Bombay High Court
Arochem Ratlam Pvt Ltd vs Arom Alchemists Private Limited on 12 August, 2025
2025:BHC-OS:13265
IAL-32451-2024.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
TALLE ORDINARY ORIGINAL CIVIL JURISDICTION
SHUBHAM IN ITS COMMERCIAL DIVISION
ASHOKRAO
Digitally signed by
TALLE SHUBHAM
ASHOKRAO INTERIM APPLICATION (LODGING) NO. 32451 OF 2024
Date: 2025.08.12
20:28:46 +0530 IN
COMMERCIAL IP SUIT (LODGING) NO. 32272 OF 2024
Arochem Ratlam Pvt. Ltd., & Anr. ... Applicants/ Plaintiffs.
Versus
Arom Alchemists Private Limited & Ors. ... Defendants
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Sr. Advocate Mr. Virag Tulzapurkar a/w Mr. Amit Jamsandekar, Mr.
Vighnesh Kamat, Mr. Vaibhav Shukla, Adv Archita Gharad, Adv. Shreem
Pathak i/by Zain A. K. Najam-es-Sani for Plaintiffs.
Mr. Ashutosh Kane a/w Ms. Prakhar Karpe, Ms. Aastha Pathak, i/by W. S.
Kane and Co. for Defendants.
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Coram : Sharmila U. Deshmukh, J.
Reserved on: June 27, 2025.
Pronounced on : August 12, 2025.
ORDER:
1. This is an action for infringement of trade mark and passing off. The Plaintiffs and the Defendants are engaged in the business of manufacturing/ marketing/ selling/ distribution of perfumery products more particularly perfumes and fragrances.
2. It is submitted that the Plaintiff No. 1 was originally constituted as a partnership firm known as Arochem Industries in the year 1969 and was manufacturing and marketing its products under Shubham 1 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc the mark "AROCHEM". The Plaintiff No. 1's predecessor i.e. partnership firm applied for and registered its mark "AROCHEM" in Class 3 with user claim since 1st September, 1969, which mark came to be assigned to Plaintiff No. 1 vide Deed of Assignment dated 1 st April, 2013 and was brought on record as subsequent proprietor of the mark "AROCHEM".
3. Subsequently, the Plaintiff made applications for registration of trade marks in which the mark "AROCHEM" constituted the leading, prominent and essential features. The registration of the mark "AROCHEM" and its extension and abbreviated form is set out in in paragraph 7 and are about 93 in number. The first registration of the mark "AROCHEM" dates back to the year 1996.
4. It is submitted that the Plaintiff No 1 began marketing and selling its product under the trade mark "AROME" in March, 2021 while retaining the essential and prominent feature of the mark "AROCHEM" and retaining its corporate name. The Plaintiff No 1 applied and registered the trade mark "AROME" and the label containing/consisting of the word "AROME" as its essential feature and various other trademark retaining "AROME" as its essential feature in Class 3 as under:-
Sr. Mark Registration Date of Application Class No. No. 1. AROME 4894723 08/03/2021 3 2. AROME BLUE 4896333 09/03/2021 3 Shubham 2 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc ISLAND 3. AROME WORLD 5902957 21/04/2023 3 4. AROME SCENT ART 5962397 02/06/2023 3 5. AROME THE LEGEND 5992110 22/06/2023 3
5. In order to demonstrate the goodwill and reputation of the Plaintiffs under the trademarks "AROCHEM" and "AROME", the statement of Plaintiff No 1 demonstrating the sales figure and advertisement expenses duly certified by Chartered Accountant is annexed to the plaint.
6. In so far as the Defendants are concerned, it is pleaded that the Defendants filed trade mark applications No. 5933224 and 5933225 on 12th May, 2023 in respect of its mark "AROM" on a proposed to be used basis and in the examination report the Application was objected under Section 11 of the Trade Marks Act, 1999 ("T. M. Act") by citing the Plaintiff's mark as the conflicting mark. The Plaintiffs issued cease and desist notice dated 18 th December, 2023 to the Defendants against use of the mark "AROM", which was responded by stating that the Defendant's mark does not infringe the Plaintiff's mark and that the Defendants have filed rectification application against the Plaintiff No 1's mark "AROME" on 23 rd December, 2023. The Defendants are advertising in the same trade magazines and participating in the same exhibitions in which the Shubham 3 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc Plaintiffs also advertise and participate in order to mis-represent and mislead the consumers that the Defendants are associated with the Plaintiffs. The Plaintiff's various customers, retailers etc made purchases from Defendants believing that they were purchasing from Plaintiff No 1. The Defendants are inducing and inciting the Plaintiff's employees to breach their contractual obligation including that of employment and obligation of confidence and trust with ulterior motives and malafide intentions by portraying that the Defendants are connected to the Plaintiffs.
