eight Classes, which have been enlisted in a tabular fashion in para 8 of the plaint. Among these is the registration of the work mark “BEARDO”, in Class 3 in respect of “Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, beard wash, beard balm, beard and hair pomade, beard & hair colour, mustache, beard & hair wax & cream, oils, shampoos and conditioners, face scrubs, mask & clay hair scrubs, mask & clay, beard & hair & face spa oils, scrubs, cream, lotions, spf creams, skin care and body care items, after shave and pre shave lotions and preparations, body gel and shower gels, beard oil, face wash, shampoo, soaps, perfumery, essential oils, cosmetics preferably hair oil, lotion, cream, gel for beard, and dentifrices”.
3. As noted hereinabove, there is no response by the defendants to the present application, despite notice having been issued as far back as on 4th
4. Mr. Sindhwani has pressed for extending the interim relief granted to the plaintiff also to cover goods in respect of which Defendant Nos. 1 and 2 hold valid registrations. To support this prayer, Mr. Sindhwani submits that the registration granted to Defendant No. 1 in respect of mark “BEARDO”, even in respect of Classes 7 and 11, is invalid and that rectification application, preferred May, 2021. by the plaintiff to strike off the said marks from the register of trademarks, are presently pending before the Registry of Trademarks. In such circumstances, he submits, relying on the judgment of a Division Bench of this Court in Raj Kumar Prasad v. Abbott Healthcare Pvt. Ltd.[1]
5. A reading of the decision in Raj Kumar Prasad, that an action for infringement can lie even against such registered trademark. bears out the submission of Mr. Sindhwani. This Court has, in the said decision, counterbalanced Section 28(3) of the Trademarks Act, 1999 (“the Act”, in short), which Section 28(1) and Section 124(1) and (5) thereof, to hold that, where invalidity of the impugned mark of the defendants is pleaded by the plaintiff, the mere fact that the impugned mark happens to be registered cannot inhibit the Court from injuncting its further use. Incidentally, in Raj Kumar Prasad[1], as well as the present case, the plaintiff has instituted proceedings before the Registry of Trademarks, seeking rectification of the register to remove the impugned marks of the defendants therefrom. For ready reference, paras 1, 7, 15 and 18 of the report in Raj Kumar Prasad[1]
1. The question: Whether the registered proprietor of a trademark can sue another registered proprietor of a trademark alleging deceptive similarity keeps on arising in this Court. The consistent view taken by learned Single Judges is that such a suit would be maintainable and thus by way of an interim injunction the defendant can be restrained from marketing goods under the offending trademark. The question has arisen once again in the suit filed by Abbott may be reproduced, thus: 2014 (60) PTC 51 (DEL) Healthcare Pvt. Ltd. and the antagonists are Raj Kumar Prasad and Alicon Pharmaceuticals Pvt. Ltd. *****
7. The issue concerning grant of interim injunction pending determination of the suit was debated around three points. Whether prima facie Courts at Delhi lacked territorial jurisdiction. Secondly on the assignment agreements being drawn on stamp papers of adequate stamp value and lastly on the effect of Raj Kumar Bansal having obtained registration of the trademark ‘AMAFORTEN’ for pharmaceutical products having similar formation as that of Abbott. *****
15. It is no doubt true that a reading of sub-Section 1 of Section 28 of the Trademarks Act, 1999 would evidence a legal right vested in the registered proprietor of a trademark to exclusively use the same in relation to the goods or services in respect of which the trademark is registered and to obtain relief in respect of infringement of the trademark. It is also true that a mere reading of sub-Section 3 of Section 28 of the Trademarks Act, 1999 would evidence a mutually exclusive right in two or more registered proprietors of trademarks which are identical with or nearly resemble each other to use the trademarks; none being in a position to sue the other, and each being empowered to sue other persons. *****
18. Sub-Section 1 of Section 124 of the Trademarks Act, 1999 would guide us that it contemplates a suit for infringement of a trademark on the allegation of invalidity of registration of the defendant’s mark and even includes a case where a defendant pleads invalidity in the registration of the plaintiff’s trademark. In such a situation the legislative intent clearly disclosed is, as per sub-Section 5 of Section 124, to stay the suit, to enable either party to take recourse to rectification proceedings before the Registrar of Trademarks, but after considering what interlocutory order needs to be passed. Sub-Section 5 reads: The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit.” (Emphasis supplied)
6. Specifically on the aspect of infringement, Mr. Sindhwani places reliance on Section 29(4) of the Act, which reads as under: “29. Infringement of registered trade marks – ***** (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which – (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.”
