Delhi High Court: In a case wherein, a quia timet suit filed by plaintiff, Volans Uptown LLC, seeking various remedies including a permanent injunction restraining defendant from passing off goods under plaintiff’s trade mark ‘Botanic Hearth’ (‘the Mark’) and any other derivatives of this mark, Sanjiv Narula, J.*, granted permanent injunction in favour of plaintiff and opined that identical trade mark was likely to mislead the consumers.
Background
Plaintiff, incorporated in Delaware, USA, was engaged in the business of manufacturing and selling cosmetic, skin and hair care products made from natural ingredients under the Mark. Plaintiff had registered the word mark ‘Botanic Hearth’ and ‘
’ in 2017 in USA and filed application for registration of the same in Canada and India and the ownership extended to any other forms or derivatives of the trade mark including, inter alia, ‘Botanic Hearth Cosmeceuticals’ and ‘
’ (‘plaintiff’s marks’). Plaintiff had been selling its products in various countries through e-commerce platforms including its website ‘https://botanichearth.com/’ since at least 27-08-2018 and their products were available in India since September 2020.
In September 2022, plaintiff learned that defendant had filed a trade mark application for the word mark ‘Botanic Hearth’ in class 3 on a proposed to be used basis, incorporating the Mark in entirety.
Analysis, Law, and Decision
The Court relied on Kuldip Singh v. Subhash Chandra Jain, (2000) 2 SCALE 582, wherein the Supreme Court endorsed the doctrine of quia timet action and thus, this Court had granted ex parte ad interim injunction in favour of plaintiff on 28-04-2023. The injunction restrained defendant from engaging in any activities that involved direct or indirect use, manufacture, advertisement, sale, offer for sale, or exportation of products associated with the Mark. The Court opined that plaintiff held the status of prior user and adopter of the Mark as it was using it globally since 2017 and in India since 2020.
The Court opined that defendant’s application for registration of a trade mark identical to the Mark, specifically for the same class of goods and services in which plaintiff operated, had significant concern of potential confusion and deception among the public. The Court further opined that such confusion not only risks diluting the distinctiveness of plaintiff’s trade mark but also posed a threat of causing irreparable damage to plaintiff’s well-established business, goodwill, and reputation in the market.
The Court observed that defendant’s intention to override and encash upon the goodwill and reputation of plaintiff was evident from their claim of proprietorship in the impugned trade mark application. The Court further opined that defendant had motive to be engaged in infringing activities as it had filed multiple trade mark applications for different renowned brands.
The Court further opined that defendant’s strategy of filing for trademarks identical to those of renowned and internationally recognized brands points to a deliberate practice of ‘Trade mark Squatting’, which involved the adoption, application for registration, or even successful registration of trade marks associated with prominent brands, with the calculated intent to sell those rights at a premium to original trade mark owners. The Court opined that such conduct posed a significant threat to the integrity of trade mark law, underscoring the need for judicial intervention to protect and safeguard the rights of legitimate trade mark owners, such as plaintiff, in the present case. Thus, the Court granted permanent injunction in the favour of plaintiff in accordance with Order VIII Rule 10 of Civil Procedure Code, 1908.
[Volans Uptown LLC v. Mahendra Jeshabhai Bhabhaniya, 2024 SCC OnLine Del 881, decided on 15-01-2024]
*Judgment authored by: Justice Sanjeev Narula
Advocates who appeared in this case :
For the Plaintiff: Siddharth Varshny and Aditya Gupta, Advocates