7. The case of the Plaintiffs is that the Defendant No. 2 who is Director of Defendant No. 1 is an ex-employee of the Plaintiff No. 2 between November-2017 and May-2018 and was therefore fully aware of the Plaintiff's product, trade mark, clientele etc.
8. The defence is that the Defendant No 1 Company "AROM ALCHEMISTS Pvt Ltd" was incorporated on 3 rd January, 2023 and it was decided to use the word "AROM" which is a mere misspelling of and inspired from the generic and descriptive word "AROMA" and that ALCHEMIST means a person who studies Alchemy meaning magic power that can change things and thus the adoption of the mark by the Defendants is honest and bonafide.
9. The Defendant No. 2 had left the employment of the Plaintiff in the year 2018 and the trade mark "AROM" was adopted in Shubham 4 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc the year 2021. The Defendants have conceived and adopted the trade mark and the trade name "AROM ALCHEMISTS" and has been using the same since 3rd January, 2023. The Plaintiffs are attempting to camouflage their trade mark AROME with AROCHEM and documents annexed to the Plaint pertains to AROCHEM. The Plaintiffs have failed to show use of their alleged mark AROME which is generic.
10. The Plaintiffs have failed to show prior continuous user and invoices produced are for the year 2011 and 2012 and from 2020 onwards. The Plaintiffs have used the trade mark AROCHEM as their trading name and not in sense of trade mark. The Plaintiffs cannot claim monopoly over the word "AROME" which is mere mis spelling of the word "AROMA". The same is dictionary word and is descriptive of the goods and no monopoly can be claimed over such generic descriptive word. There is no goodwill and reputation shown on the relevant date in respect of "AROME" to sustain an action for passing off. The Defendant has never used or intend to use "AROM" on stand alone basis or separately from the trade mark "AROM ALCHEMISTS" as a whole which is the pleadings in the plaint. The Plaintiff's cease and desist notice as well as the suit does not mention "AROCHEM" whereas the prayers mentions "AROCHEM".
11. In the Additional Affidavit in reply, the Defendants have dealt with the documents annexed to the plaint and there is Affidavit Shubham 5 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc in rejoinder filed by the Plaintiffs denying the contents of the Affidavit in reply and Additional Affidavit in reply.
SUBMISSIONS
12. Mr. Tulzapurkar, learned Senior Advocate appearing for the Plaintiff would point out the registrations procured by the Plaintiffs in respect of the trade mark "AROCHEM" and its extensions and its abbreviated form and of "AROME" since 8th March, 2021. He submits that in so far the Defendant's mark AROM ALCHEMISTS is concerned , the suffix of ALCHEMISTS does not give distinctiveness. He submits that under Section 29(9) of Trade Marks Act, 1999 infringement is caused even by spoken use of the words.
13. He would point out to the sales figure which is combined sales figure to demonstrate the goodwill and reputation, which for the Year 2022-23 is Rs. 872,30,499/- and sales promotional and advertisement expenses are about Rs. 16,11,644/- and Rs. 3,09,226/- respectively. He submits that there is identity of marks and identity of goods and under Section 29(3) of Trade Marks Act, 1999, there is presumption of likelihood of causing confusion on part of the public. He submits that the essential feature of the trade mark is "AROME" and the Defendant has adopted the mark "AROM" by removing the last alphabet 'E' and there is phonetic similarity between the rival marks. He submits that the manner in which the Defendants uses the mark is Shubham 6 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc to highlight word "AROM" whereas the words "ALCHEMISTS" is in smaller font.
14. He would submit that the Defendant's company was incorporated on 3rd January, 2023 and the affidavit says that the mark "AROM ALCHEMISTS" is used since 3rd January, 2023 whereas in response to the cease and desist notice it is stated that the mark is used since 1st June, 2023. He submits that the defence to cease and desist notice that the rectification application is filed is no defence. He submits that there is dishonest adoption of the mark as the Defendant No. 2 is ex-employee of the Plaintiff No. 2 and knows about the existence of the Plaintiff and the business. He submits that it is the duty of the Defendants to take search of Trade Mark Registry before adopting the mark and having not taken search, the same is at the Defendants own peril. He would further point out the trade magazine which shows the mark of the Plaintiffs and the Defendants being featured side by side and would submit that there is likelihood of confusion. He submits that the Defendants have approached its employees by giving impression that it is part of the Plaintiff's group. He submits that in view of the inducement offered by the Defendants to the Plaintiff's employee by order of 25 th November, 2024 this Court had granted ex parte relief in terms of prayer clause (c) restraining the Defendant's from inducing the Plaintiff's employees.