7. A bare reading of Section 29(4) of the Act reveals itself to be in the nature of an exception to Section 29(1) and (2) of the Act. Section 29(4) of the Act also brings, within the ambit of “infringement”, cases in which the rival marks are used on dissimilar goods, subject to the cumulative satisfaction of the following criteria:
(i) The two marks must be identical or similar.
(ii) The plaintiff’s mark must have a reputation in India.
(iii) The defendant’s mark must take unfair advantage of, or be detrimental to, the distinctive character or repute of the plaintiff’s mark.
(iv) The use of the defendant’s mark in such a fashion must be “without due cause”.
8. The application of these criteria came in for searching scrutiny by a Division Bench of this Court in Ford Motor Company v. C.R Borman[2]
9. Inasmuch as the plaintiff holds a valid registration even for the word mark “BEARDO”, the very use of the word “BEARDO” as a mark by the defendants, satisfies the first of the aforesaid criteria, of the two marks being identical or similar in nature. The fact that the plaintiff’s mark has a reputation in India is also vouchsafed by the pleadings in the plaint and stands recognized by this Court in its order dated 4th
30. A perusal of the Impugned Products received through May, 2021. The plaint specifically avers that there is no legitimate cause forthcoming for the defendants to be using the “BEARDO” mark – which, it may be noted, has no etymological meaning and is clearly in the nature of an invented word – and, in the absence of any response by the defendants, has to be treated, on demurrer, as correct. Apropos the fourth requirement, of the use of mark by the defendants, resulting in unfair advantage or being detrimental to the distinctive character or repute of the plaintiff’s mark, Mr. Sindhwani drawn my attention to paras 18, 30, 31 and 53 of the plaint, which contain the relevant assertions in that regard and may be reproduced thus: “18. Such aforementioned acts are causing the Plaintiff excessive and irreparable damage especially considering the vital role played by the Plaintiff’s digital strategy in growing and sustaining its business. The Defendant No. 1 with a malafide intention has deliberately used Plaintiff’s trade mark in order to enjoy the brand visibility which Plaintiff has earned over the years by spending enormous amount of effort and money. The brand value created by Plaintiff is being diluted by such acts. ***** the purchase made via the Defendant No. 3 revealed that the use of the mark BEARDO was limited to the Impugned Listings and that the mark BEARDO was not affixed on any of the products received. Such use further speaks to the disingenuous nature of Defendant No.1 as it confirms that the Impugned Listings have been intentionally designed to ensure consumers are redirected and led to believe that an association exists with the Plaintiff and to mislead consumers into believing that they are purchasing the Plaintiff’s products under the BEARDO mark. The Defendant No. 1 is deliberately attempting to harp upon the years of goodwill and reputation associated with the brand which is created by the Plaintiff.
31. The Defendants No. 1 and 2 are selling and/or offering for sale, products under the BEARDO mark which are either identical to and/or similar and/or allied or cognate to the products of the Plaintiff, under the BEARDO mark and which products have no connection whatsoever with the Plaintiff. This in fact is deceiving the customers of Plaintiff in believing that the products of the said Defendant are related to the Plaintiff. The said confusion is further corroborated by the use of a deceptively similar logo by the Defendant No. 1 with the device of a bearded man, as explained above. *****
53. The adoption of the trade mark BEARDO by the Defendant Nos. 1 and 2 is evidently dishonest and with the sole intention of trading upon and benefitting from the Plaintiff’s goodwill in its BEARDO formative marks and the appropriation of which being without due cause, takes unfair advantage of and is detrimental to the distinctive character and reputation of Plaintiff’s registered trade mark BEARDO formative marks. This is also likely to lead to dilution of the Plaintiff’s mark BEARDO by way of tarnishment and cause adverse damage to the Plaintiff.”
10. These assertions, too, have gone unrebutted by the defendants and have, therefore, prima facie, to be treated as correct.
11. The criteria envisaged by Section 29(4) of the Act, which require cumulative satisfaction in order for the injunction to issue, restraining the use of a mark which may not be used for same goods or services in respect of which the plaintiff uses its mark, stand satisfied.
12. As such, Defendant Nos. 1 and 2 are restrained from using the mark “BEARDO” by itself or in conjunction with any other figure, whether of a bearded man or otherwise, in respect of any Class or goods, including goods falling in Classes 7 and 11, till further orders.
13. Defendant No. 3, who is also represented by Ms. Neha Jain, is also directed to remove, from its website, all pages which relate to sale of goods by Defendant Nos. 1 and 2, using the “BEARDO” mark, irrespective of the Class, category or nature of goods in respect of which the mark is being used. Inter alia, Defendant No. 3 would be required to take down, from its website, the listings at pages 31 to 136 of the documents with the present plaint.
14. The application stands allowed accordingly. IA 9594/2021 (Order XXXIX Rule 2A CPC) Renotify on 29th September, 2021.