Punam Flutes vs Mahesh Chand Gupta And Anr on 23 April, 2024

[Cites 11, Cited by 0]

Delhi High Court - Orders

Punam Flutes vs Mahesh Chand Gupta And Anr on 23 April, 2024

1. The Petitioner, Punam Flutes, a proprietorship concern of Ms. Punam Priyadarshani, is a manufacturer and distributor of various musical instruments such as flutes, harmonium, table, tanpura, sitar etc. under the trademark "PUNAM FLUTES"/ " ". Through this petition, by asserting prior, continuous, and long use and existence on the Register of Trademarks, they seek cancellation of registration of the trademark "PUNAM" granted to Respondent No. 1 in class 15 under No. 3270845. Despite effective service, Respondent No. 1 has refrained from joining the proceedings. Therefore, the Court has proceeded to decide the petition ex-parte.

C.O. (COMM.IPD-TM) 162/2021 Page 1 of 7

This is a digitally signed order.

2. The Petitioner has been conducting its business operations since 2004, and subsequently, in 2018, they adopted the mark " "

for sale of musical instruments described above. The afore-noted mark has been registered in their favour in classes 15, 42 and 45. The details of such applications are as follows:

Application Trademark Class and goods User detail No. 2700051 15 01st May 2004 musical instruments including flutes, bansuri, harmonium, tabla, tanpura, sitar, sarot, violin, shanai, dholak, phakhawaj and guitar; included in class 15 3926614 35 Proposed-to-be-

                                                                                                                Online           retailing,               used
                                                                                                                trading,       marketing,
                                                                                                                online business, export
                                                                                                                import,     retail    outlet,
                                                                                                                business promotions of
                                                                                                                flutes and flutes cases
                                          3926615                                                               42                                 Proposed-to-be-
                                                                                                                Application           service used




                                    C.O. (COMM.IPD-TM) 162/2021                                                                                  Page 2 of 7
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 29/04/2024 at 20:41:04 provider, featuring software to enable, uploading, pasting, showing, displaying, tagging, blogging, information over the internet, social networking, photo sharing, video sharing, transmission of photographic images 3926616 45 Proposed-to-be-

                                                                                                                Domain               name used
                                                                                                                protection

3. In addition to the above, the Petitioner has also preferred applications for registration of the marks "POONAM", "PUNAM", "PUNAM FLUTES", " " and " ", which are currently facing opposition from a third party before the Trademarks Registry.

4. The copyright in the label/ artistic work " " has also been registered in the Petitioner's favour under No. A-132023/2019.

5. The Petitioner has, through open and continuous use, garnered a C.O. (COMM.IPD-TM) 162/2021 Page 3 of 7 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 29/04/2024 at 20:41:04 formidable reputation for its mark " ", which is evident from the substantial revenues earned from the sale of products under the said mark that amounted to Rs. 3,24,06,869/- in the financial year 2018-19. Petitioner's goods are exported to various countries and are also sold through the website "www.punamflutes.com". They are a well-known manufacturer of music instruments in the country, with their products having been endorsed by several popular musicians.

6. The impugned mark "PUNAM", which was registered on a proposed- to-be-used basis, has not been used since the grant of registration on 21st November, 2019. Further, the mark is deceptively similar to the Petitioner's mark " . The two marks are used for similar goods, being musical instruments included in class 15, thus amplifying the possibility of consumer confusion. The Petitioner commenced use of their mark prior to Respondent No. 1's impugned mark, as demonstrated by their registration and other documents on record. Thus, the subsequent registration of the mark "PUNAM" in Respondent No. 1's name is without sufficient cause. The entry pertaining to the impugned trademark is wrongly remaining on the Register for contravening Sections 9, 11, 12, 18, 32, 47 and 57 of the Trademarks Act, 1999.

Analysis

7. The Court has considered the afore-noted contentions and examined the record. To evaluate the strength of the Petitioner's claims, a comparison C.O. (COMM.IPD-TM) 162/2021 Page 4 of 7 This is a digitally signed order.