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IAL-32451-2024.doc
15. He submits that there is no honest adoption of the mark as the Plaintiff's mark was already cited in the examination report as conflicting mark. He submits that the defence is that "AROM" is mis spelling of the word "AROME" which is generic word cannot be accepted as Defendant claims registration of its mark which means that the mark is distinctive. He submits that the Plaintiffs have coined the mark "AROME" which is not a common English word. He submits that the Defendants does not use the mark "AROM" in descriptive sense but in trade mark sense. He submits that the first user rule will apply and as the Plaintiffs are registered proprietor as well as prior user of the trade mark "AROME", the Defendant by use of deceptively similar mark infringes upon the right of the Plaintiff. Mr. Tulzapurkar would further submit that the Defendant is also using the Plaintiff's mark as part of its domain name 'www.aromapl.com' which does not use the entire trade name of "AROM ALCHEMIST". In support he relies upon following decisions:
1. Ruston & Hornsby Ltd vs. The Zamindara Engineering Co 1
2. James Chadwick & Bros., Ltd Vs. The National Sewing Thread Co., Ltd.,2 1 1969 (2) SCC 727 2 OCJ App No. 95 of 1950. Shubham 8 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc
3. Sky Enterprise Private Ltd vs. Abaad Masala & Co.,3
4. Neon Laboratories Limited vs. Medical Technologies Limited 4
5. Ultra Tech Cement Limited vs. Alaknanda Cement Pvt Ltd 5
6. Jagdish Gopal Kamath vs. Lime & Chilli Hospitality services6
7. Lupin Limited vs. Eris Lifesciences Pvt. Ltd7
16. Per contra, Mr. Kane, learned Counsel appearing for the Defendants submits that the suit is misconceived by drawing attention of this Court to prayer clause (a) and (b) of the plaint. He submits that the Plaintiffs seeks injunction against the Defendants from using mark "AROM" or corporate name "AROM" or website/domain 'www.aromapl.com' and/or mark "AROCHEM" and/or "AROME" on the Defendant's product and the Plaintiffs have pleaded that the Defendant's mark is "AROM" whereas the defendant uses the "AROM ALCHEMISTS". He submits that the Defendant's mark "AROM ALCHEMISTS" was applied for registration on 12 th May, 2023 on proposed to be used basis which was an application for the device mark. He submits that there is no specific pleading that the Defendants mark is "AROM ALCHEMIST" and the prominent and essential feature is 3 2020 SCC Online BOM 750 4 (2016) 2 SCC 672 5 2011 SCC Online Bom 783 6 2015 SCC Online Bom 531 7 2015 SCC Online Bom 6807 Shubham 9 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc "AROM". He submits that the Defendants have no intention to use the mark "AROM" as stand alone mark. Pointing out to the invoices annexed to the affidavit-in-reply, he submits that the Defendants have raised invoice of sale on 5th August, 2023 under the mark "AROM ALCHEMIST". He submits that the Plaintiffs, in the opposition applications have understood the Defendant's mark as "AROM ALCHEMISTS" however in the plaint there is deliberate reference to the Defendant's mark as "AROM". He submits that in the cease and desist notice the Plaintiff refers to the Defendant's mark as "AROM" and therefore there is inconsistency in the stand adopted by the Plaintiffs.
17. He would further submit that it is not the case of the Plaintiffs in the cease and desist notice that the Defendant's mark is deceptively similar or identical to the Plaintiff's mark "AROCHEM" and despite thereof in the prayer clause injunction is sought also in respect of the mark "AROCHEM". He submits that during the arguments, there are no submissions canvassed as regards the mark "AROCHEM". He would further draw attention of this Court to paragraph 9 of the plaint which sets out registration of the Plaintiff's mark "AROME" and its extension and would submit that as far as the registration of marks at serial nos. 3, 4 and 5 are concerned, the applications for registration have been made on 21st April, 2023 and subsequent thereto and therefore the Defendants are prior users. He submits that as far as the Shubham 10 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc mark at item no. 2 i.e. "AROME BLUE ISLAND" is concerned the same is not stand alone mark and it is not the case of the Plaintiffs that "AROM ALCHEMIST" have copied the essential features of "AROME BLUE ISLAND". He submits that as far as the mark "AROME" is concerned the same is challenged by way of rectification.
18. He would further submit that the word "AROME" is mis spelling of the word "AROM" which is generic word and descriptive of the perfumes and the fragrances and being devoid of distinctiveness constitute an absolute ground for refusal of registration under Section 9 of the T. M. Act. He submits that the Defendants have applied for registration of the device mark "AROM ALCHEMISTS" and have not applied for the registration of the word mark "AROM" and that the trade name of the Defendants is "AROM ALCHEMISTS". He submits that the mark is not used by the Defendants as trade mark but as trade name. He submits that what is necessary to be considered is comparison of the mark as a whole and not part of the mark.
