Delhi High Court: A suit was filed by the plaintiff seeking permanent injunction restraining infringement of its trade mark and passing off. Prathiba M Singh, J., laid down the terms in which the matter stands resolved. The terms are that the Defendants shall cease use of the partial clock device and use a red/blue circular device for depicting/encircling the expression `15 minutes’. It will be ensured that the modified device does not look similar to a clock/watch and the Defendants shall not use the word XPERT as a trademark but shall only use the word EXPERT in a non-trademark sense in a descriptive manner.
The case of the plaintiffs is that in the year 1975, RSPL Ltd. (plaintiff), through its predecessor, adopted the trade mark DEVICE OF GHARI/WATCH/CLOCK in relation to soap/detergent. RSPL Health Private Limited, through its predecessors originally conceived, coined and adopted the trademark/label trade dress XPERT in the year 1993 in respect of manufacturing and marketing of washing soaps, washing powder, detergent cakes, toiletries, bleaching preparations and substances for laundry. The plaintiffs have numerous trade mark registrations for their mark DEVICE OF GHARI/WATCH/CLOCK and trade mark/label trade dress XPERT in several classes.
The grievance of the plaintiffs is the use of the mark EXPERT and depiction of the partial clock on the detergent packaging of the defendants as also the use of the word expert and use of the elongated X and DX. The case of the Plaintiffs is that its trademark GHADI used for detergents relates and connotes a watch/clock. Thus, the use of the depiction of a partial clock device for detergent products of the Defendants would violate the plaintiff’s right in the mark GHADI.
The conflicting marks are as follows:
The Court noted that the present suit was filed in 2020 and summons are yet to be issued. The parties were in mediation in an attempt to amicably resolve the disputes. Thus, the dispute was resolved in the following terms:
a) The Defendants shall cease use of the partial clock device and use a red/blue circular device for depicting/encircling the expression `15 minutes’. It will be ensured that the modified device does not look similar to a clock/watch.
b) The letters DX shall be used without the elongated `X’ as in the Plaintiff’s `XPERT’ mark;
c) The Defendants shall not use the word XPERT as a trademark but shall only use the word EXPERT in a non-trademark sense in a descriptive manner.
d) The Defendants shall also not use the DX along with elongated X and DX shall be used in a normal font.
e) The Defendants shall withdraw the trademark applications which consists of the partial clock device and an elongated X bearing nos. 4030559, 3986893, 3986892, 3979697 and shall not claim any copyright over the labels that are the subject matter of any of the said trademark application/registrations.
[RSPL Limited v Tata Sons Private Limited, 2023 SCC OnLine Del 7706, decided on 01-12-2023]
Advocates who appeared in this case :
Mr. S K Bansal and Mr. Pankaj Kumar Advocates for plaintiff
Mr. Pravin Anand, Mr. Achuthan Sreekumar, Mr. Rohil Bansal, Ms. Apoorva Prasad R., Advocates for defendants
