Delhi High Court
Astral Limited & Anr. vs Astralglee Through Its Proprietor Ms ... on 22 August, 2022
Author: Navin Chawla
Bench: Navin Chawla
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 25.07.2022
Date of decision: 22.08.2022
+ CS(COMM) 440/2020 & 6012/2021
ASTRAL POLY TECHNIK LIMITED & ANR.
..... Plaintiffs
Through: Mr.Sachin Gupta & Ms.Swati
Meena, Advs.
versus
ASTRALGLEE THROUGH ITS PROPRIETOR MS POOJA
SURENDRA AYRE & ORS.
..... Defendants
Through: Mr. Chitvan Singhal, Adv. for
D-1 to D-3.
Ms.Saumya Jain, Adv. for
Mr.Bharat Malhotra, Adv. for D-4.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
I.A. 9225/2020
1. This is an application filed by the plaintiffs under Order XXXIX
Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908
(in short, 'CPC') praying for an order of temporary injunction restraining
the defendants from manufacturing, selling, offering for sale, exporting,
advertising, directly or indirectly dealing in any business, including in
essential oils, aroma oils, essential oil roll-on, mist and floral water,
diffusers and hydrosols, under the impugned mark
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/'ASTRALGLEE' or any other trade mark as may be
deceptively similar to the plaintiff's trade mark 'ASTRAL'.
PLAINTIFFS' CASE
2. It is the case of the plaintiffs that the plaintiff no. 1 was
incorporated on 25.03.1996 and is engaged in diversified business
activities with its prime focus on manufacturing, distributing and selling
of high-quality pipes, parts and fittings for use in plumbing, sewage and
drainage, agriculture, surface drainage, industrial use, fire protection,
cable protection, urban infrastructure, insulation; adhesives and ancillary
products such as clams, hangers, pipe flanges and connectors; surface and
glass cleaners, sanitizers, stain removers and surface protectants.
3. The predecessor of the plaintiff no. 2 was incorporated on
16.09.2009 and is a subsidiary of the plaintiff no. 1 and is engaged in the
manufacturing of building material, construction chemicals, adhesives;
maintenance and preventive products including sealers, repellents, water
proofing compounds, tile grout, tile adhesive, admixtures, solvent
cement, epoxy resins and hardeners, acrylics, UV cure, PVA,
cyanoacrylates, silicon sealants, anaerobic, tapes, glass/surface cleaners,
protectant, sanitizers and removers.
4. The plaintiffs assert that the plaintiff no. 1 adopted the mark
'ASTRAL' on 25.03.1996. The plaintiffs have obtained registrations of
the said mark in word form as also as label/device marks, the details
whereof have been given by the plaintiffs in paragraph 21 of the plaint.
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5. As far as the registration under Class 3 is concerned, which would
be the relevant class of goods for the purpose of the present application,
the plaintiff no. 1 has obtained the following registration:-
Trade Mark Registration No. & Class 3/Goods
dated
ASTAL 2920034 Bleaching
dt.11.03.2015 preparations and
(word per se) other substances
for laundry use;
cleaning, polishing,
scouring and
abrasive
preparations;
soaps; perfumery,
essential oils,
cosmetics, hair
lotions; dentifrices
2954497 dt Same as above
30.04.2015
(Emphasis supplied)
6. The plaintiffs assert that the plaintiff no. 1 has spent Rs. 70.80
Crore (Rupees Seventy Crore Eighty Lakh only as) as the advertisement
expenditure in the year 2019-20 and had sales of Rs. 2042.80 Crore
(Rupees Two Thousand Forty-Two Crore Eighty Lakh only) in the same
period.
7. The plaintiffs also give details of their domain name registrations
in paragraph 27 of the plaint.
8. The plaintiffs, in the plaint, contend that they have built a strong
brand equity over a period of time by technological innovations,
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consistent high-quality products and aggressive marketing. The plaintiff
no. 2 has a research and development division, which is recognised by
the Department of Scientific and Industrial Research, Ministry of Science
and Technology, the Government of India.
9. The plaintiffs are aggrieved by the adoption of the impugned mark
/'ASTRALGLEE' by the defendant no. 1. The plaintiffs
assert that they gained knowledge of the presence of the defendant no. 1
in the first week of June 2019 when they came across an application filed
by the defendant no. 2 seeking the registration of the mark
/'ASTRALGLEE' under application no. 4033388 dated 20.12.2018
under Class 35 for „retail, wholesale, import, export, trading, marketing
and advertising of essential oils, cosmetic products‟. The said application
was opposed by the plaintiff no. 1, whereafter the defendant no. 2 did not
file its counter-statement and therefore, the application was abandoned.