19. He would further submit that for the purpose of maintaining an action of passing off, the relevant date is the date on which the Defendants started using his mark which was on 5 th April, 2023 and the Plaintiffs have to prove goodwill as on 5 th April, 2023. He would submit that the invoices produced by the Plaintiffs are up to the year 2012 and for the year 2021 there are two to three invoices which Shubham 11 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc does not demonstrate goodwill and reputation. He submits that the sales figure given is combined sales figure. He submits that the mark "AROME" was adopted by the Plaintiffs in the year 2020-21 and CA certificate at page 149 makes reference at serial nos. 9 and 10 to the combined statements and the burden is upon the Plaintiffs to show stand alone sales figure. He submits that it is pleaded in paragraph 8 that the products came to be known by the Plaintiff No. 1's customers as "AROME" which cannot be accepted as the same is different from the abbreviations or the extension which were used by the Plaintiffs. He submits that for purpose of passing off, the prior, continuous use had to be shown which is not shown. He submits that the invoices annexed to the plaint are pertaining to the mark "AROCHEM" and the invoices from page 118 makes reference to various extensions of "AROME" but not the registered marks.
20. He would further submit that it is not the Plaintiff's case that the Plaintiffs were not aware of the existence of the Defendants and the Defendant No. 2 was an ex-employee in the year 2017-2018 when the word mark "AROME" was not in use. He would submit that the opposition to the various marks of the third parties annexed at page 158 of the plaint have not been adjudicated on merits. He would submit that the Defendant's company was incorporated in January- 2023 and the invoices are of April-2023. He submits that the Shubham 12 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc comparison shown in the trade magazines which though show products were displayed on consecutive pages however the same are at different pages in the trade magazine and have been placed side by side in the plaint. He submits that bare comparison of the marks would indicate that there is no similarity. He submits that the suit has been filed in the year 2024 and therefore there is acquiescence. He submits that reliance placed upon the whatsapp messages sent to his employee to demonstrate that the Defendants to show association with the Plaintiff cannot be believed as the employee would be knowing that the Defendants are not associated with the Plaintiffs.
21. He would further submit that ad-interim relief granted in terms of prayer clause (c) cannot be granted in suit for infringement of trade mark and only reliefs set out in Section 135 of the T. M. Act can be granted. He submits that even assuming that such a relief could be granted there is no case made out of any inducement or poaching and only job offer was given. He submits that even if the Interim Application is not dismissed prayer clause (c) cannot continue. In support he relies upon the following decisions:
1. Phonepe Private Limited vs. EZY Services8
2. Delhivery Private Limited vs. Tresure Vase Ventures Pvt. Ltd. 9 8 2021 SCC Online Del 2635 9 2020 SCC Online Del 2766 Shubham 13 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc
3. Paramjeet Singh Nande vs. Paramount Toys & Ors.(Order of this Court in OOJC Interim Application (L) No. 35055 of 2023 dated 10 th June, 2025.)
4. M/s Gufic Ltd vs. Clinique Laboratories, LLC ( Order of Delhi High Court in FAO (OS) 222/2009 dated 9th July, 2010).
5. Ayushakti Ayurved Pvt Ltd vs. Hindustan Lever Limited10
6. Marico Limited vs. Agro Tech Foods Limited 11
7. Honda Motor Company Limited vs. Kewal Brothers12
8. Sun Pharmaceuticals Industries Ltd vs. Emcure Pharmaceuticals Ltd. 13
9. G. M. Sheik vs. M/s. Raja Biri Private Ltd ( Order of Kerala High Court At Ernakulam in FAO No. 94 of 2022 dated 31st August, 2022)
22. In rejoinder, Mr. Tulzapurkar, would point out the pleadings in the plaint that the essential features of the Plaintiff's label is "AROME". He would submit that the invoices of the Defendant would show the prominence to the word "AROM". He would further submit that the definition of the mark under Section 2(1) (m) read with 2(1) (zb) (ii) of the T. M. Act includes a name. He submits that there is no relief which is claimed in respect of "AROCHEM" and the same was 10 2003 (5) Bom. C. R. 523 11 2010 SCC Online Del 3806 12 1999 SCC Online Cal 536 13 2012(2) Mh.L.J Shubham 14 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc brought in as the word "ALCHEMIST" subsumes the mark "AROCHEM". He submits that as far as prayer clause (c) is concerned, the provisions of CPC permit combining of causes of action.
