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Neutral Citation Number: 2022/DHC/004894

40. It needs no reiteration that when a common word is applied in a context where it has no co-relation to the product in question, it is termed as 'arbitrary' mark. Arbitrary marks enjoy high degree of protection without proof of secondary meaning. It was held in Telecare Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd. and Others, 2019 SCC OnLine Del 8739, that a word may be generic qua a specific business, trade or industry or goods but not across all trades, businesses or classes, for instance 'ARROW' is a generic word qua Archery business but arbitrary qua shoes. Similarly, IVORY would be generic when used to describe a product made from elephant tusks but would be arbitrary when applied to a soap.

41. In M/s. Kirolimal Kashiram Marketing & Agencies Pvt. Ltd. v. M/s. Shree Sita Chawal Udyog Mill, 2010 SCC OnLine Del 2933, Plaintiff had prayed for an injunction restraining the Defendant from using the trademark 'GOLDEN DEER', which was alleged to be deceptively similar to 'DOUBLE DEER', the registered trademark of the Plaintiff. The Division Bench, noting that the learned Single Judge had fallen into error, held that copying a prominent part of a trademark leads to deceptive similarity, especially when the product of both the parties is the same. The expression 'DEER' was arbitrarily adopted by the Appellant qua the product rice, with which it has no connection and is thus entitled to a high degree of protection. Reliance was placed on the judgment in Amar Singh Chawal Wala v. Shree Vardhman Rice and Genl. Mills, 2009 SCC OnLine Del 1690, where the dispute arose with respect to the registered marks 'GOLDEN QILLA' and 'LAL QILLA' and the product in question was also rice. Agreeing with the Plaintiff in the said case, the Court held that use by the Defendants of the mark and device 'HARA QILLA' and 'QILLA' respectively, would cause confusion and deception amongst the users Neutral Citation Number: 2022/DHC/004894 and trade in general. It is noticeable that in the said case also the trademark was 'arbitrary' to the product in question and was accorded protection. It is trite that when a common word is applied in an unfamiliar way or to products with which it is wholly unconnected, it is referred to an 'arbitrary' mark, for instance, APPLE for computer or Canon to camera or printer and enjoys a high degree of protection.

42. In Telecare Network India Pvt. Ltd. (supra), this Court held that though 'ZEN' is a generic word qua a School of Buddhism, yet it is not generic with regard to mobile phones and tablets, as the word has no connection or co-relation with mobile phones or tablets. Significantly, the Court also held that being 'arbitrary', the mark is entitled to protection without proof of it having acquired secondary significance.

43. Reliance has been correctly placed by the Plaintiff on the judgment in Bata India Limited v. Chawla Boot House, 2019 SCC OnLine Del 8147, where the Co-ordinate Bench of this Court held that the word 'POWER' could not be immediately connected to shoes (footwear) and applying the competitor's need test, is an arbitrary mark. Applying the 'imagination test' as well as the 'competitor's need test', by no stretch of imagination can it be said that ' /DHOLA MAARU' has a connection or co-relation with the product in question i.e. country liquor. The expression ' '/DHOLA MAARU is 'arbitrary' qua the product and therefore entitled to high degree of protection.