Delhi High Court - Orders
Gnv Commodities Pvt Ltd vs Tykekart Technologies Pvt Ltd on 22 September, 2023
Author: Yashwant Varma
Bench: Yashwant Varma, Dharmesh Sharma
$~27
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ FAO (COMM) 192/2023
GNV COMMODITIES PVT LTD ..... Appellant
Through: Mr. Harish Kumar, Ms. Shreya
G., Mr. Shivam Kumar and Mr.
Sakshat, Advs.
versus
TYKEKART TECHNOLOGIES PVT LTD ..... Respondent
Through: Mr. Akshat Sharma, Adv.
CORAM:
HON'BLE MR. JUSTICE YASHWANT VARMA
HON'BLE MR. JUSTICE DHARMESH SHARMA
ORDER
% 22.09.2023 CM APPL. 49585/2023 (Ex.) Allowed, subject to all just exceptions.
The application shall stand disposed of.
FAO (COMM) 192/2023 & CM APPL. 49584/2023 (Interim Relief)
1. The appellant who was the original plaintiff impugns the order dated 29 August 2023 passed by the District Judge (Commercial Court-01), South-East District, Saket Court, New Delhi pursuant to which the Trial Judge has proceeded to reject the application made under Order XXXIX Rule 1 & 2 of the Code of Civil Procedure, 19081.
2. The appellant / plaintiff is stated to be the registered proprietor of the device mark "DOGKart.in" under Classes 3, 28 and 35 of the Trade Marks Act, 19992. The details of the registration of the device 1 Code 2 Act FAO (COMM) 192/2023 Page 1 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 27/09/2023 at 21:16:13 mark stands duly encapsulated in paragraph 2 of the impugned order and is reproduced hereinbelow:-
"2. It is stated that the plaintiff is running an online platform under a distinctive trademark DOGkart.in and plaintiff has also secured registration for the Device DOGKart.in and the plaintiff is the sole registered proprietor of the said trademark in relation to the said business. It is further stated that the plaintiff has applied for registration of the device DOGKart.in under Classes 3, 28 and 35 vide application no.5095468, 5095469 and 5095471 respectively. As per the applicant/plaintiff, the legal status of all the trademark applications are as under:-
"
3. The plaintiff / appellant had brought the suit for infringement and passing off under Sections 134 and 135 of the Act based on the allegation that the defendant / respondent had adopted the trademark "DOGZKART" as well as a deceptively similar domain name and thus liable to be injuncted. The plaintiff / appellant relied upon a comparative chart of the marks as well as the domain names and which too has been noticed in the impugned order and more particularly paragraph 3 thereof and the said table is reproduced hereinbelow:-
FAO (COMM) 192/2023 Page 2 of 8This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 27/09/2023 at 21:16:13
4. Undisputedly, although the defendant / respondent is stated to have applied for registration of the trademark "DOGZKART", the same is yet to be granted. We note that the Trial Judge has apart from a comparative examination of the logos of the plaintiff / appellant and the defendant / respondent come to conclude that the words forming part of the marks are dissimilar and are not likely to confuse.
5. Insofar as the findings with respect to the similarities in the logo are concerned, the Trial Judge has observed as follows:-
"10......Thus, perusal of the above logos, it is apparently clear that both are neither identical nor similar. Moreover, in addition, under the logo of the defendant‟s Dogzkart, it is also written as „Making the paws tech smart‟. Otherwise also, the color combination of both the marks / logos are also different. Even from the naked eyes, an ordinary person can easily opine that both the logos / marks are distinctive to each other and there is no similarity between both the logos and hence there is no chance of any confusion."
6. The Trial Judge also appears to have been influenced in refusing injunction on the ground of the plaintiffs‟ / appellants‟ having contacted the defendant / respondent and made a request to list and sell their products on their web portal. Insofar as the domain names are concerned, the Trial Judge has observed as follows:-
"11.....The plaintiff is using the domain name www.dogkart.in and the defendant is using the domain name www.dogzkart.com. Even from perusal of the domain name shows that both the domain names are also distinguishable. Moreover, in the above facts and circumstances, the plaintiff cannot claim exclusive rights to use the domain name i.e. Dogkart. Otherwise also, the domain names are neither similar nor identical and they are distinguishable."FAO (COMM) 192/2023 Page 3 of 8
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 27/09/2023 at 21:16:14
7. On an overall consideration of the aforesaid aspects, the Trial Judge has proceeded to reject the application for grant of any injunctive reliefs. We note that the aspect of "deceptively similar marks" is an issue which is no longer res integra. In Pianotist Co. Application3, a decision which has been repeatedly cited by Courts, the test was formulated to be of the requirement of putting the two words together and they being judged both by look as well as by sound. It is these principles which have led to Courts formulating the visual and phonetic similarity tests in the case of infringement actions.
8. The decision in Pianotist was noticed and approved by the Supreme Court in Amritdhara Pharmacy vs. Satya Deo Gupta4, where it was pertinently observed as follows:-
"6. It will be noticed that the words used in the sections and relevant for our purpose are "likely to deceive or cause confusion".