REASONS AND ANALYSIS:
23. The Plaintiff's case is that the mark "AROCHEM" was adopted by its pre-decessor in the year 1969 in respect of perfumes and fragrance products which came to be registered as trade mark in the year 1996 and subsequently its variants and abbreviated forms were registered. The word "AROCHEM" is also part of the Plaintiff's trading name. In so far as "AROME" is concerned, the mark is stated to be used by the Plaintiffs in March, 2021 and the registration of the word mark "AROME" was applied on 8 th March, 2021. The Plaintiff's case is that the Defendant's mark "AROM" is deceptively similar to the Plaintiff's marks "AROCHEM" and "AROME" and is used in respect of identical goods. The prayer clause seeks injunction restraining the Defendants from using the mark "AROM" or the corporate name "AROM" or the domain name 'aromapl.com' and/or AROCHEM and /or AROME on the products or an identical or deceptively similar mark.
24. Though the pleadings in the plaint refer to the Defendant's mark as "AROM", in paragraph 30 of the plaint, the rival marks are reproduced and it is pleaded that the Defendants are using the mark "AROM" prominently in its corporate name with "ALCHEMISTS" in small Shubham 15 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc font. The pleadings give prominence to the word "AROM" which is part of the impugned mark in order to demonstrate the deceptive similarity between the Plaintiff's registered mark and the Defendant's mark, while setting out rightly the Defendant's trademark and corporate name.
25. The Plaintiffs claim infringement of its trade marks "AROCHEM" and "AROME" by the Defendants. The rival marks are reproduced hereinbelow for comparison:
PLAINTIFF NO. 1'S MARK: IMPUGNED MARKS AS USED ON INFRINGING GOODS:
AROCHEM /
26. The registration of the Plaintiff's mark "AROCHEM" is prima facie since the year 1969 with the earliest registration of the year 1996 and the mark "AROME" was applied for registration on 8 th March, 2021. The Defendant's use of the mark "AROM ALCHEMISTS" is admittedly of the year 2023 and the application was filed on 12 th May, 2023 with proposed to be used claim. Section 28 of the Trade Marks Act, 1999 confers on the proprietor of validly registered trade mark the exclusive right to use the trade mark in relation to goods and Shubham 16 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc services in respect of which it is registered and take action for infringement. Section 29 of the Trade Marks Act, 1999 governs the infringement of the registered trade mark and provides that there is infringement when the mark used by the Defendant is identical or deceptively similar to the Plaintiff's trade mark and is used in relation to goods and service in respect of which the trade mark is registered.
Where there is identity with the registered trade mark and identity of goods or services covered by such registered trade mark, there is presumption of confusion being caused amongst the public and likely association with Plaintiff's goods.
27. The test to be applied in order to determine the deceptive similarity/identity of the rival marks is to ascertain the essential features of the registered trade mark and to consider whether the Defendant has copied/adopted the essential feature of the Plaintiff's mark. In the examination report of the Defendant's application for registration of the word mark "AROM ALCHEMIST" and device mark "AROM ALCHEMIST", the Plaintiff's mark is cited as conflicting mark. The objection raised by the Trade Mark Registry under Section 11(1) accepts that prima facie the Defendant's mark "AROM ALCHEMISTS" is identical or similar to the Plaintiff's trade mark in respect of identical/similar goods and there exists a likelihood of confusion and likely association with the registered trade mark. Even accepting that Shubham 17 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc the extensions of the mark "AROME" were applied for registration by the Plaintiffs subsequent to April-2023, the Plaintiff's mark "AROME" was applied for registration on 8th March, 2021. It is this mark which will have to be considered against Defendants mark "AROM ALCHEMIST" in order to ascertain whether the essential feature have been copied. There cannot be any debate of the Plaintiffs being registered proprietor of the mark and entitled to sue for infringement of the mark. Though it is sought to be contended that the Defendants have applied for rectification of the Plaintiff's mark, the same is immaterial. For the purpose of challenging the validity of the registration this Court in the case of Lupin Limited vs. Eris Lifesciences Pvt. Ltd (supra) has left very small window for the Court to consider the invalidity only where the same is ex-facie illegal and fraudulent so as to shock the conscience of the Court. The Defendants have not argued on the invalidity of the registration and certainly not in manner which would fit the Defendant's case in the small window which is left open by the principles of Lupin Limited vs. Eris Lifesciences Pvt. Ltd (supra). The decision of Marico Lomited vs Agro Tech Foods Limited (supra) is of Delhi High Court and what would bind this Court is the Full Bench decision of Lupin Limited vs. Eris Lifesciences Pvt. Ltd (supra). The defence that the registered mark is mis spelling of the routine generic word AROMA which is devoid of distinctiveness cannot be accepted as Shubham 18 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc the mis spelling of generic word AROMA cannot be "AROME" which differs from AROMA. The mis-spelling of the generic word AROMA would likely be AAROMA or maybe AROMAH or such. A mis-spelling of word is not likely to be considered as invented word if phonetically it is similar to well known word. The Plaintiff's mark 'AROME' is not common dictionary word and is not even pronounced as aroma but has pronouncement different from the pronouncement of the common word Aroma.
