Delhi High Court: A suit was filed by Sterling Agro Industries Limited (plaintiff) seeking a permanent injunction to restrain the defendants from using the infringing mark ‘NOVYA’ and violating the plaintiff’s trademark rights. Sanjeev Narula, J., upheld the plaintiff’s claims of trademark infringement and passing off, finding the defendants’ actions to be dishonest and in violation of the plaintiff’s established rights.
Sterling Agro Industries Limited, known for its high-quality dairy products bearing the distinctive trademark ‘NOVA’, has been a key player in the industry since 1991. With numerous trademark registrations under its belt, the plaintiff has firmly established its brand in the market. However, in 2019, the plaintiff was shocked to discover that the defendants, a partnership firm, were selling products under the confusingly similar mark ‘NOVYA’, along with the packaging that closely resembled the plaintiff. The plaintiff has taken legal action, alleged infringement and passing off, and was seeking a permanent injunction against the defendants.
The plaintiff submitted that they had established significant goodwill and recognition under the ‘NOVA’ trademark through years of continuous use and extensive advertising efforts. They presented evidence of increasing sales figures and promotional activities. The plaintiff claimed that the defendants’ use of the mark ‘NOVYA’ amounted to passing off and infringement, as it closely resembled the plaintiff’s trademark and packaging. The defendants contested the Plaintiff’s claims, arguing that there were significant differences between the marks ‘NOVA’ and ‘NOVYA.’ They claimed that their trademark application for ‘NOVYA’ encompassed various goods beyond those covered by the plaintiff’s trademark. The defendants also denied any intentional imitation or infringement, stating that they had not commenced commercial activities related to the ‘NOVYA’ mark.
The court observed that the Defendants’ representation in court had been intermittent and inconsistent, indicating a disregard for legal obligations. The court found the Defendants’ argument of differentiation between the marks ‘NOVA’ and ‘NOVYA’ to be flawed, noting substantial similarities in appearance and phonetics. The court concluded that the Defendants’ use of the ‘NOVYA’ mark and packaging constituted infringement and passing off, aiming to benefit from the Plaintiff’s goodwill.
The Court remarked that “The argument posited by the Defendants, asserting a distinction between ‘NOVA’ and ‘NOVYA’, does not hold up under judicial scrutiny. Their defence, predicated on the claim of dissimilarity between the marks, is fundamentally flawed. Visually and structurally, the two trademarks exhibit a level of similarity that far surpasses incidental resemblance, reflecting a near-identical composition in both appearance and phonetic sound. Such striking parallels not only starkly counter the Defendants’ claims of differentiation, but also compellingly point towards a clear case of infringement. This congruence, in both visual form and phonetics, unequivocally undermines the Defendants’ defence and proves infringement claim.”
The Court concluded that the infringement was made blatantly clear by the Defendants’ choice to use ‘NOVYA’ for identical goods, specifically milk products like Ghee, directly competing within the same class (29) for which the Plaintiff holds a registration. This direct overlap in product categories underlines the lack of merit in the Defendants’ assertion of distinctiveness between the marks. Moreover, the imitation extends to the packaging used by the Defendants, which not only mirrors the Plaintiff’s trade dress but also signifies an intentional strategy to mislead consumers and leverage the Plaintiff’s established market presence. Such actions unequivocally point to the Defendants’ motive to imitate and benefit from the recognition and trust the Plaintiff has cultivated over years of continuous use of their mark NOVA. Consequently, the Defendants’ claim of trademark distinctiveness falls flat, revealing a calculated effort to infringe upon and exploit the Plaintiff’s trademark rights.
The court decreed the suit in favor of the Plaintiff, granting a permanent injunction against the Defendants and awarding litigation costs. Additionally, Defendant No. 3 was held guilty of contempt for misleading the court and was ordered to pay a penalty to the Plaintiff.
[Sterling Agro Industries Limited v. ASR Trading Company, 2024 SCC OnLine Del 1145, decided on 07-02-2024]
Advocates who appeared in this case :
Mr. Manish Biala, Advocate for plaintiff
