Delhi High Court: A Single Judge Bench of Amit Bansal, J. held that the marks “AIVVA” and “AIWA” were phonetically similar to each other and the use of the mark “AIVVA” by the defendants was dishonest and caused confusion in the market, therefore, the Court confirmed ex-parte ad interim injunction in favour of Aiwa Co. Ltd. for its mark “AIWA”.
The plaintiff was a company incorporated in Japan and was the registered proprietor of the trade mark “AIWA” in various classes including, Class 9 since 1982. The plaintiff's trade mark “AIWA” had been included in the list of well-known marks maintained by the Trade Mark Registry since 2007. In 2022, the plaintiff became aware of the defendants using the word mark “AIVVA” through their brochure both as a trademark in relation to its goods and as a part of its corporate name. The defendant was using not only the mark “AIVVA” but had also copied the stylized manner adopted by the plaintiff and as per the brochure, the defendants claimed to have registration in respect of the mark “AIVVA” with the alphabet ‘R' placed in a circle on the top right corner to denote registration of the mark.
The plaintiff conducted a search in the Trade Mark Registry in the relevant class which revealed that there was no registration of the said mark in the name of the defendants. The plaintiff arranged for the purchase of a TV set sold by the defendants and found that part from the mark “AIVVA”, the defendants were also using the other marks of the plaintiff and were involved in selling the infringing products. Therefore, the present suit was filed seeking relief of permanent injunction to restrain the defendants from using the trade marks “AIVVA” and “AIVVA ENTERPRISES PRIVATE LIMITED”, and/or any other marks which may be identical or deceptively similar to that of the plaintiff, thereby infringing the trade marks of the plaintiff or constituting passing off by use of the trade marks or any part of the trade name, corporate name, or domain name of the plaintiff.
Submissions on behalf of the Plaintiff
The plaintiff duly conducted a search of the Trade Mark Registry before filing the present suit and had filed the search report as per which the mark “AIVVA” was registered in name of the defendants. Further, it was submitted that the use and adoption of the trade mark “AIVVA” by the defendants, including as a part of their corporate name, was not only infringement of the trade mark of the plaintiff but also an attempt to ride on the reputation and goodwill of the plaintiff’s well-known trade mark. Moreover, defendants in their brochure had wrongly claimed registration of the mark “AIVVA”, when in fact, they were not the registered proprietors of the said trade mark. In any event, the defendants were not authorized to use the stylized imitation of the plaintiff's trade mark as there was no registration in respect of such stylized version.
Submissions on behalf of the Defendants
The defendants submitted that the plaintiff was aware of the user of the mark “AIVVA” since 2020 by the defendants, who were selling and marketing their products under the mark “AIVVA”, and the said products were also available for purchase on e-commerce platforms like IndiaMART.
Analysis, Law, and Decision
The Court noted that the defendants had failed to place any contemporaneous document in their favour to show that they were using the impugned mark since 2016. Further, the Court opined that the defendants had wrongly projected themselves in their brochure as being the registered proprietors of the trade mark “AIVVA” by using the symbol of the letter ‘R' in a circle.
The Court noted that the definition of “permitted user” in Trade Marks Act, 1999 required “permitted use” registered trademark to be founded on the written consent of the registered proprietor. Therefore, the Court held that the defendants had failed to show that they were either the registered proprietors of the trademark “AIVVA” or were permitted users thereof since 2015 and there was no justification for the defendants to use the stylized marks in respect of which there was no registration in favour of the defendants.
The Court opined that after a perusal of the listing of the products of the defendants on the website www.indiamart.com, it clearly showed that the TVs being sold by the defendants bear the trade mark of the plaintiff and therefore, it could not be said that the plaintiff had wrongly stated that the defendants were using the trade mark “AIWA”.
Therefore, the Court held that a comparison of the marks of the defendants with those of the plaintiff showed that the marks used by the defendants were phonetically similar to the plaintiff's marks and the products being sold by the defendants were similar to the plaintiff's products. The Court further noted that “on account of the publicity and long use of the “AIWA” mark and its stylized versions by the plaintiff and the expenses incurred for advertising and promoting the products carrying the said marks, the plaintiff had acquired enormous goodwill and reputation worldwide”.
The court held that the defendants use of the impugned marks was prima facie dishonest and nothing but an attempt to ride on the goodwill and reputation of the plaintiff's marks as also to cause confusion in the market. Therefore, the Court held that the interim order passed by this Court wherein ex-parte ad-interim injunction was granted in favour of the plaintiff was confirmed till the final adjudication of the present suit.
The Court listed the matter for 20-4-2023.
[Aiwa Co. Ltd. v. Aivva Enterprises (P) Ltd., 2023 SCC OnLine Del 6, decided on 5-1-2023]
Advocates who appeared in this case :
For the Plaintiff: Advocate Anuradha Salhotra
Advocate Sumit Wadhwa
Advocate Ayush Samaddar
For the Defendants: Advocate S.K. Bansal
Advocate Pankaj Kumar
*Simranjeet Kaur, Editorial Assistant has reported this brief.