28. There is phonetic similarity between the words AROME and AROM as both are likely to be similarly pronounced. It is unlikely that the consumer would refer to the Plaintiff's registered mark as Ae- ro-me and not Ae-rom. Section 29(9) of Trade Marks Act, 1999 provides that where the distinctive elements of the registered trade mark consists of or include words, the trade mark may be infringed by spoken use of those words. The contention that the Defendant's mark is "AROM ALCHEMIST" and not "AROM" does not assist the case of the Defendants as the manner in which the mark is used by the Defendants would indicate that the word "AROM" is prominently displayed in bold font whereas the word "ALCHEMISTS" is depicted in smaller font. The word "ALECHEMISTS" also does not form part of domain name of the Defendants which is "www.aromapl.com". The invoices which are annexed by the Defendants to their affidavit in reply prima facie shows Shubham 19 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc the distinct manner in use of the mark "AROM ALCHEMISTS" which till September, 2023 was used on the tax invoices in similar sized font and from October, 2023 the device mark of "AROM ALCHEMISTS" is used, where the word "AROM" has been given prominence.
29. The addition of the word "ALCHEMISTS" is immaterial for purpose of considering the case of infringement of the trade mark as the Plaintiff's mark "AROME" is subsumed in the Defendant's mark "AROM ALCHEMISTS" and there is deceptive similarity. Prima facie there is phonetic similarity and deceptive resemblance between the rival marks. [See Ruston & Hornsby Ltd vs. The Zamindara Engineering Co (supra)]. In the case of M/s Gufic Ltd & Another vs Clinique Laboratrories, LLC and Anr(supra), the rival marks were CLINIQUE and SKINCLINIQ. The Delhi High Court considered the whole mark Skincliniq to hold that there cannot be dissection of the mark into "skin" and "cliniq" and then to compare the parts. The proposition of law is well settled that what is required to be considered are the essential features and it is sufficient if the impugned mark bears an overall similarity to the registered mark. The application of the settled principles to facts of each case would differ depending on the marks produced for comparison. Pertinently, the Delhi High Court held that the word skincliniq is one word and not two separate words, which is not so in the present case. The same factual scenario existed in the Shubham 20 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc case of Ayushakti Ayruved vs Hindustan Lever (supra) where it was held that it is not possible to ignore both parts and there is no way that the the word Ayushakti can be pronounced without pronouncing shakti.
30. The test of infringement is matter of first impression and in so far as the Plaintiff's mark is concerned, the same is word mark "AROME" and apart from this word there are no other material and it is this word "AROME" which constitutes the single, prominent, essential memorable feature of the Plaintiff's mark. There is no question of dissecting the Defendant's mark as the Plaintiff's entire mark has been subsumed in the Defendant's mark. The Defendant having copied phonetically and deceptively similar mark "AROM" though by adding the words "ALCHEMIST" infringes the Plaintiff's registered trade mark. There is no quarrel with the principles laid down in Phonepe Private Limited vs EZY Services and Another (supra) and when the principles are applied to the present case, it is evident that the dominant part or the essential feature of the Plaintiff's registered trademark i.e. "AROME" has been copied by the Defendants.
31. The manner in which the mark has been used by the Defendants, prima facie makes it clear that the same is used in the sense of trade mark and not descriptive of the product. What is important in case of infringement is not the Defendant's intention in Shubham 21 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc using the particular words, whether as a trademark or as a description of goods, but how consumers are likely to see them i.e. likelihood of confusion that the particular use of the words may cause in the mind of the consumer. The prospective consumer would refer to the product as AROM perfumes or fragrances and would be confused given the prominence of the word "AROM" by the Defendants on its products.
32. The contention of honest and bonafide adoption of the mark by the Defendants is required to be taken with a pinch of salt. It is not open for an ex-employee to feign ignorance of the marks adopted by its erstwhile employer as the Defendants were aware of existence of the Plaintiffs. Accepting prima facie that the mark "AROME" was adopted subsequent to the Defendant's exit from the Company, it is incomprehensible that the Defendants were totally unaware of the adoption of the mark "AROME" by the Plaintiffs in the year 2021. Having commenced similar business in the year 2023 and being a late entrant, it was duty of the Defendants to conduct necessary search of the Trade Mark Registry to ascertain that there is no conflicting mark before adoption of its own trade mark. Even if the Defendant No. 1 was incorporated in the year 2023 and started its business in April-2023, by that time the Plaintiffs had already registered its mark and was using the same since 2021. It is therefore difficult to digest that the adoption of the deceptively similar mark as that of its erstwhile employer is a Shubham 22 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc honest adoption in respect of identical goods. It is also pertinent to note that the application for registration of the mark "AROM ALCHEMISTS" was as device mark and the word mark was objected by reason of Section 11 of the T. M. Act citing the Plaintiff's mark as conflicting mark which ought to have put the Defendant to caution. Despite thereof the Defendants having adopted the deceptively similar trade mark has done so at its own peril.
