Delhi High Court
Gurnam Singh, Trading As M/S G.C. ... vs Deepak Arora, Trading As Ms Heena ... on 21 October, 2024
$~4
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 21st October, 2024
+ C.O. (COMM.IPD-TM) 2/2022 & I.A. 9047/2023
GURNAM SINGH, TRADING AS M/S G.C. LABORATORIES
.....Petitioner
Through: Mr. Rishabh Srivastava and Mr. Sahil
Gupta, Advocates
Mob: 9737708556
versus
DEEPAK ARORA, TRADING AS MS HEENA COSMETICS AND
ANR. .....Respondents
Through: None.
CORAM:
HON'BLE MS. JUSTICE MINI PUSHKARNA
MINI PUSHKARNA, J (ORAL)
1. The present petition has been filed under Sections 45, 59 and 125 of the Trade Marks Act, 1999 seeking removal/cancellation of the trademark "MAX HEAVEN" registered in Class-03, bearing registration no. 763462 in the name of respondent no. 1 from the Register of Trade Marks.
2. It is to be noted that since the respondent no. 1 could not be served through ordinary modes, the respondent was directed to be served through substituted service.
3. Thus, vide order dated 24th April, 2024, this Court allowed the service of respondent no. 1, through substituted service. Order dated 16th July, 2024, records that the respondent no. 1 now stands served through publication.
4. This Court notes that, there has been no appearance on behalf of the Signature Not Verified Digitally Signed By:CHARU CHAUDHARY C.O. (COMM.IPD-TM) 2/2022 Page 1 of 11 Signing Date:28.10.2024 09:33:49 respondent no. 1 in the present matter. Various attempts have been made by the petitioner to serve the respondent. None appears for the respondent no. 1 even today, despite service through substituted mode.
5. Accordingly, this Court has proceeded to hear the present matter. Brief Facts:
6. Brief facts, as canvassed in the petition, leading to the filing of present petition are, as under:-
6.1 The petitioner claims to be using the trademark „ & ‟ continuously and uninterruptedly, since the year 1972 in respect of the goods manufactured by the petitioner firm. 6.2 The petitioner firm has been engaged in the business of manufacturing and trading of various goods like Lipsticks, Foundation, Eye Liner, Face Powder, Kajal, Masker, Sindoor, Nail Polish, Nail Polish Remover, All Type Of Cream, Vaseline, Hair Oil, Eau De Perfume, Body Spray, Deodorant, Hindi, Kumkum, Facial Kits, Rose Water, Cleaning Milk, Moistening Lotion, Hair Remover, Eye Shadow, Blusher, Pen Cake, Pen Stick, Lip Gloss, Massage Gel, Hair Gel, Hair Color, Henna, Lip Liner, Talc Powder, Face Wash, Scrub, Make Up Brush, Soap, Dhoop Agarbatti, etc., registered in classes - 03, 14, 16, 21, 26, 20, 05, 10, 28, 08, 02, 35, 30 and 25. 6.3 The petitioner is the prior adopter and user of the mark „BLUE HEAVEN‟ and the petitioner has been continuously using the trademark „ & ‟, since the year 1972 relating to the various products for sale purposes. Further, the petitioner has also got Signature Not Verified Digitally Signed By:CHARU CHAUDHARY C.O. (COMM.IPD-TM) 2/2022 Page 2 of 11 Signing Date:28.10.2024 09:33:49 various trademarks registered in its favour, details of which are reproduced as under:
6.4 The petitioner‟s trade mark/service mark entitled „ & ‟, is an artistic work, which is specifically designed, and the said artistic lettering style being a unique design stands registered under the Copyright Act, 1957, under No. A-64321/03. Thus, the petitioner is also the registered owner and proprietor of the artistic work of the trade mark/label „ & ‟.Signature Not Verified Digitally Signed By:CHARU CHAUDHARY C.O. (COMM.IPD-TM) 2/2022 Page 3 of 11 Signing Date:28.10.2024 09:33:49
6.5 As a result of the long, continuous and extensive user and advertisement, publicity and sales promotion work and the superior quality of petitioner‟s services/products, as marketed by petitioner, the trademark/service mark „ & ‟, has acquired distinctiveness and has come to be identified exclusively with the petitioner‟s services/products.