                                                       Petitioner's mark                                            Respondent No. 1's mark


                                                                                                                           PUNAM




                                    8.          The Petitioner's device "                                                      " principally uses the

word "PUNAM", the name of their proprietor, as a distinctive feature for designating the products offered by them. While the mark also encompasses the suffix "FLUTES" alongside a pictorial representation of a flute, the same are merely allusive to the goods to which the mark is applied. Inclusion of descriptive components that are typical in trade clearly suggests that the word "PUNAM" serves as the prominent feature of Petitioner's mark, intended to identify them as the source of the products. The comparison drawn above demonstrates that the impugned mark wholly entails the essential element of Petitioner's mark i.e., "PUNAM". The ambit of operations under the rival marks by both parties coincides as the Petitioner employs its mark to "musical instruments, including flutes, bansuri, harmonium, tabla, tanpura, sitar, sarot, violin, shanai, dholak, phakhawaj and guitar", while Respondent No. 1's registration is for "musical instruments", all of which fall under class 15. In assessing the likelihood of confusion, the consumer's perception is accorded paramount consideration. An average buyer usually retains only an overall impression of the mark, overlooking the individual non-distinctive features. The points of similarity C.O. (COMM.IPD-TM) 162/2021 Page 5 of 7 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 29/04/2024 at 20:41:04 can potentially outweigh the points of dissimilarities for a reasonably prudent person. Therefore, a meticulous examination of individualistic elements of competing trademarks is not the correct approach. Rather, the test is to discern whether the essential feature of the Petitioner's mark has been emulated by the Respondent. If there is a possibility that the consumer would mistake the two products, it is sufficient to hold that the impugned mark is likely to deceive or cause confusion.1

9. In the case at hand, the striking feature of the Petitioner's mark is indubitably the word "PUNAM", which is likely to be recalled in a consumer's memory and would be used to differentiate the Petitioner's products from that of their competitors. This essential feature is identical to the impugned registration. The Petitioner's mark is possibly regarded as the 'PUNAM' musical instruments in the market, or by the relevant segment of the public. Applying the legal standard discussed above, and given the afore- noted resemblance between the marks coupled with their proximity in the market, the Court considers that there is strong potential for an average buyer to be confused between the marks " " and "PUNAM".

10. Undisputedly, the Petitioner is a prior registrant of their trademark " " under No. 2700051 in class 15. Considering the similarity of the impugned mark "PUNAM" with Petitioner's earlier 1 Refer: James Chadwick and Bros. Ltd. v. The National Sewing Thread Co. Ltd., 1951 SCC OnLine Bom 33 and Cadila Healthcare Limited v. Cadila Pharmaceuticals Limited, (2001) 5 SCC 73.

C.O. (COMM.IPD-TM) 162/2021 Page 6 of 7

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 29/04/2024 at 20:41:04 trademark, the Court is of the view that Respondent No. 1's impugned registration cannot sustain under Section 11(1)(b) of the Trademarks Act.

11. Insofar as the ground of non-use of the impugned mark is concerned, although the counsel for Petitioner submits that as per his knowledge Respondent No. 1 has not utilised the impugned mark, he candidly acknowledges that the statutory timeframe stipulated in Section 47(1)(b) of the Trademarks Act has not yet expired. Thus, he does not press for the said contention.

12. In view of the foregoing discussion, in the opinion of the Court, the impugned registration cannot remain on the Register of the Trademarks. Accordingly, the present petition is allowed with following directions:

(i) Registration of the mark "PUNAM" granted to Respondent No. 1 in class 15 under No. 3270845 is cancelled.

(ii) The Trademarks Registry shall issue appropriate notification to the above effect.

13. Registry is directed to supply a copy of the present order to the Trademarks Registry at [email protected] for compliance.

14. Disposed of.

SANJEEV NARULA, J APRIL 23, 2024 nk C.O. (COMM.IPD-TM) 162/2021 Page 7 of 7 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 29/04/2024 at 20:41:04

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Delhi High Court - Orders