Delhi High Court: In a case wherein, Royal County of Berkshire Polo Club Ltd., (appellants) had filed an appeal under Section 13 of the Commercial Courts Act, 2015 to challenge the judgment dated 6-5-2019 passed by the Single Judge of the Delhi High Court, the Division Bench of Vibhu Bakhru and Amit Mahajan*, JJ., opined that without viewing the overall commercial impression of the mark, Single Judge was not correct in holding that the appellants’ mark was deceptively similar to the respondents’ mark, and accordingly set aside the impugned judgment.
Background
In the instant case, Lifestyle Equities CV (respondents) claimed that in 1986, its predecessors applied for the registration of its logo mark 
in France. Thereafter, in 1992 the said logo mark was applied in India, and subsequently, under the said Trade Mark, the products were launched.
The respondents claimed that they had entered into various retail agreements for distribution and sale of the products under the said logo mark. Further, in 2012, the respondents incorporated another company for conducting fragrance business in India, and the products with the same logo mark had been marketed since then.
The respondents came to know that the appellants were using the impugned logo mark and sent the legal notice to the petitioner on 27-11-2017. The respondent also filed an opposition against appellants’ application for registration of its mark 
, which also covered fragrance products.
The respondents claimed that in May 2018, they came to know that the appellants were about to launch their fragrance product bearing the infringing logo mark and trade dress.
The appellants replied to legal notice sent by the respondents and denied all the allegations of the infringement.
Thereafter, the respondents filed a suit before the Single Judge of the present Court along with an application under Order 39 Rule 1 and 2 of Civil Procedure Code, 1908 to seek infringement against the appellants.
The Court held that the appellants’ logo was structurally similar to that of the respondents’ logo. Further, as the two logo marks related to the same goods, it was likely to cause confusion and comparison of the two marks makes it apparent that the logo was deceptively similar to the respondents’ logo mark.
Analysis, Law, and Decision
The Court relied on Amritdhara Pharmacy v. Satya Deo Gupta, 1962 SCC OnLine SC 13 and opined that it was not right to take a portion of the mark and compare it with the corresponding portion of the competing mark. The true test was whether the alleged infringing trademark as a whole was likely to cause deception or confusion in the minds of the persons accustomed to the existing trademark.
The Court stated that it was permissible to give importance to the dominant feature of the composite mark, because it could be compared with the conflicting mark to determine whether the marks were deceptively similar when viewed as a whole.
The Court further stated that the question of similarity was to be approached from the view point of a man of average intelligence and imperfect recollection for whom the overall structural and phonetic similarity of the two marks was likely to cause confusion. Meanwhile, it was permissible to determine an essential feature of the mark and see whether the same was deceptively similar to an essential feature of the competing mark.
The Court noted that the Single Judge had rightly held that the ‘Polo Player’ device was an essential and significant feature of the respondents’ mark. However, observing the two logo marks, the Court opined that the Single Judge had, erred in holding that the appellants’ mark was deceptively similar to the essential feature of the respondents’ logo mark.
The Court opined that, in the appellants’ mark 
and the respondents’ mark 
the word, ‘polo club’, was identical. Further, since the respondents had admitted that they did not have any objection with the use of the words ‘polo club’, the Single Judge had found the similarity in both the marks because of the picture of a horse with a player.
The Court opined that it was admitted that the logo of a horse and a player was being used by many other companies and the most prominent being ‘Ralph Lauren’ with its mark 
, which was the earliest worldwide user of the logo of a polo device.
The Court took note of the undisputed facts, that the appellants’ actual name Royal County of Berkshire Polo Club was in existence since 1985 and the appellants were not the standalone user of the polo player device mark and had been using the similar mark in its products in various countries. The Court opined that the use of the appellants’ actual name was bona fide and was permissible under Section 35 of the Trade Marks Act, 1999. Further, the appellants had been using the polo player device marks in many countries, thus, its adoption in India could not be held to be mala fide.
The Court opined that even though the channel of marketing and sale of the products were same, it could not be ignored that the products were not bought by the gullible public and the addition of a different looking logo with the words, ‘polo club’, would not make the composite mark deceptively similar.
The Court stated that while hearing an appeal against an interim order, the Appellate Court could not disturb the prima facie findings, but it could substitute its own discretion, when it was found that the Trial Court had exercised the jurisdiction arbitrarily, capriciously or ignored the settled principles of law regarding grant of injunction.
Thus, the Court opined that the Single Judge had ignored the settled principles of law of grant of injunction and accordingly, set aside the judgment passed by the Single Judge of this Court.
[Royal County of Berkshire Polo Club Ltd. v. Lifestyle Equities CV, 2023 SCC OnLine Del 5347, decided on 28-08-2023]
Advocates who appeared in this case :
For the Appellants: Anjali Jha Manish, Priyadarshi Manish and Ritaj Kacker, Advocates;
For the Respondents: J. Sai Deepak, Mohit Goel, Sidhant Goel, Deepankar Mishra, Karmanya Devsharma and Abhishek Kotnala, Advocates;
*Judgment authored by – Justice Amit Mahajan
Buy Trade Marks Act, 1999 HERE