6.6 The document pertainting to the sales turnover of petitioner is reproduced as under:Signature Not Verified Digitally Signed By:CHARU CHAUDHARY C.O. (COMM.IPD-TM) 2/2022 Page 4 of 11 Signing Date:28.10.2024 09:33:49
6.7 The respondent no. 1 is engaged in the business of same/similar/allied/cognate goods as that of the petitioner‟s goods, and is using a similar trademark, i.e., „MAX HEAVEN‟.
6.8 The petitioner is aggrieved by the fact that the trademark registered in favour of the respondent no. 1 i.e., „MAX HEAVEN‟ is deceptively similar to the registered trademark of the petitioner. Therefore, the said trademark of the respondent no. 1 cannot remain on the Register of the Trade Marks. 6.9 The adoption and use of the trademark „MAX HEAVEN‟ in respect of the similar goods by respondent no. 1, amounts to infringement of the petitioner‟s registered trademarks.
6.10 The trade and public have come to associate the trademark/service „ & ‟, exclusively with petitioner products/service and origin, and consequently valuable goodwill, and vast and considerable reputation has come to be attached to the said trademark/service of the petitioner.
6.11 Respondent no. 1 could not have claimed any ownership over the impugned trade mark, as respondent no. 1 is neither the owner of the impugned trademark nor the originator of the said trademark.Signature Not Verified Digitally Signed By:CHARU CHAUDHARY C.O. (COMM.IPD-TM) 2/2022 Page 5 of 11 Signing Date:28.10.2024 09:33:49
6.12 Thus, the present petition has come to be filed.
7. Detailed submissions have been advanced on behalf of the petitioner.
Learned counsel appearing for the petitioner has relied upon order dated 12th November, 2018, passed in CS(COMM) 827/2018 and decision dated 6th April, 2022, passed in C.O. (COMM.IPD-TM) 9/2021, in support of his submissions.
Analysis and findings:
8. I have heard learned counsel for the petitioner and have perused the record.
9. At the outset, this Court notes that the petitioner has placed on record various documents pertaining to its registration to show the vast sale of the petitioner‟s business under its mark „BLUE HEAVEN‟.
10. Further, various documents showing the invoices have also been placed on record, the earliest invoice showing the sale under the mark „BLUE HEAVEN‟ being of the year 1982.
11. Considering the submissions and the documents on record, it is manifest that the petitioner has been continuously using the trademark „ & ‟ since the year 1972 with respect to the various goods manufactured and marketed by it.
12. This Court also notes that the respondent no. 1 has obtained registration of the trademark „MAX HEAVEN‟ with user showing the user deatail with effect from 1st April, 1990. Thus, it is manifest that the petitioner is the prior adopter and user of the trademark „ & ‟.Signature Not Verified Digitally Signed By:CHARU CHAUDHARY C.O. (COMM.IPD-TM) 2/2022 Page 6 of 11 Signing Date:28.10.2024 09:33:49
13. This Court also notes that the mark of the petitioner has been extensively and continuously used over many years in India and in other countries. Thus, on account of the same, it is clear that the petitioner has been regularly, continuously and extensively using its trademark, i.e., „ & ‟, the products of the petitioner being available in different parts of the country.
14. In order to determine whether the trademark of the respondent no. 1 is deceptively similar to the trademark of the peitioner, it would be apposite to refer to the two trademarks, which are as under:-
Plaintiff‟s trademark Defendant‟s trademark
15. A perusal of the two marks shows that respondent no. 1 has adopted a similar mark „MAX HEAVEN‟ in relation to its goods and business, which is likely to deceive the public and cause confusion.
