Composite trade marks not to be dissected to determine deceptive similarity, comparison to be made as a whole: Delhi High Court

Delhi High Court: While hearing a case for the grant of interim injunction under Section 29 of the Trade Marks Act, 1999 (‘Act') to the plaintiff, Dolphin Mart Pvt. Ltd., bearing the trade mark (d'mart); Jyoti Singh, J.*, rejected the application by stating, that the use of the trade mark (DMART) by the defendant, Avenue Supermarts Ltd., was neither deceptively similar nor identical, to the mark of the plaintiff and was unlikely to cause confusion in the eyes of a reasonable man.

Background

The plaintiff under the trade mark “d'mart Exclusif” included home décor and gifting solutions to connoisseurs ranging from silverware, handmade crystalware, bronzeware, hand crafted marble art pieces, limited edition pieces etc. The “d'mart Exclusif” was also the pioneer in introducing collection of Worldwide Limited Edition, representations of Indian Deities handcrafted in sterling silver, porcelain, and marble. The plaintiff contented that it had coined and adopted its name in 1992 where prefix ‘d' represented Dolphin which was the name of plaintiff Group, and the Company and suffix ‘mart' was adopted to represent the size of the store.

Defendant 1 was engaged in the business of supermarket with focus on Foods, Non-Foods ( FMCG) and General Merchandise and Apparel product categories. The supermarket stores stock home utility products including food, toiletries, beauty products, garments, kitchenware, bed and bath linen, home appliances etc.The plaintiff discovered the brand of the defendant on 08-03-2017 through an advertisement published by the defendant for its Initial Public Offering (‘ IPO'). On inquiry, the plaintiff learnt that the defendants were engaged in the business of running supermarkets under the trade mark . The plaintiff also learnt that Defendant 1 applied for registration of the trade marks D MART/DMART device/D MART MINIMAX in Classes 14, 21 and 25, which were either objected to by the Registrar of Trade Marks and/or were under opposition. It was this advertisement in the news pertaining to the defendants' IPO for DMART supermarket, which led to the filing of this suit.

Analysis, Law, and Decision

The Court noted that the plaintiff's mark and the defendants' mark were composite trade marks, which implied that they were a combination of different elements, and their registration would not grant an exclusive right in the word ‘d mart '. The Court further noted that the plaintiff did not have registration in the work “ d‘mart ”. The Court relied on Vasundhara Jewellers (P) Ltd. v. Kirat Vinodbhai Jadvani, 2022 SCC OnLine Del 3370 and opined that “a composite trade mark was not to be dissected to determine whether there was any deceptive similarity with the impugned trade mark and comparison hasd to be by taking the rival marks as a whole”.

Therefore, the Court opined that the plaintiff could not claim exclusivity over the word d'mart in the absence of separate registration and therefore, the rival composite marks had to be compared as a whole without dissecting them into individual elements. The Court further opined that prima facie, the rival marks were not deceptively similar least of all identical and sans deceptive similarity, which was a sine quo non of infringement under Section 29 of the Act, there was no likelihood or possibility of confusion on the part of the public and the plaintiff could not assert infringement by the defendants.

Hence, the Court rejected the contention that prefixing the letter “d” before the word “Mart” would entitle the plaintiff to make a claim for infringement of its right.

Comparison of the marks of Plaintiff and Defendants

The Court after noting the “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 the plaintiff's marks and star with horizontal lines separating the word ‘D' from the word ‘Mart' in the impugned marks” concluded that there could be no confusion.

The Court relied on , 2021 SCC OnLine Del 1489, and observed that “there was no doubt that confusion or deceptive similarity was a sine qua non of an action of passing off, but the Court was not expected to ferret out points of dissimilarity between two marks and had to only generally assess whether there was a deceptive extent of similarity, irrespective of individual dissimilar features”. The Court opined that the plaintiff had failed to prove that a prima facie case of infringement and/or passing off would be made out. Furthermore, it was observed the two trade marks in question (d'mart) and (DMART) were neither identical n or deceptively similar so as to cause confusion in the eyes of a prudent man.

Additionally, the Court observed the vast difference in the revenue generated by parties in the year 2016. The defendant generated Rs. 8,771.90 crore in turnover while the plaintiff generated a sum of Rs. 17.46 crore. Upon consideration of these facts, the Court opined that the plaintiff had failed to prove how the actions of the defendant had caused injury or irreparable harm to their business. The Court rejected the application for interim injunction on the ground that a prima facie case was not made out and balance of convenience also did not lie in favour of the plaintiff. Rather, the balance of convenience tilted in favour of the defendants at this stage, and it was the defendants who would suffer irreparable loss and injury if the injunction was granted in favour of the plaintiff. Thus, the Court dismissed the application and ordered the defendants to maintain a record of their sales, for the purpose of future litigation.

[Dolphin Mart Pvt. Ltd., v. Avenue Supermarts Ltd., 2023 SCC OnLine Del 5170, decided on 21-08-2023]

Advocates who appeared in this case :

For the Plaintiff: Anuradha Salhotra, Sumit Wadhwa, Sharika Vijh and Siddhant Shrivastava, Advocates.

For the Defendants: J. Sai Deepak, Guruswamy Nataraj, Avinash Kumar Sharma, Pranav Krishna and Ankur Vyas, Advocates.

*Judgement by- Justice Jyoti Singh

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