The Act does not lay down any criteria for determining what is likely to deceive or cause confusion. Therefore, every case must depend on its own particular facts, and the value of authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion. On an application to register, the Registrar or an opponent may object that the trade mark is not registrable by reason of clause (a) of Section 8, or sub-section (I) of Section 10, as in this case. In such a case the onus is on the applicant to satisfy the Registrar that the trade mark applied for is not likely to deceive or cause confusion. In cases in which the tribunal considers that there is doubt as to whether deception is likely, the application should be refused. A trade mark is likely to deceive or cause confusion by its resemblance to another already on the Register if it is likely to do so in the course of its legitimate use in a market where the two marks are assumed to be in use by traders in that market. In considering the matter, all the circumstances of the case must be considered. As was observed by Parker, J., in Pianotist Co Application [(1906) 23 RPC 774] which was also a case of the comparison of two words.
"You must take the two words. You must judge them, both by their look and by their sound. You consider the goods to which they are to be applied. You must consider the nature 3 (1906) 23 RPC 774 4 1962 SCC OnLine SC 13 FAO (COMM) 192/2023 Page 4 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 27/09/2023 at 21:16:14 and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks." (p. 777) For deceptive resemblance two important questions are : (1) who are the persons whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that it differs from the mark on goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection. (See Kerly on Trade Marks, 8th Edition, p. 400.)"
9. As would be manifest from the aforesaid observations, the Supreme Court had identified the questions which are liable to be posited while considering whether a case of infringement had been made out. Those tests were explained to involve courts considering the audience which is likely to be "deceived" or "confused", the rules of comparison which are liable to be adopted and the impression which a person of average intelligence and imperfect recollection may gather.
10. The aforesaid aspects were again highlighted by the Supreme Court in F. Hoffmann-La Roche & Co. Ltd. vs. Geoffrey Manner & Co. (P) Ltd.5 in the following words:-
"7. In Parker-Knoll Ltd. v. Knoll International Ltd. [1962 RPC 265 at 274] Lord Derning explained the words "to deceive" and the phrase "to cause confusion" as follows:
"Secondly, „to deceive‟ is one thing. To „cause confusion‟ is another. The difference is this: When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and 5 (1969) 2 SCC 716 FAO (COMM) 192/2023 Page 5 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 27/09/2023 at 21:16:14 nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so."
The test for comparison of the two word marks were formulated by Lord Parker in Pianotist Co. Ltd.'s application [23 RPC 774 at 777] as follows:
"You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion, that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or rather you must refuse the registration in that case."
It is necessary to apply both the visual and phonetic tests. In Aristoc Ltd. v. Rysta Ltd. [62 RPC 65 at 72] the House of Lords was considering the resemblance between the two words "Aristoc" and "Rysta". The view taken was that considering the way the words were pronounced in English, the one was likely to be mistaken for the other. Viscount Maugham cited the following passage of Lord Justice Lukmoore in the court of appeal, which passage, he said, he completely accepted as the correct exposition of the law:
"The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of Section 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy FAO (COMM) 192/2023 Page 6 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 27/09/2023 at 21:16:14 under the trade description, but also of the shop assistant ministering to that person's wants."
It is also important that the marks must be compared as wholes. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient, similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. Thus in Lavroma case [Tokalon Ltd. v. Davidson & Co., 32 RPC at 133 at 136] Lord Johnston said:
"... we are not bound to scan the words as we would in a question of comparatio literarum. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop."
11. We find from a reading of the impugned order that the Trial Judge appears to have erred in failing to allude to either the phonetic or the visual similarity test. It also appears to have failed to bear in consideration that the average consumer may not scrupulously scrutinise the two competing marks. The test would have to be the immediate impression that may be gathered by the average consumer and whether that would give rise to a likelihood of confusion.
12. As was explained by the Supreme Court in the two decisions noticed hereinabove, the true test depends on the first impression and a requirement of the marks being compared as "wholes". These principles clearly appear to have been overlooked by the Trial Judge while passing the impugned order. We, accordingly, find ourselves unable, for reasons aforenoted, to sustain the same.
13. The appeal shall consequently stand allowed. The impugned order dated 29 August 2023 is hereby set aside. The application under Order XXXIX Rule 1 and 2 of the Code shall consequently stand revived on the board of the Trial Judge. The same may be decided afresh and in accordance with law.
FAO (COMM) 192/2023 Page 7 of 8This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 27/09/2023 at 21:16:14
14. Though needless to state, we, as a matter of abundant caution, observe that the aforesaid application shall be considered by the Trial Judge without being influenced by the observations made hereinabove except to the extent where we have briefly alluded to the legal position which prevails. All rights and contentions of respective parties are kept open for the consideration.
YASHWANT VARMA, J.
DHARMESH SHARMA, J.
SEPTEMBER 22, 2023/neha FAO (COMM) 192/2023 Page 8 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 27/09/2023 at 21:16:14