Delhi High Court
Dabur India Limited vs Mi Lifestyle Marketing Global Private ... on 8 December, 2023
Author: C.Hari Shankar
Bench: C. Hari Shankar
$~108
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 776/2023 & I.A. 21263/2023
DABUR INDIA LIMITED ..... Plaintiff
Through: Mr. Anirudh Bakhru, Mr.
Manish Kumar Mishra, Ms. Akansha Singh
and Mr. Umang Tyagi, Advs.
versus
MI LIFESTYLE MARKETING GLOBAL PRIVATE
LIMITED & ANR. ..... Defendants
Through: Ms. Shwetasree Majumder and
Mr. Prithvi Gulati, Advs.
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
O R D E R (O R A L)
% 08.12.2023
I.A. 21263/2023 [under Order XXXIX Rules 1 and 2 of the CPC]
1. The plaintiff is the proprietor of the following registered
trademarks.
S. Trademark Application Class Status
No. No. & Date
1. DABUR RED 4615532; 3 Valid Upto
19/08/2020 toothpaste; 19/08/2030
toothpowder;
dentifrices
2. DABUR RED 2847015; 3 Valid Upto
(Device) 21/11/2014 toothpaste 21/11/2024
3. DABUR RED 1547235; 3 Valid Upto
(Device) 09/04/2007 toothpaste 09/04/2027
4. DABUR RED 1208783; 5 Valid Upto
TOOTH PASTE 24/06/2003 medicinal 24/06/2033
preparation
included in class
Disclaimer:
"Registration of
this trade mark
shall give no right
to the exclusive
use of the Device
& Write ups
along with RED"
2. The plaintiff's grievance, as ventilated in the suit, was that the
trade dress adopted by the defendants with respect to their
ELEMENTS RED HERBAL toothpaste, both as used on the body of
the toothpaste as well as on the pack, infringed the plaintiff's
registered trademark.
3. Summons were issued in the suit on 20 October 2023 and notice
was issued on the present application.
4. Subsequently, the defendants have proposed the following new
packings against which, according to the defendants, the plaintiff can
have no legitimate grievance of infringement:
5. I have heard Mr. Bhakru and Ms. Majumder on the issue of
whether either of these proposed new packings could be adopted by
the defendants as non-infringing, pending disposal of the Suit.
6. The plaintiff's registrations, insofar as they are relevant for the
purposes of the present suit, are only in respect of the four device
marks reproduced supra.
7. In view of Section 17 of the Trade Marks Act, the Court is
required to compare the labels which constitute the device marks with
the proposed new labels of the defendants, in order to assess whether
the proposed new labels infringe the registered device marks of the
plaintiff.
8. Infringement has to be tested on the parameters envisaged by
Section 29 of the Trade Marks Act. The relevant sub-section for the
purposes of the present dispute would be Section 29(2), specifically
Section 29(2)(b)1.
9. Section 29(2)(b) requires simultaneous satisfaction of various
conditions before finding of infringement can be returned. The
provision envisages similarity between the registered trademark of the
plaintiff and the mark of the defendant and identity or similarity of the
goods or services covered by the said marks. Where both these
factors co-exist, and there is likelihood of confusion on the part of the
public or of the public associating the defendant's mark with the
plaintiff's marks on account of the said factors, infringement, within
the meaning of Section 29(2)(b) of the Trade Marks Act can be said to
have taken place.
10. The goods or services covered by the rival marks covered in the
present case are obviously the same as both the marks are used for
Herbal toothpaste, specifically "Red Herbal Toothpaste".
11. The Court is, therefore, required to examine whether the
1 29. Infringement of registered trade marks- (2)A registered trade mark is infringed by a person who, not
being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark
which because of--
(a) its identity with the registered trade mark and the similarity of the goods or services
covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or
services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services
covered by such registered trade mark,
is likely to cause confusion on the part of the public, or which is likely to have an association with the
registered trade mark.
proposed new labels of the defendants are similar to the registered
trade mark of the plaintiff and, if they are, whether the said similarity,
coupled with the fact that both the marks are used for toothpaste, is
likely to result in confusion or association within the meaning of the
Section 29(2).
12. Section 172 of the Trade Marks Act deals with composite
marks. Sub-section (1) states that the registrations of a trade mark
which consists of several matters would confer exclusivity, on the
proprietor of the registered trademark, only on the mark as a whole.