16. This Court notes that with respect to another similar mark, i.e., „MISS HEAVEN‟, this Court vide order dated 12th November, 2018 in CS(COMM) 827/2018, granted injunction in favour of the plaintiff in the following manner:
"xxx xxx xxx
14. From a bare perusal of the danglers aforesaid, an attempt by the defendant, to ride on the goodwill of the plaintiff, by making the consumers of the goods of the plaintiff, under deception, buy the goods of the defendant, is evident. The consumers, in the habit of and / or used to buying the goods of the plaintiff, identifying them on the danglers aforesaid hung in the shops selling the said goods, owing to similarity in the danglers of the defendant with the danglers of the plaintiff, are likely to ask for and buy the goods of the defendant, Signature Not Verified Digitally Signed By:CHARU CHAUDHARY C.O. (COMM.IPD-TM) 2/2022 Page 7 of 11 Signing Date:28.10.2024 09:33:49 without noticing the trade mark „VALENFINE‟ written in font size hardly visible from a distance of 4 to 5 feet at which such danglers are normally hung in the shops. Such consumers, considering the other similarities in the two set of danglers and the size and shape of the product therein, are also unlikely to distinguish between the two from the difference in the word preceding the word 'HEAVEN', i.e. 'BLUE' in the mark of the plaintiff and 'MISS' in the mark of the defendant. Even otherwise, the word 'HEAVEN' is found to be the dominant part of the mark of the plaintiff, by which the consumers thereof are likely to remember / recall the product of the plaintiff. The tests in this regard are discussed in Allied Blenders & Distillers Pvt. Ltd. Vs. Shree Nath Heritage Liquor Pvt. Ltd. (2014) 211 DLT 346 affirmed by the Division Bench in Shree Nath Heritage Liquor Pvt. Ltd. Vs. Allied Blender & Distillers Pvt. Ltd. 221 (2015) 221 DLT 359 and in Prathiba M. Singh Vs. Singh and Associates 2014 SCC OnLine Del 1982, Proctor & Gamble Manufacturing (Tianjin) Co. Ltd. Vs. Anchor Health and Beauty Care Pvt. Ltd. (2016) 234 DLT 331 (DB) and The Gillette Company LLC Vs. Tigaksha Metallics Pvt. Ltd. (2018) 251 DLT 530 and need to burden this order with details thereof is not felt. Reference in this regard may also be made to Ramdev Food Products (P) Ltd. Vs. Arvindbhai Rambhai Patel (2006) 8 SCC 726 concerned with broad and essential features of the mark and negating the contention that since only a label had been registered and not the name „RAMDEV‟, the plaintiff was not entitled to claim infringement. The test to be applied, was held to be of deceptive similarity.
xxx xxx xxx"
(Emphasis Supplied)
17. This Court is informed that the aforesaid suit was ultimately disposed of by way of settlement, wherein, the defendant therein, gave up the mark „MISS HEAVEN‟, which was similar/decetively similar to the plaintiff‟s mark „BLUE HEAVEN‟.
18. It is further to be noted that with respect to another similar mark, i.e., MARC HEAVEN‟, by judgment dated 6th April, 2024, passed in C.O. (COMM.IPD-TM)9/2021, a Coordinate Bench of this Court has categorically held that the mark „BLUE HEAVEN‟ is an inherently Signature Not Verified Digitally Signed By:CHARU CHAUDHARY C.O. (COMM.IPD-TM) 2/2022 Page 8 of 11 Signing Date:28.10.2024 09:33:49 distinctive mark. Thus, the conflicting mark, i.e., „MARC HEAVEN‟, was found to be deceptively similar to the registered trademark of the petitioner herein, i.e., „BLUE HEAVEN‟. Excerpt from the judgment dated 6th April, 2022, passed in the aforesaid matter, is reproduced hereunder:
"xxx xxx xxx
26. On the issue of likelihood of confusion, J. Thomas McCarthy in McCarthy on Trademarks and Unfair Competition [4th edition, Vol. 3, page 23-128] opines that the ordinary rule is that marks must be compared in their entirety, however, more weightage can be given to the dominant feature of the mark in reaching a conclusion on the issue of confusion. The relevant observation is as follows-
"While the basic rule is that marks must be compared in their entireties and not dissected, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Although it is not proper to dissect a 'mark,' one feature of a mark may be more significant and it is proper to give greater force and effect to that dominant feature. Thus, as a preliminary to comparing marks in their entireties, it is not improper to downplay the similarity of very descriptive parts of conflicting marks."