10. The plaintiffs further assert that the plaintiff no. 1 thereafter came
across yet another application of the defendant no. 1 for the impugned
mark /'ASTRALGLEE' under application no. 4176304
dated 14.05.2019 under Class 3, the same has also been opposed by the
plaintiff no. 1.
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11. Before instituting the suit, the plaintiff no. 1 sent a legal notice and
thereafter, on receiving a response, sent a rejoinder notice also to the
defendant no. 1. However, as the defendant no. 1 refused to discontinue
the use of the impugned mark, the present suit was filed.
DEFENDANTS' CASE
12. On the other hand, it is the case of the defendants that the
defendant no. 1 is the proprietorship concern of Ms. Pooja Surendra
Ayre, while the defendant nos. 2 and 3 are her family members involved
in the business of the proprietary firm. The defendants assert that in
January 2018, the defendants started the process of research and
development for their products to determine the types of essential oils
which would be natural, and designed plans to enter into the essential oils
business.
13. In May 2018, Ms. Ayre incorporated the defendant no. 1 as a
proprietorship concern. Since May 2018, the defendants have been using
the trade mark 'ASTRALGLEE'. In November 2018,
they engaged a third-party manufacturer for manufacturing their
products, and the first delivery of the goods was made in March 2019.
They state that the defendants have manufactured approximately forty
products and have sold more than two hundred products using the
impugned trade mark. The defendants have also obtained domain name
registration in www.astralglee.com, www.astralglee.in and
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www.astralglee.co.uk.; and have also applied for an Import-Export
Certificate Code on 26.11.2018.
14. The defendants primarily claim that the plaintiffs are engaged in
the business of manufacturing pipes, fittings, sewerage drainage pipe
fittings, agricultural pipe fittings, fire sprinklers, insulation tube, surface
draining system, hand sanitizers, industrial pipes and fittings and
ancillary products and the plaintiffs' products do not in any manner
conflict with those of the defendants' products.
15. It is further asserted that the plaintiffs are falsely claiming use of
the mark 'ASTRAL' for the goods covered under Class 3. The learned
counsel for the defendants submits that the invoices placed on record
along with the plaint are of the year 2016 and thereafter of the year 2020,
and show that there is no real intent of the plaintiffs to use the mark
'ASTRAL' or to come in the field of products under Class 3.
16. The learned counsel for the defendants further submits that the
adoption of the impugned mark by the defendants is bona fide inasmuch
as the same has been conceptualized by merging two words ASTRAL,
which means 'relating to stars or outer space', and GLEE, which means
'blissfulness'. The intention of the defendants, who coined the trade mark
'ASTRALGLEE', was to project that use of the oils
would give the user a blissful experience.
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17. The defendants further states that the plaintiffs cannot claim any
monopoly in the mark 'ASTRAL' as it is a common word in the English
Dictionary.
PRIOR ORDER ON THE APPLICATION
18. The present suit was first listed before this Court on 12.10.2020,
and after hearing the learned counsels for the parties, this Court observed
that there are sufficient legal and factual issues which require closer
examination. An ad-interim injunction at that stage, therefore, was not
granted to the plaintiffs.
PLAINTIFFS' SUBMISSIONS
19. The learned counsel for the plaintiffs submits that the plaintiffs are
not only the registered proprietors of the mark 'ASTRAL', but have also
been using the same continuously for the goods covered under Class 3.
He submits that the mark of the defendants fully incorporates the mark of
the plaintiffs and therefore amounts to infringement of the mark of the
plaintiffs. In support he places reliance on Indchemie Health Specialities
P. Ltd. v. Naxpar Labs P. Ltd. & Anr., 2001 SCC OnLine Bom 868 and
Intel Corporation v. Dinakaran Nair & Ors., 2006 SCC OnLine Del
459.
20. He submits that being a registered proprietor of the mark, the
plaintiffs can sue for infringement of the trade mark, which is its statutory
right, and the same is not effected even by non-user of the mark in
question. In support he places reliance on the decision of the Supreme
Court in Gujarat Bottling Co. Ltd. & Others. v. Coca Cola Co. &
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Others., (1995) 5 SCC 545, as also the decision of the High Court of
Bombay in Wockhardt Ltd. v. Eden Healthcare Pvt. Ltd., 2014 SCC
OnLine Bom 163.
