Delhi High Court
Mother Sparsh Baby Care Pvt Ltd vs Aayush Gupta & Ors. on 28 October, 2024
$~47 & 48
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 28th October, 2024
+ C.O. (COMM.IPD-TM) 84/2024
MOTHER SPARSH BABY CARE PVT. LTD. .....Petitioner
Through: Mr. Sagar Chandra, Ms. Shubhie
Wahi and Ms. Ankita Seth, Advs.
M: 9711239881
versus
AAYUSH GUPTA & ORS. .....Respondents
Through: Mr. Rishub Kapoor, Adv.
M: 9654716337
Email: [email protected]
+ CS(COMM) 129/2022 & I.A. 22058/2023
MOTHER SPARSH BABY CARE PVT. LTD. .....Plaintiff
Through: Mr. Sagar Chandra, Ms. Shubhie
Wahi and Ms. Ankita Seth, Advs.
M: 9711239881
versus
AAYUSH GUPTA & ORS. .....Defendants
Through: Mr. Rishub Kapoor, Adv.
M: 9654716337
Email: [email protected]
CORAM:
HON'BLE MS. JUSTICE MINI PUSHKARNA
MINI PUSHKARNA, J (ORAL)
CS(COMM) 129/2022, I.A. 22058/2023 & C.O. (COMM.IPD-TM)
1. The rectification petition, being C.O. (COMM.IPD-TM) 84/2024, has
been filed praying for removal of the mark
„Plantpowered‟ from the Register of Trademarks of Trademark No. 4799403
in Class 03 registered in the name of the respondents/ defendants
("impugned mark").
2. It is the case of the petitioner/ plaintiff that the impugned mark of the
respondent/ defendants, i.e., „Plantpowered‟, is identical to the registered
mark of the plaintiff, i.e., „Plant Powered‟. The impugned mark of the
respondent/ defendants is not a coined word, but has been completely copied
from that of the petitioner‟s/ plaintiff‟s registered trademark „Plant
Powered‟. The respondents/ defendants have merely added the two words
plant and powered in the petitioner‟s/ plaintiff‟s mark and have adopted the
impugned mark.
3. It is submitted that such minor changes make no difference and the
impugned mark „Plantpowered‟ is identical with and/or deceptively similar
to the trademark „Plant Powered‟ of the petitioner/ plaintiff. The goods of
respondents/ defendants are of the same description, as those of the
petitioner/ plaintiff. Hence, confusion and deception is bound to arise in the
course of trade, in view of close and deceptive similarity between the rival
marks.
4. The suit being CS(COMM) 129/2022, has been filed against the
defendants seeking permanent injunction restraining infringement of
trademark of the plaintiff, passing off, etc.
5. The case canvassed on behalf of the plaintiff, is as follows:
5.1 The plaintiff is engaged in the marketing of baby care and personal
care products, which are natural and eco-friendly, including, detergent, face
wash, face cream, etc. under the trademark „Plant Powered‟. The plaintiff
adopted the mark „Plant Powered‟ in the year 2019 and launched its baby
care products under the said mark, and has been using the same, along with
two distinctive logos being ,
extensively, continuously and uninterruptedly from 2019, till date.
5.2 The plaintiff is the registered proprietor of a label that incorporates
the plaintiff‟s „Plant Powered‟ mark, as shown below:
5.3 The plaintiff has thirteen products under the „Plant Powered‟ mark,
the details of which, as given in the plaint, are as follows:
5.4 The plaintiff has expended great efforts on the promotion of the
products bearing the mark „Plant Powered‟ throughout the country. The
plaintiff has invested enormous amounts of money and efforts in building
the brand equity and has aggressively promoted its „Plant Powered‟ products
through various forms of media.
5.5 The plaintiff has been using the mark „Plant Powered‟ continuously
and uninterruptedly, as demonstrated through the following table:
CHAUDHARY
Signing Date:07.11.2024
10:06:01
5.6 By virtue of prior adoption, registration, long, continuous,
uninterrupted use and extensive promotion, the mark „Plant Powered‟ has
come to be associated with the plaintiff in respect of baby care products and
all kinds of cosmetics/ personal care products, face wash, face cream,
shampoo, etc. The mark „Plant Powered‟ has come to be associated with the
plaintiff and consumers associate goods bearing the same, exclusively with
the plaintiff alone, and no one else.