33. As regards the submission that the Defendants have no intention to use the mark "AROM" as stand alone mark, it makes no difference when it is prima facie found that there is deceptive similarity between the two marks and the addition of word "ALCHEMIST" is immaterial. The manner in which mark is used by the Defendants would indicate prominence given to the word "AROM" and the smaller font in which the word "ALCHEMISTS" has been used indicates an intent to highlight the registered mark "AROME". The deletion of single alphabet "E" from "AROME" is insignificant as the infringement has to be tested not only visually and also by sound. The use of the trade mark by the Defendants is in trademark sense and is not descriptive so as to avail of the defences under Section 30 and Section 35 of the Trade Marks Act, 1999. The fact that the Defendants have applied for registration of its mark indicates that the mark is not descriptive and is used in trade mark sense. The reliance on the advertisement of incense Shubham 23 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc media which indicates participation by two entities Aroma Atsiri and Affarom to prima facie hold that the registered trade mark is common to the trade. It is settled by the decision of Jagdish Gopal Kamath vs Lime & Chilli Hospitality Services (supra) that to succeed, the Defendant must establish that the marks on which it relies are many and that they are in extensive use and that they have, by reason of the wide usage passed into the realm of the generic to the extent that they can no longer be used to describe any particular user. It is not enough to merely show some use and the Defendant must show use by the trade that is extensive.
34. The matter has to be viewed from the perspective of an average consumer with imperfect recollection and when brought across the counter the consumer would ask for the product with the name AROM/(E) and would not refer to the entire mark as "AROM ALCHEMISTS". What immediately strikes the eye when the Defendant's trade mark is seen is the word "AROM" and not the entire mark "AROM ALCHEMISTS". The probable effect on an average consumer is to be considered and in view of the deceptive similarity prima facie an average consumer is likely to be confused as to the origin of the product. Once the impugned mark is found deceptively similar to the Plaintiff's registered trade mark, no equitable plea can be raised of honest adoption of the mark. The Plaintiff in the suit for infringement Shubham 24 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc is only required to show that the mark is registered. (See Lupin Limited vs Eris Lifesciences Pvt Ltd)
35. As regards the registered mark "AROCHEM" is concerned , there are no submissions canvassed by Mr. Tuljapurkar on the impugned mark being deceptively similar to "AROCHEM" and this Court has therefore not considered the same.
36. In the pleadings even if there is no specific reference to the essential features of the Plaintiff's registered mark "AROM", it is duty of the Court while ascertaining whether case for infringement is made out to ascertain the essential features of the registered mark and then compare the rival products to arrive at a finding as to whether the marks are identical or deceptively similar. In the plaint though the pleadings blur the distinction by referring to the Defendant's mark as "AROM" instead of "AROM ALCHEMISTS" the reference is obviously to the essential feature of the Plaintiff's mark which has been copied by the Defendants. The Defendants have properly understood the case of the Plaintiffs and have responded accordingly.
37. As regards the action of passing off is concerned, for the purpose of passing off it is essential for the Plaintiffs to demonstrate the goodwill and the reputation acquired in the trade mark "AROME" when the defendants adopted the trademark and to show that the Defendant's use of the mark is designed to mislead the public in Shubham 25 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc believing that the Defendant's goods are the Plaintiff's goods. The relevant date for the purpose of considering the aspect of passing off is the date of adoption of the mark by the Defendant. [See Honda Motor Company Ltd vs Kewal Brothers & Anr(supra)]. In the present case the Defendant's claim to have commenced the use of the mark in January-2023 and/or 5th April, 2023, if we consider the invoices which are placed on record. It was therefore necessary for the Plaintiffs to demonstrate the goodwill and the reputation as of the year 2023 in respect of its trade mark "AROME".