21. He submits that the defendants were always aware of the rights of
the plaintiffs in the mark, however, in spite of the same, adopted the
impugned mark. The said adoption was therefore dishonest and in any
case, use of the same cannot enure to the benefits of the defendants. In
support, he places reliance on judgments of the High Court of Bombay in
Cadila Pharmaceuticals Ltd. v. Sami Khatib of Mumbai., 2011 SCC
OnLine Bom 484 and Bal Pharma Ltd. v. Centaur Laboratories Pvt.
Ltd., 2001 SCC OnLine Bom 1176.
22. In his answer to the submission of the defendants that word
'ASTRAL' is an ordinary word in the English Dictionary and is,
therefore, not capable of being monopolized, the learned counsel for the
plaintiffs, placing reliance on the judgments of this Court in Teleecare
Network India Pvt. v. Asus Technology Pvt. Ltd. & Others., 2019 SCC
OnLine Del. 8739 and Mrs.Ishi Khosla v. Anil Aggarwal & Anr., 2007
SCC OnLine Del 126, submits that as far as the use for the goods under
Class 3 is concerned, the said mark is arbitrary and therefore protectable.
He submits that in any case, the defendants having applied for
registration of their mark are estopped from contending that no monopoly
can be claimed in such a mark. In support, he places reliance on
Automatic Electric Limited v. R.K. Dhawan & Anr., 1999 SCC OnLine
Del 27.
DEFENDANTS' SUBMISSIONS
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23. On the other hand, the learned counsel for the defendants reiterates
that not only the adoption of the impugned mark by the defendants is
bona fide, but also that the plaintiffs cannot, by mere registration of the
mark, claim monopoly over the same for the goods for which it is not
used. He submits that it is the plaintiffs' own case that it uses the mark
'ASTRAL' for some of the goods mentioned under Class 3, however, not
for essential oils. He submits that the use in other goods was also only in
the year 2016 and thereafter discontinued. It is only in the year 2020, that
is post the use of the impugned mark by the defendants, that the plaintiffs
appear to have resumed the use of its mark 'ASTRAL' for some of the
goods covered under Class 3. Placing reliance on the judgment of the
Supreme Court in M/s. Nandhini Deluxe v. M/s. Karnataka Cooperative
Milk Producers Federation Limited, 2018 (9) SCC 183, he submits that
where the plaintiffs do not use the mark for any particular goods, they
cannot claim monopoly over the same merely by registration thereof.
24. He further submits that in any case, the two marks are distinct and
cannot be termed as deceptively-similar.
25. He submits that the plaintiffs, even for the use that they have
claimed, use the trade marks 'INVISIBLE SHIELD' and 'RESI
SHIELD' etc., for its goods. Therefore, there is no chance of any
confusion being caused by the use of the impugned mark by the
defendants.
ANALYSIS OF SUBMISSIONS AND FINDINGS OF COURT
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26. I have considered the submissions made by the learned counsels
for the parties.
27. At the outset, it is to be emphasized that the plaintiff no.1 is the
registered proprietor of the mark 'ASTRAL' under Class 3, which also
included 'essential oils'. Section 29(1) of the Trade Marks Act, 1999 (in
short, 'the Act') gives to a registered proprietor of the trade mark the
exclusive right to use the same in relation to the goods and services in
respect of which the trade mark is registered, and to obtain relief in
respect of infringement of the trade mark. Section 28(1), and sub-section
(1) and sub-section (2) of Section 29 of the Act reads as under:-
"28. Rights conferred by registration.-(1) Subject
to the other provisions of this Act, the registration
of a trade mark shall, if valid, give to the
registered proprietor of the trade mark the
exclusive right to the use of the trade mark in
relation to the goods or services in respect of
which the trade mark is registered and to obtain
relief in respect of infringement of the trade mark
in the manner provided by this Act.
xxxxxx
29. Infringement of registered trade marks.--(1)
A registered trade mark is infringed by a person
who, not being a registered proprietor or a person
using by way of permitted use, uses in the course
of trade, a mark which is identical with, or
deceptively similar to, the trade mark in relation
to goods or services in respect of which the trade
mark is registered and in such manner as to
render the use of the mark likely to be taken as
being used as a trade mark.