5.7 The mark „Plant Powered‟ of the plaintiff is arbitrary and the same
has acquired distinctiveness and secondary meaning, such that it is
associated solely with plaintiff owing to its long, continuous, uninterrupted
and extensive promotion by the plaintiff.
5.8 While the present proceedings were pending, the plaintiff was
successful in obtaining several other registrations for the trademarks,
, and , in Classes 16 and 25,
with the mark „Plant Powered‟ as the essential and prominent feature of the
same.
6. On behalf of the petitioner/ plaintiff, it is submitted that they have
been using the mark „Plant Powered‟ since the year 2019. On the other hand,
in the counter statement, respondent no.1/ defendant no.1 has pleaded that
he adopted and started using the impugned mark in the year 2019. However,
the earliest document filed by the respondents/defendants evidencing use of
the impugned mark is dated January, 2022. Likewise, the respondents/
defendants have filed documents in the suit evidencing use only from
February, 2020.
7. Vide order dated 17th September, 2024, this Court recorded that the
respondent/ defendants were ready to settle the matter. Subsequently, vide
order dated 22nd October, 2024, this Court recorded the statement on behalf
of respondents/ defendants, that they were ready to change their trademark.
8. Learned counsel for the petitioner/ plaintiff has pressed for costs and
has submitted that the conduct of the respondents/ defendants has been
malicious. It is submitted that upon coming across the impugned registration
and impugned products of the respondents/ defendants, the petitioner/
plaintiff issued a legal notice dated 01st February, 2022 to respondent no.1/
defendant no.1. Being served with the petitioner‟s/ plaintiff‟s legal notice,
the respondent no.1/ defendant no.1, instead of responding to the same, filed
a vexatious and false complaint against the petitioner/ plaintiff with
Amazon, alleging trademark violations. Owing to this, Amazon de-listed
nine of the petitioner‟s/ plaintiff‟s products on 08th February, 2022 and
another twelve of the petitioner‟s/ plaintiff‟s products on 13 th February,
2022. Despite various representations made to Amazon by the petitioner/
plaintiff, Amazon only re-listed three out of twenty one of the petitioner‟s/
plaintiff‟s products. Therefore, eighteen products of the petitioner/ plaintiff
remained de-listed from Amazon for seventeen days, a platform where the
petitioner /plaintiff generated a substantial part of its business. Thus,
petitioner/ plaintiff incurred substantial losses due to vexatious and
malicious acts of respondent no.1/ defendant no.1.
9. It is further submitted by learned counsel appearing for the petitioner/
plaintiff that the interim application filed by the petitioner/ plaintiff was
heavily contested by the respondents/ defendants. Along with their reply, the
respondents/ defendants filed forged and manipulated invoices, to plead that
they have been using the impugned mark since the year 2020. This Court
also took note of and concurred that the invoices filed by defendant nos. 1 to
3, were on the face of it, fabricated and forged, and granted liberty to the
plaintiff to seek appropriate relief against the defendants.
10. Having heard learned counsel for the parties, it is to be noted that vide
order dated 01st August, 2022, right of defendant nos. 1 to 3 to file their
written statement, was closed. Further, vide order dated 01 st May, 2023,
defendant nos. 1 to 3 were proceeded ex-parte. Further, vide order dated 01st
May, 2023 and 25th January, 2024, defendant nos. 4 and 5, were respectively
deleted from the array of parties of the present suit. Accordingly, the
plaintiff filed an application being I.A. 22058/2023 seeking that the present
suit be decreed in terms of Order VIII Rule 10 of Code of Civil Procedure,
1908 ("CPC").
11. In view of the fact that no written statement has been field by the
defendants in the suit and the defendants have been proceeded ex-parte, the
various contentions and averments made in the plaint are deemed to be
admitted by the defendants. Thus, facts of the present suit stand proven
against the defendants.
12. Order VIII Rule 10 CPC provides that where any party from whom a
written statement is required under Rule 1 or Rule 9, fails to present the
same within the time permitted or fixed by the Court, as the case may be, the
Court shall pronounce judgment against him or make such order in relation
to the suit, as it thinks fit. On the pronouncement of such judgment, a decree
shall be drawn up.
13. This Court notes that vide judgment dated 22nd March, 2022, this
Court injuncted the defendant from using the mark „Plant Powered‟
conjunctively in relation to baby care or personal care products or any goods
falling under Classes 03 and 05. Thus, it was held, as follows:
"xxx xxx xxx
9. Heard ld. Counsels for the parties. The question, in the present case,
relates to the use of the word and the mark „PLANT POWERED‟. Upon
a perusal of the documents placed on record, prima facie, this Court is
convinced that the Plaintiff is the prior adopter and the user of the said
mark since the year 2019. The earliest document placed on record by
the Defendant is one of December, 2020, when the trademark
application was filed by the Defendant.
