Delhi High Court: In a suit filed for injunction by the Plaintiff restraining the Defendant from selling, offering for sale, advertising or promoting any product under the trademark ‘APPLEPLANT’ or any trademark similar to Plaintiff’s trademark ‘APPLESTREE’, which may cause confusion and deception in the market, leading to passing off Defendant’s goods as those of the Plaintiff, including products in similar packaging, get-up, trade dress as well as infringement of copyright in the artistic work comprised in Plaintiff’s label, Jyoti Singh, J., restrained the defendants as the plaintiff has made out a prima facie case for grant of injunction as well as balance of convenience also lies in favour of the Plaintiff who has been using the trademark since the year 2018, i.e., prior in point in time to the Defendant who has dishonestly chosen to adopt a deceptively similar trademark in 2019 in respect of identical goods, with a view to pass off his goods as that of the Plaintiff.
Counsel for plaintiff contended that the impugned trademarks NUAPPLEPLANT /, are identical/deceptively similar to Plaintiff’s trademark APPLESTREE and Defendant has also slavishly copied the packaging/get-up/trade dress. The rival products are identical i.e. Abrasive Papers, Abrasive Sand, Abrasive Rolls, Abrasive Paper/Paste etc. and the trade channels being identical and the class of consumers being same, there is every likelihood that consumers will be confused into believing that the products of the Defendant emanate from the Plaintiff, amounting to passing off and violation of Plaintiff’s common law rights.
The conflicting marks are as follows:
Issue 1: Whether Plaintiff can make a claim of passing off against the Defendant in view of the latter being a registered proprietor of the impugned trademark?
Placing reliance on S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, N.R. Dongre v. Whirlpool Corporation, 1995 SCC OnLine Del 310, Century Traders v. Roshan Lal Duggar & Co., 1977 SCC OnLine Del 50, the Court noted that the Plaintiff would have to prima facie establish that use of the trademark APPLESTREE was anterior to the use of the impugned marks by the Defendant.
The Court further noted that the invoices filed by the Plaintiff do reflect sales of the products in question under the trademark APPLESTREE with effect from 01-01-2018 and there cannot be a scintilla of doubt that this is prior to the year of user of the Defendant, i.e., 2019 and thus, it can be prima facie held that Plaintiff is the prior user of the trademark APPLESTREE with respect to Abrasive Papers etc.
Issue 2: Whether the Plaintiff is able to prima facie establish her claim of passing off against the Defendant?
As per Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, the necessary ingredients required to be established for passing off are (a) misrepresentation by a trader in the course of trade to prospective customers; and (b) deliberate and calculated intent to encash upon and cause damage to the reputation and goodwill of the other trader.
Placing reliance on Kirorimal Kashiram Makreting & Agencies Pvt. Ltd. v. Shree Sita Chawal Udyog Mill, 2010 SCC OnLine Del 2933 and Amar Singh Chawal Wala v. Shree Vardhman Rice and Genl. Mills, 2009 SCC OnLine Del 1690, the Court noted that a perusal of the rival marks shows that APPLE is a prominent part of the trademark of the Plaintiff and copying the prominent part, especially when the competing products are identical, would lead to deceptive similarity. Defendant has copied the essential part of Plaintiff’s trademarks and has merely added the suffix PLANT as well as a prefix NU thereto.
Further placing reliance on Greaves Cotton Limited v. Mr. Mohammad Rafi & Ors., 2011 SCC OnLine Del 2596 and K.R. Chinna Krishna Chettiar v. Shri Ambal and Co., Madras and Another, (1969) 2 SCC 131, the Court noted that the impugned mark NUAPPLEPLANT is deceptively similar to Plaintiff’s mark APPLESTREE when compared and seen visually.
Issue 3: Do the marks also have semantic similarity?
The Court observed that not only there is a visual similarity in the competing marks but the two are also similar in idea i.e. semantic similarity.
In semantics, there are broadly three sense relations:‘Hyponyms’, ‘Synonyms’ and ‘Antonyms’. Placing reliance on Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142 and Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers Pvt. Ltd., 2015 SCC OnLine Del 10164, the Court stated that the words in the English language system are so related that they form a complete lexical system and a grouping, i.e., genus and species. As an illustration, under this concept, purple, pink, white, brown, violet etc. would fall under the genus ‘colours’ and similarly, knives, spoons, forks would have a semantic relationship with the genus ‘cutlery’.
Thus, the Court opined that the words PLANT and TREE are a classic example of synonymy where reading one would bring to the mind of a purchaser the other, which he may have seen as a part of the trademark on an earlier occasion but is unable to decipher the difference on account of imperfect recollection. This confusion will be enhanced where the two trademarks are used for identical products and class of purchasers and trade channels are identical. A purchaser with average intelligence and imperfect recollection would go by the overall and first impression of the trademark and the similarity in idea is likely to cause confusion.
The Court concluded that a comparative study of the packaging/label/outer carton of the Plaintiff’s product with that of the Defendant’s product would show that the background of both is a dark pink color, the color combination is pink and white, both have image of an apple on the label and in my view, the similarities outweigh the trivial dissimilarities.
Thus, the Court held that the adoption of the impugned trademark by the Defendant is dishonest and viewing the two trademarks, it is clear that an attempt has been made by the Defendant to pass off his goods under the impugned trademark by coming as close as possible to the Plaintiff’s packaging/label in terms of colour combination, background colour, graphics, etc.
[Vinita Gupta v. Amit Arora, 2022 SCC OnLine Del 3249, decided on 28-09-2022]
Advocates who appeared in this case:
Mr. N. Mahabir, Mr. Abhishek Saini and Mr. P.C. Arya, Advocates, for the Plaintiff;
Mr. Umesh Mishra, Mr. Junaid Alam and Mr. Nishant Mahtta, Advocates, for the Defendant.
*Arunima Bose, Editorial Assistant has put this report together.