(2) A registered trade mark is infringed by a
person who, not being a registered proprietor or a
person using by way of permitted use, uses in the
course of trade, a mark which because of--
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(a) its identity with the registered
trade mark and the similarity of the
goods or services covered by such
registered trade mark; or
(b) its similarity to the registered
trade mark and the identity or
similarity of the goods or services
covered by such registered trade
mark; or
(c) its identity with the registered
trade mark and the identity of the
goods or services covered by such
registered trade mark,
is likely to cause confusion on the part of
the public, or which is likely to have an
association with the registered trade mark."
28. A reading of the above provisions would show that a registered
trade mark is infringed where a person uses an identical or deceptively-
similar mark in relation to goods or services in respect of which the trade
mark is registered, or where the similarity of such mark with the
registered trade mark and the identity or similarity of the good or services
covered by such registered mark is likely to cause confusion on the part
of the public or which is likely to have an association with the registered
trade mark.
29. This now brings me to the question whether the two marks are
deceptively-similar. It is noticed that the mark of the defendants
incorporates the complete mark of the plaintiffs. The test to determine
whether the two marks can be said to be deceptively-similar to each
other, is now too well-settled. In Corn Products Refining Co. v.
Shangrila Food Products Ltd., (1960) 1 SCR 68, and Parle Products (P)
Ltd. v. J.P. & Co. Mysore, AIR 1972 SC 1359, the Supreme Court held
that the question has to be approached from the point of view of a man of
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average intelligence and imperfect recollection. The test is of an unwary
purchaser of average intelligence and imperfect recollection who would
go by the overall structural and phonetic similarity. Reference may also
be had to the recent judgment of a Co-ordinate Bench of this Court in
Mondelez India Foods Pvt. Ltd. and Anr. v. Neeraj Food Products,
2022 SCC OnLine Del 2199.
30. In Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001)
5 SCC 73, the Supreme Court laid down the test for deciding the question
of marks being 'deceptively similar' as under:
"35. Broadly stated in an action for passing-off
on the basis of unregistered trade mark generally
for deciding the question of deceptive similarity
the following factors are to be considered:
a) The nature of the marks i.e. whether the
marks are word marks or label marks or
composite marks i.e. both words and label works.
b) The degree of resembleness between the
marks, phonetically similar and hence similar in
idea.
c) The nature of the goods in respect of
which they are used as trade marks.
d) The similarity in the nature, character
and performance of the goods of the rival traders.
e) The class of purchasers who are likely to
buy the goods bearing the marks they require, on
their education and intelligence and a degree of
care they are likely to exercise in purchasing
and/or using the goods.
f) The mode of purchasing the goods or
placing orders for the goods.
g) Any other surrounding circumstances
which may be relevant in the extent of
dissimilarity between the competing marks.
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36. Weightage to be given to each of the
aforesaid factors depends upon facts of each case
and the same weightage cannot be given to each
factor in every case."
31. In Sami Khatib (supra), the High Court of Bombay has reiterated
that the test while determining similarity is one of possibility and not
probability of confusion.
32. Applying the above test, prima facie it has to be held that the two
marks are deceptively similar and the use of the mark by the defendants
is likely to deceive the unwary consumer into forming an opinion of
association with that of the plaintiffs' mark. The plaintiffs, at least at this
stage, have to be held to be the prior adopter of the mark, including for
the goods under Class 3. Merely because it marketed the goods under
Class 3 under different brands, it cannot be said that it lost the right in its
trade mark 'ASTRAL' by such use. In fact, the brochures as also the
photographs of the products filed on record clearly show the mark
'ASTRAL' was also used by the plaintiffs for such goods to identify the
source of such goods. The judgment in M/s Nandhini Deluxe (supra),
therefore, cannot come to the defence of the defendants.
33. Though non-user of the registered trade mark may be a ground for
cancellation of such registration, in the present case, till date, the
defendants have not filed any application under Section 124 of the Act,
seeking permission of this Court to enable the defendants to apply for
cancellation of the registration of the plaintiffs' trade mark. Section 31 of
the Act grants prima facie evidence of the validity of such registration.
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34. In Gujarat Bottling Co. Ltd. (supra), the Supreme Court observed
as under:-
"11....In respect of a trade mark registered under
the provisions of the Act certain statutory rights
have been conferred on the registered proprietor
which enable him to sue for the infringement of
the trade mark irrespective of whether or not mark
is used."