10. It is further noticed that the product of the Defendant is not
described with any prefix on the website of Amazon. In fact, it is
described as 'PLANT POWERED'. Thus, it is clear that the mark
'PLANT POWERED' is being used as a trademark and not as a
description of the products. Moreover, the fact that the Defendant itself
applied for the trademark application and registration of the mark
'PLANT POWERED' means that they are estopped from claiming that
the same is the description of the product. ......
xxx xxx xxx
12. The sales of the Plaintiff have been sworn on affidavit and have
been placed on record. On the other hand, due to the various
discrepancies in the invoices which have been highlighted by the
Plaintiff, the sales of the Defendant are not clear at this stage. It
appears that there is also some manipulation of the e-way bill and tax
invoice which has been placed on record. On the one hand, the tax
invoices claim that the products sold are of 'PLANT POWERED',
whereas in the e-way bill, there is no mention of the mark 'PLANT
POWERED'.
13. The words 'PLANT' and 'POWER' by themselves, when considered
as standalone words, may be descriptive. However, when used in
conjunction with each other for identical products, there is likely to be
confusion between the Plaintiff's products and Defendant's products,
as is clear from the invoices which are placed on record by the ld.
Counsel for the Defendant even today.
xxx xxx xxx
18. In the opinion of this Court, both parties are selling the same kind
of products. The mark of the Plaintiff is used prominently on its
products. The Plaintiff is clearly the prior adopter and user of the
mark. The Defendant's conduct is far from bona fide as the user
documents of 2020 filed by the Defendant do not inspire confidence at
this stage. The Defendant not only uses the mark 'PLANT POWERED'
as a mark but also as a trading style. When a search is conducted for a
product of this nature on any e-commerce platform, it is normal for a
user to type the words 'PLANT POWERED' in order to search for the
product. If such a search is carried out, it would automatically throw
up the results with the Plaintiff's and Defendant's product, which
ought to be avoided.
19. In light of the facts and circumstances of the present case, the ex
parte injunction granted on 24th February, 2022 is confirmed. The
Defendant shall stand injuncted during the pendency of the present suit,
from using the mark „PLANT POWERED‟ conjunctively in relation to
baby care or personal care products or any other goods falling under
Classes 3 and 5, including but not limited to, face wash, face cream,
shampoo, etc., and/or such allied and cognate goods. This would,
however, not preclude the Defendant from using the word „PLANT‟ and
„POWER‟ separately in a manner, so as to not cause any deception and
confusion to the consumers, with the Plaintiff‟s mark „PLANT
POWERED‟.
20. As is evident from the packaging of the Defendant‟s products, the
products are shown to be marketed by „PLANT POWERED‟. Thus,
henceforth, the Defendant shall also not use the trading style „PLANT
POWERED‟ as an entity. The domain name „plantpowered.in‟ shall also
stand injuncted during the pendency of the present suit.
21. Insofar as discrepancy between the e-way bills and tax invoices, as
elaborated above, is concerned, the Plaintiff is permitted to move an
application seeking appropriate reliefs against the Defendant in this
regard.
xxx xxx xxx"
(Emphasis Supplied)
14. Perusal of the documents on record, show that the petitioner/ plaintiff
is the prior adopter of the trademark „Plant Powered‟. The impugned mark
„Plantpowered‟ is identical with and/or deceptively similar to the trademark
„Plant Powered‟ of the petitioner/ plaintiff. Both the marks are aurally,
visually, structurally and conceptually similar to each other and one cannot
be distinguished from the other. Further, it is to be noted that the goods of
the respondents/ defendants, are of the same description as those of the
petitioner/ plaintiff. Hence, confusion and deception is bound to arise in the
course of trade in view of close and deceptive similarity between the rival
marks.
15. The use of the marks by the respondent/ defendants is likely to cause
confusion and deception in the course of trade. There exists a likelihood of
association of the respondents‟/ defendants‟ mark with the petitioner‟s/
plaintiff‟s mark.