38. The Plaintiff had applied for the registration of the mark in the year 2021 and the sales figure and advertisement expenses which have been placed at page 149 of the Plaint is combined sales figure and the promotional expenses. There is no bifurcation of the sales figures and promotional expenses in respect of the Plaintiff's product marketed under the mark "AROME". It was necessary to show that the Plaintiffs have generated such goodwill and reputation in respect of its products marketed under the mark "AROME" that the public associates the mark "AROME" with that of the Plaintiff's goods. Firstly the registration was applied only in the year 2021 and therefore immediately within a period of one or two years, it cannot be said that the mark "AROME" had earned substantial goodwill and reputation that the public identifies the mark with that of the Plaintiff's goods Shubham 26 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc alone. The sales figure and advertisement expenses which are placed on record is a combined sales figure and not the stand alone figure and therefore even from the sales figure it cannot be prima facie deduced that public had started associating the mark "AROME" with that of the Plaintiff's product. In passing off action as held by the Hon'ble Apex Court in the case of Ruston & Hornsby Ltd vs. The Zamindara Engineering Co (supra) the question to be asked is whether the Defendant is selling the goods so marked as to be designed or calculated to lead purchasers to believe that they are the Plaintiff's goods. For the said purpose, it is necessary to demonstrate that the Plaintiffs have achieved substantial goodwill and reputation qua the registered mark which has not been prima facie demonstrated in the present case.
39. It is also necessary to show prior continuous uninterrupted use from 2021 which has not been prima facie shown in the present case. The invoices which are annexed to the plaint for the year 2021 bearing the mark "AROME" are only three invoices which prima facie is not an indicator of continuous uninterrupted use. In so far as the domain name "aromapl.com" is concerned, the principles applying in respect of infringement of trademark apply to tradename also. The Defendants have used the generic word aroma as part of their tradename which cannot prima facie be said to constitute infringement Shubham 27 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc of the Plaintiff's registered mark "AROME".
40. In so far as the prayer clause (c) granted by the order of 25th November, 2024 is concerned, prayer clause (c) seeks an injunction against the Defendants from inducing the Plaintiff's employees to breach contractual obligation and join the services of the Defendant. Without going into the question as to whether the Whats-app messages sent by the Defendants to the Plaintiff's employee were sent to induce or misrepresent the Defendant's association with the Plaintiff, what is significant is that the relief cannot be granted under Section 135 of the T. M. Act. Under Section 135 of the T. M. Act the reliefs which can be granted includes injunction and at the option of the Plaintiffs either damages or an account of profits together with or without any order for further delivery of the infringing labels and marks for destruction or erasure. In a suit for infringement and passing off the relief which have been prayed for in clause (c) cannot be granted. The contention that the causes of action can be combined cannot be accepted as no such relief can be granted in the suit for infringement of trade mark and passing off. It is not case of breach of confidentiality information by any of the employees which would fall within the jurisdiction of the Court dealing with the intellectual property rights.
41. In so far as acquiescence is concerned, the contention Shubham 28 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc stands sufficiently answered by the decision of Delhi High Court In Hindustan Pencils (P) Ltd vs India Stationery Products Company (AIR 1990 Del 19) , where the Delhi High Court held that in law, the question arises where the proprietor of a mark, being aware of his rights and being aware that the infringer may be ignorant of them, does some affirmative act to encourage the infringer's misapprehension so that the infringer worsens his position and acts to his detriment. It held that a mere failure to sue without a positive act of encouragement is no defence and is no acquiescence. A Defendant who infringes the plaintiff's mark with knowledge of that mark can hardly be heard to complain if he is later sued upon it. A Defendant who begins an infringement without searching the trade marks register is in no better a position.
42. In light of the above discussion, the Plaintiffs have prima facie made out a case for grant of interim relief of infringement of the mark "AROME". The Plaintiff has failed to make out prima facie case for infringement of its mark "AROCHEM" or for passing off. Hence, the Interim Application is allowed in terms of prayer clause (a) except the bracketed portion as under:
"(a) that pending the hearing and final disposal of the suit, the Defendants, by themselves,, their directors, agents, associates, employees, servants, dealers, stockist, distributors, assignees, licensees, Shubham 29 of 30 ::: Uploaded on - 12/08/2025 ::: Downloaded on - 12/08/2025 21:45:26 ::: IAL-32451-2024.doc all persons claiming through or under them be restrained by a temporary order and injunction of this Hon'ble Court from using in any manner the impugned mark "AROM" or the corporate name "AROM" [ or the website/domain name 'aromapl.com and/or the trade mark AROCHEM] on any goods, label, packaging, advertising, business, corporate name, domain name etc in respect of goods which are covered under registration of Plaintiff No 1's mark and/or any mark which may be identical and/or deceptively similar to Plaintiff No 1's registered trademark and thereby, restrain them from infringing Plaintiff No 1's registered trademarks bearing registration numbers as more particularly stated in [paragraph 7 and] paragraph 9 of the plaint. "
43. Interim application is allowed in terms of prayer clause (a) as above.
[Sharmila U. Deshmukh, J.]
44. At this stage, request is made for stay of the present order. Order is stayed for a period of six weeks from today.
[Sharmila U. Deshmukh, J.]
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