13. The same principle is reflected in Section 17(2), which
stipulates that, if a trademark contains a part which is not subject of a
separate application or which is not separately registered as a trade
mark, the registration of the entire mark would not confer a right to
exclusivity, on the registrant, in respect of the individual part of the
composite mark which is not so separately registered.
14. The principle of anti-dissection, contained in Section 17 was
caveated, to a certain extent, by the judgment of the Division Bench of
this Court in South India Beverages Pvt. Ltd. v. General Mills
2 17. Effect of registration of parts of a mark-
(1) When a trade mark consists of several matters, its registration shall confer on the
proprietor exclusive right to the use of the trade mark taken as a whole.
(2) Notwithstanding anything contained in sub-section (1), when a trade mark--
(a) contains any part--
(i) which is not the subject of a separate application by the proprietor for
registration as a trade mark; or
(ii) which is not separately registered by the proprietor as a trade mark; or
(b) contains any matter which is common to the trade or is otherwise of a non-
distinctive character,
the registration thereof shall not confer any exclusive right in the matter forming only a part of the
whole of the trade mark so registered.
Marketing Inc.3, which held that while comparing two marks as a
whole, the Court was not proscribed from examining the aspect of
infringement by taking into consideration any individual part of the
mark if it constituted the dominant part thereof. The Division Bench
also held that this principle did not conflict with Section 17, as it was
only setting out the guideline on the basis of which, in the case of a
composite mark of which a part was dominant, the Court could assess
the aspect of infringement.
15. When one uses the aspect of infringement in the present case,
keeping in mind Section 29(2)(b) juxtaposed with Section 17, it is
apparent that all the device/label marks which are registered in the
plaintiff's favour are composite marks which contain a red
background, certain pictorial depictions of leaves and a family, the
word RED written in bold white lettering on a red background and,
prominently, the plaintiff's house mark .
16. These are all prominent features of the plaintiff's device marks
and it is not really possible to accord, to any one feature's dominance
over the others.
17. While comparing the plaintiff's device marks with the proposed
new marks of the defendants, therefore, one has to treat all the
individual parts of the plaintiff's marks as equally dominant.
3 2014 SCC OnLine Del 1953
18. As none of the individual parts are registered separately as a
trademark, the plaintiff cannot claim exclusivity over any individual
part, and can claim exclusivity only over the entire label/device marks.
19. When the aspect of infringement of the plaintiff's label/device
marks vis-à-vis the proposed new marks of the defendants are
examined keeping this in mind, it would be seen that there are several
distinguishable features of both the defendants' proposed labels. Both
the proposed new marks are, it may be noted, almost identical except
that the words "Red Herbal Toothpaste" are written in slightly
different fonts in the two labels.
20. When one compares these proposed new labels with the
plaintiff's device marks, it would be seen that the most prominent
textual component of the proposed new labels is the brand name
ELEMENTS, with the logo above it, a
leaf with certain cloves towards the right and the slogan "Red Earth
Mineral And Unique Herbo-Spice Formula" written in black on a
brownish gold background. Apart from this, the words "Red Herbal
Toothpaste" stand relegated to the upper right corner of the label.
21. When one compares the device marks of the plaintiff with the
proposed new labels of the defendants and compares as a whole, it
cannot be said, prima facie, that the proposed new labels of the
defendants infringe any of the registered device marks of the plaintiff.
They are sufficiently distinct and different, as to mitigate any
possibility of confusion with the plaintiff's device mark.
22. Ms. Majumder makes a statement, on instructions, that, pending
disposal of the suit, her client would only be using the proposed new
labels.
23. The said statement is taken on record, without prejudice to the
rights and contentions of both sides to advance submission on merits
regarding the suit, about which this Court is not expressing any
opinion today.
24. As both the proposed labels are nearly identical, this Court
holds, prima facie, that the defendants would be at liberty to use either
of the said proposed new labels for its "Elements Wellness Red
Herbal Toothpaste", pending disposal of the Suit.
25. In case, the impugned trade dress of the defendants continues to
be reflected on any physical or virtual site of the defendants, the
defendants are directed to remove the said images within a period of
one month from today.
26. The plaintiff would be at liberty to write to any third party e-
commerce websites on which the pack of the defendants which is
impugned in the plaint is still available for sale.
27. The application is disposed of accordingly.
CS(COMM) 776/2023
28. List before the learned Joint Registrar (Judicial) for completion
of proceedings, admission and denial of the document and marking of
exhibits on 9 January 2024, whereafter the matter would be placed
before the Court for case management hearing and further
proceedings.
C.HARI SHANKAR, J
DECEMBER 8, 2023
ar/aks
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