16. This Court further notes that the respondent/ defendants have adopted
the impugned mark „Plantpowered‟ by merely adding two words in the
petitioner‟s/ plaintiff‟s mark, while incorporating whole of the petitioner‟s/
plaintiff‟s mark in the impugned mark. Further, due to striking aural and
structural similarity with the petitioner‟s/ plaintiff‟s mark „Plant Powered‟,
there is likelihood of passing off and the same would lead to unfair
advantage, as well as dilution of the mark of the petitioner/ plaintiff.
17. The use of the impugned mark by the respondents/ defendants will
undoubtedly cause confusion and deception in the minds of customers and is
bound to deceive potential customers and dealers in the course of trade. The
trademarks of the petitioner/ plaintiff and respondents/ defendants are
registered for identical products, and the same are being marketed through
the same trade channel. Thus, a purchaser of average intelligence and
imperfect recollection, shall not be able to distinguish between the products
of the petitioner/ plaintiff and respondents/ defendants, and is bound to be
confused and misled into thinking that products of the respondents/
defendants are connected to the petitioner/ plaintiff, and/or originate from
the same source.
18. It is to be noted that Section 11 of the Trade Marks Act, 1999
prohibits the registration of any trademark which is similar to an earlier
trademark for identical goods. Since, the impugned mark is deceptively
similar to the petitioner‟s/ plaintiff‟s mark and is used for identical goods,
the same is liable to be rectified.
19. Thus, holding that consumers of any product only retain a general,
indefinite or vague impression of a mark and so may be confused upon
encountering a similar mark, this Court in the case of M/s. South India
Beverages Pvt. Ltd. Versus General Mills Marketing Inc. and Another,
20141, has held as follows:
"xxx xxx xxx
50. Consumers of any product do not deliberately memorize marks.
They only retain a general, indefinite, vague, or even hazy impression
of a mark and so may be confused upon encountering a similar mark.
Consumers may equate a new mark or experience with one that they
have long experienced without making an effort to ascertain whether
or not they are the same marks. The consideration therefore is whether
one mark may trigger a confused recollection of another mark. Thus, if
the marks give the same general impression confusion is likely to
occur.
xxx xxx xxx"
(Emphasis Supplied)
20. Thus, the impugned mark of the respondents/ defendants, i.e.,
SCC OnLine Del 1953
„Plantpowered‟, being visually and phonetically deceptively similar to the
petitioner‟s/ plaintiff‟s mark, „Plant Powered‟, cannot be allowed to remain
on the Register of Trademarks.
21. Further, the petitioner/ plaintiff, is held entitled to decree in its favour.
This Court takes note of the submission made by learned counsel appearing
for the plaintiff, who seeks only nominal cost of ₹7 lacs. It is to be noted that
the listing of the products of the petitioner/ plaintiff, were taken down by the
online e-commerce site „Amazon‟ upon the complaint of the respondents/
defendants. The products of the petitioner/ plaintiff were re-listed by
Amazon after many days on account of which the petitioner suffered losses.
Further, this Court notes that vide judgment dated 22nd March, 2022 in the
suit proceedings, this Court gave a prima facie view that there is some
manipulation on the e-way bill and tax invoice that had been placed on
record by the respondent/ defendant. In view of the facts and circumstances
of the present case, as discussed hereinabove, this Court is of the view that
the petitioner/ plaintiff is entitled to cost of ₹7 lacs.
22. Considering the detailed discussion hereinabove, the following
directions are issued:
22.1. Rectification petition is allowed. The mark of the respondents/
defendants, , registered vide no. 4799403 in Class 03,
is cancelled.
22.2 The Trademark Registry shall issue an appropriate notification to this
effect.
22.3 Decree is passed in favour of the petitioner/ plaintiff and against the
respondent/ defendants, in terms of paragraph 47 (i), (ii), (iii), (iv) and (vi)
of the plaint.
22.4 The petitioner/ plaintiff, is held entitled to cost of ₹7 lacs, which shall
be paid within a period of eight weeks, from today.
22.5 The opposition proceedings filed by the respondents/ defendants with
respect to application of the plaintiff for „Plant Powered‟ logo
vide application no. 5326237, shall be withdrawn by
the defendants.
22.6 Upon an application being filed by the defendants for withdrawal of
the opposition proceedings, the same shall be processed expeditiously, by
the Trademark Registry.
23. With the aforesaid directions, the present rectification petition and the
suit, is allowed and accordingly disposed of, along with the pending
application.
24. The Registry is directed to supply a copy of the present judgement to
the Trademark Registry, at E-mail: [email protected], for compliance.
MINI PUSHKARNA, J
OCTOBER 28, 2024/kr