35. Similarly, in Wockhardt Ltd. (supra), the High Court of Bombay
has held as under:-
"22. The statutory rights in the mark are
conferred on the registered proprietor once the
mark is registered by virtue of the provisions of
the Act. Once the mark is registered, the
proprietor of the registered mark gets an exclusive
right to use the same in respect of the goods or
services for which it is registered, subject to the
provisions of the Act. By virtue of the provisions of
Sections 28 and 29 of the Act, the registered
proprietor gets a right to sue any rival trader if,
inter alia, there is any use of identical or similar
mark in respect of identical or similar goods and
services for which the mark is registered. There is
no requirement under the Act to use the mark
prior to enforcing the rights under the Act to
prevent the use of the rival mark. What is required
to sue for infringement under the Act is the
registration of the mark. Once the mark is
registered under the Act, then a suit for
infringement will certainly lie under the Act
without requiring the registered proprietor to
show the actual commercial use of the mark. The
principle of deemed public user of the mark by
virtue of prior registration will also apply in the
present scenario and the Suit for infringement of
trade mark will be maintainable."
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36. In any case, scope of expansion of business for the plaintiffs by
using its house mark 'ASTRAL' cannot be curtailed, especially where it
is the registered proprietor of the trade mark with respect to those goods.
37. On the question of balance of convenience, it is to be noticed that
the plaintiffs have objected to the applications seeking registration of the
trade mark filed by the defendants. The first of such application was
abandoned by the defendants. The second application has also been
opposed by the plaintiffs. Both the applications were filed on a 'proposed
to be used' basis. The defendants have, therefore, entered the market with
full knowledge, not only of the plaintiffs, but also of the fact that the
plaintiffs assert their right over the said mark and claim that the mark of
the defendants is deceptively-similar to its mark.
38. The justification given by the defendants for adoption of the mark
is, in fact, not relevant to the case of infringement or passing off. As held
by the Supreme Court in Amritdhara Pharmacy v. Satya Deo Gupta,
AIR 1963 SC 449, an unwary purchaser of average intelligence and
imperfect recollection would not split the name into its component parts
and consider the etymological meaning thereof or even consider the
meaning of the composite words. He would go more by the overall
structural and phonetic similarity.
39. Even assuming that the adoption of the mark by the defendants
was honest, its user with knowledge of the rights of the plaintiffs, cannot
enure to the benefit of the defendants. Such use was clearly at its own
peril. Reference in this regard is made to the judgment of the High Court
of Bombay in Bal Pharma Ltd. (supra).
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40. In Sami Khatib (supra), the High Court of Bombay has reiterated
that even if the defendant adopts the deceptively-similar mark honestly
and independently, it would make no difference to the grant of an
injunction for infringement or passing off, once it is held that the mark is
deceptively-similar to the plaintiff's mark. The balance of convenience is,
therefore, in favour of the plaintiff and against the defendants.
41. On the question of the plaintiffs suffering irreparable harm by such
usage of the mark by the defendants, the plaintiffs have been able to
demonstrate their intent to expand their field of activity to goods covered
under Class 3. The adoption of deceptively-similar marks by the
defendants would, therefore, lead to dilution of the mark of the plaintiffs
thereby resulting in an irreparable injury to them.
42. On the assertion of the defendants that the word 'ASTRAL' being
a common dictionary word, is not entitled to protection, is also liable to
be rejected. The said word has no meaning or reference to the goods in
question. In any case, the registration having been granted in favour of
the plaintiffs and the same not been challenged till date, the plaintiffs are
entitled to seek protection of their rights in the marks.
43. In view of the above, I find that the plaintiffs have been able to
make out a good prima facie case in their favour. The balance of
convenience is also in favour of the plaintiffs and against the defendants.
The plaintiffs are likely to suffer grave irreparable injury in case an
interim injunction is not granted in their favour.
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44. Accordingly, the defendants, their proprietors, family members,
relatives, assignees in business, distributors, dealers, stockists, servants
and agents are restrained, during the pendency of the present suit, from
manufacturing, selling, offering for sale, exporting, advertising, directly
or indirectly dealing in any business including essential oils, aroma oils,
essential oil roll on, mist and floral water, diffusers and hydrosols under
the impugned mark /'ASTRALGLEE' or any other trade
mark as may be deceptively similar to the plaintiffs' trade mark
'ASTRAL'.
45. The defendants are further directed to immediately remove all of
the listings on various online websites, e-commerce platforms, online
business directories and social media handles bearing the impugned
mark 'ASTRALGLEE' and suspend use of e-mail
IDs/domain names bearing the impugned mark; and
46. The application is allowed in the above terms.
47. It is clarified that the above observations are merely prima facie in
nature and shall not bind or influence the court at the final adjudication of
the Suit.
NAVIN CHAWLA, J.
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