27. Thus, as per the settled law, even the appropriation of the word 'Heaven' by Respondent No.1, which is the dominant and prominent feature of the Petitioner's mark, can constitute infringement of Petitioner's rights in the mark "BLUE HEAVEN". Though the words `Blue' and `Heaven' are dictionary words, the adoption of both the words in combination and otherwise is a completely arbitrary adoption in respect of cosmetics. The mark `BLUE HEAVEN' is thus an inherently distinctive mark. Moreover, the said issue is no longer needed to be adjudicated separately in the present case as there is a clear admission by the Respondent No.1, in the application for rectification of the Petitioner‟s mark, as to the deceptive similarity of the marks.
28. In this Court‟s opinion, registration of the mark "MARC HEAVEN" would be violative of Section 9(1)(a) of the Act, as the same would be devoid of distinctive character inasmuch as it would Signature Not Verified Digitally Signed By:CHARU CHAUDHARY C.O. (COMM.IPD-TM) 2/2022 Page 9 of 11 Signing Date:28.10.2024 09:33:49 not distinguish Respondent No.1‟s products from the Petitioner‟s products. Furthermore, as per Section 9(2) of the Act, a mark is not liable to be registered if it is of such a nature so as to deceive the public or causes confusion. Section 11(2) of the Act makes it clear that, if a trademark is identical with or similar to an earlier trademark, the same does not deserve to be registered. In view of these grounds of refusal, which are both absolute grounds and relative grounds under Sections 9 and 11 of the Act, this Court has no hesitation in holding that Respondent No.1‟s mark is wrongly entered in the register and wrongly remains in the register.
xxx xxx xxx"
(Emphasis Supplied)
19. Thus, it is clear that the registered trademark of the respondent no.1 is deceptively similar to the registered trademark of the petitioner. Further, the respondent no. 1 is engaged in dealing with the same/allied/cognate goods which is likely to deceive and cause confusion in the market. Thus, this would confuse the purchasers as to the originator of the goods.
20. Considering the facts and circumstances of the present case, this Court is of the view that the mark of the respondent no. 1 is deceptively similar to the petitioner‟s mark and is liable to be cancelled and removed from the Register of Trade Marks.
21. Accordingly, the rectification petition is allowed and the impugned trademark registered under trademark application no. 763462 in Class-03 in favour of the respondent no. 1, is hereby cancelled. The Registrar of Trade Marks is directed to remove the aforesaid entry from the register of Trade Marks, and carry out the necessary rectification.
22. The Registry is directed to supply a copy of the present order to the Trade Mark Registry at E-mail Id: [email protected], for compliance.Signature Not Verified Digitally Signed By:CHARU CHAUDHARY C.O. (COMM.IPD-TM) 2/2022 Page 10 of 11 Signing Date:28.10.2024 09:33:49
23. With the aforesaid directions, the present petition is disposed of.
MINI PUSHKARNA, J OCTOBER 21, 2024 ak Signature Not Verified Digitally Signed By:CHARU CHAUDHARY C.O. (COMM.IPD-TM) 2/2022 Page 11 of 11 Signing Date:28.10.2024 09:33:49