Recently, the Delhi High Court was called upon to decide a trademark battle between two leading audio brands, centring on the use of deceptively similar marks and taglines. The dispute raised key issues of trademark infringement, passing off, and the scope of interim injunctions, while also testing how phonetic and visual similarities are assessed in the modern online marketplace.
Brief Facts:
The case arose from a trademark dispute in the electronic audio products market, where a well-known brand, Imagine Marketing Pvt. Ltd. (hereinafter referred to as “IMPL”), alleged that its competitor had adopted deceptively similar marks. IMPL, which owns the registered trademark “boAt” along with distinctive logos and enjoys established goodwill, claimed that Exotic Mile’s (hereinafter referred to as ‘EM’) use of the mark “BOULT” and comparable logos and taglines misled consumers and amounted to passing off. On this basis, IMPL secured an interim injunction restraining EM from using these marks.
Contentions of the Appellant:
The Appellant states that the injunction covering the tagline “UNPLUG YOURSELF” was invalid, since no specific relief had been prayed for in that regard. It further contended that the mark “BOULT” and its associated logos were original creations, duly registered, and had been in commercial use since 2017 with significant market investments.
The Appellant emphasised that its primary consumers were informed online buyers, thereby reducing the likelihood of confusion. It also submitted that most of the challenged marks had already been withdrawn, leaving only the tagline in issue, and proposed to adopt the alternative mark “GOBOULT,” which, according to it, bore no similarity to IMPL’s trademarks.
Contentions of the Respondents:
The Respondent states that it had prior and superior rights in the trademark “boAt,” and alleged that the mark “BOULT,” along with its logos and similar taglines, was phonetically and visually close enough to create consumer confusion and amount to passing off. The Respondent further opposed the Appellant’s proposed use of “GOBOULT,” contending that such adoption would still offend settled principles of trademark law. To reinforce its claim, the Respondent relied on evidence of actual instances of customer confusion.
Observations of the Court:
The Court observed at the outset that the injunction against the use of the tagline “UNPLUG YOURSELF” was unsustainable, since no such relief had been specifically sought in the pleadings. As it stated, “There having been no prayer for injuncting the use of the tagline UNPLUG YOURSELF, the learned Single Judge could not have granted an injunction in that regard… Grant of interim injunction against the use of the tagline UNPLUG YOURSELF is, therefore, clearly unsustainable in law”
The Court further observed that IMPL was the prior user of the “boAt” trademark and that there existed a strong likelihood of confusion between “BoAt” and “BOULT” due to their phonetic resemblance. It noted that “BoAt and BOULT being quite phonetically similar, a consumer would not have a correct, complete and accurate reflection when he goes to buy the product, whether the product is of BOAT or BOULT, because of the first two and the last alphabet of the two words being the same”.
On visual similarity, the Court observed that the rival logos also bore resemblance, remarking that “The logos adopted by EM and IMPL were similar. Both were in the form of a triangle”
In reiterating the law on passing off, the Court observed that “Passing off takes place when one person, by adopting a trade mark or trade dress which closely resembles another’s, seeks to pass off his products as that of the other… It is enough if the plaintiff can establish… that the defendant has adopted a deceptively similar mark… and the plaintiff has suffered damage”. Importantly, it clarified that “Dishonesty is not, as we have already noted, a necessary ingredient of a valid passing off action”
The Court also observed that the consumer base for such electronic goods was wide-ranging, covering people across all social strata, “including children”. This, in its view, made the possibility of confusion even greater.
On the issue of online sales, the Court rejected the Appellant’s contention that phonetic similarity had no role to play in e-commerce. It observed, “We are not convinced with the submission of learned Counsel for EM that phonetic similarity has no relevance where products are sold online… if the consumer is unable to exactly recollect the name of the product which he wants, the possibility of likelihood of confusion always exists”.
Finally, the Court states that added elements such as product names and packaging must also be considered in passing off disputes, affirming the Single Judge’s findings: “It is trite that, in passing off claims, added matter is of relevance… The learned Single Judge has found this to be one such case, and we find no reason to disagree with her”
The Decision of the court:
The appeal was partly allowed: the injunction on “BOULT” marks was affirmed, while the injunction on the tagline “UNPLUG YOURSELF” was removed. EM was free to use “GOBOULT” subject to future challenges by IMPL. The ruling confirms that injunctions follow the prayers made and reinforces the role of phonetic and visual similarities in passing off claims, even amid online commerce.
Case Title: Exotic Mile vs. Imagine Marketing Pvt Ltd
Case No.: FAO (OS) (COMM) 20/2020
Coram: Hon’ble Mr Justice C. Hari Shankar and Hon’ble Mr Justice Ajay Digpaul
Counsel for the Appellant: Sr. Adv. Mr Akhil Sibal, Adv. Gaurav Miglani, Adv. Archana Sahadeva, Adv. Sharabh Shrivastava, Adv. Taaniyaa Dograa, Adv. Anushka Aman, Adv. Harshit Bhoi, Adv. Krishnesh Bapat and Adv. Sarah Haque.
Counsel for the Respondents: Sr. Adv. Mukul Rohatgi, Sr. Adv. Jayant Mehta and Sr. Adv. J. Sai Deepak, with Adv. Anuradha Dutt, Adv. Tushar Jarwal, Adv. Suman Yadav, Adv. Sachin Gupta, Adv. Nikhita K. Suri, Adv. Arunabha Ganguli, Adv. Atishree Sood, Adv. Raghav Dutt and Adv. Gurudas Khurana.
Read Judgment @LatestLaws.com
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