$~38
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision: 03.03.2025
+ FAO (COMM) 61/2025
DS DRINKS AND BEVERAGES PRIVATE LIMITED
.....Appellant
Through: Mr Ashutosh Kumar Mr Sajan
Shankar Prasad, Mr Pranav
Gupta and Ms Radhika Pareva,
Advs.
versus
HECTOR BEVERAGES PRIVATE LIMITED
.....Respondent
Through: Mr. Manish Dhir, Adv.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
HON'BLE MS. JUSTICE SHALINDER KAUR
NAVIN CHAWLA, J. (ORAL)
1. The learned counsel for the Caveator/respondent has entered
appearance, therefore, the caveat stands discharged.
2. Allowed, subject to all just exceptions.
3. The application is disposed of.
FAO (COMM) 61/2025, CM APPL. 12284/2025
4. This appeal has been filed by the appellant, challenging the
Order dated 16.01.2025 passed by the learned District Judge
(Commercial Courts-06), Central District, Tis Hazari Courts, Delhi
(hereinafter referred to as the "Learned Trial Court") on an application
filed by the respondent under Order XXXIX Rules 1 & 2 of the Code
of Civil Procedure, 1908 ("CPC"), in CS (Comm.) No. 350/2024,
titled Hector Beverages Private Limited vs. DS Drinks & Beverages
Private Limited, whereby an interim injunction was granted against
the appellant thereby restraining it from using the word „SWING‟ for
its energy drink in any manner, and in terms of prayer A(i) and A(ii)
of the said application.
5. The respondent has filed the above suit contending therein that
the respondent is involved in the business of food and beverages and
commenced its business in the year 2009. Its product line includes
various beverages under the trademark TZINGA Energy Drink,
PAPERBOAT, SWING AND SWING FIZZ. It is further alleged that
the products under the brand name „SWING‟ were initially launched
as a sub-brand/product variant under the main brand „Paper Boat‟,
however, over time, the products under the mark „SWING‟ have
developed a popular name and acceptance for itself in the market. The
respondent claimed that it has been using the said mark since the year
2017 and has acquired tremendous goodwill in the said mark. The
respondent has also registered its trademark, the details of which are
as under:-
Trade Mark Registration Class Registration
Number Date
3691925 32 December 1,
PAPER BOAT 5280472 32 January 11,
SWING JUICIER 2022
DRINK
6. The respondent was aggrieved by the appellant‟s adoption of
the mark „CATCH SWING ENERGY INVIGORATES & MIND‟.
Respondent claimed that it came across the appellant‟s trademark
application no. 6051833 for the said mark under class 32. The said
application had been filed by the appellant on a „Proposed to be used‟
basis. Consequently, the respondent filed the above suit, claiming that
the mark adopted by the appellant is deceptively similar to that of the
respondent. The respondent asserted as under: -
Respondent‟s trademark Appellant‟s trademark
Similarity:
1. The trademark SWING is copied in its entirety by the
Defendant.
2. The manner of adding other words after SWING has
been done in a malicious manner to create some
difference in the marks.
3. The services provided by the Plaintiff and Defendant
are identical and have the same target audience.
7. Along with the above suit, the respondent also filed an
application seeking the interim relief of an injunction against the
appellant, restraining it from using the said trademark „SWING‟ for its
products, which it claimed was similar to that of the respondent.
8. The appellant filed a written statement as also a reply to the
application filed under Order XXXIX Rules 1 & 2 CPC of the
respondent, inter-alia, contending therein that the mark of the
appellant being „CATCH SWING ENERGY INVIGORATES &
MIND‟, is distinct from that of the respondent, which uses the mark
„PAPERBOAT SWING‟. It was alleged that, therefore, there is no
possibility of any confusion being caused in the minds of the
customers of the two products. It was further contended that as far as
the energy drinks are concerned, which is the product of the appellant,
the respondent uses the mark „TZINGA‟.
9. The learned Trial Court, however, on consideration of the
submissions made before it and on perusal of the record, granted an
interim injunction against the appellant, restraining it from using the
mark „SWING‟. The Court observed that the word „SWING‟ cannot
be claimed to be a descriptive word having regard to the class of
products that the parties use it for. The learned Trial Court further held
that the word „SWING‟ is not only common to the mark of both the
parties, but is also prominently and effectively positioned mark. It was
observed that the respondent is a prior user and registered owner of
the mark „PAPERBOAT SWING‟ and, therefore, has been able to
make out a prima facie case for the grant of an injunction, and there is
a likelihood of confusion being caused by the adoption of a similar
mark by the appellant.
10. The learned counsel for the appellant submits that the learned
Trial Court erred in holding that the word „SWING‟ is a predominant
part of the respondent‟s mark. He submits that, in fact, there is no such
pleading in the plaint and that this was not a case set up by the
respondent. He further submits that a composite mark „PAPERBOAT
SWING‟ cannot be bifurcated to grant exclusivity to the respondent
over a part of the mark. In support, he places reliance on the
Judgments of this Court in Vasundhra Jewellers Pvt. Ltd. v. Kirat
VinodBhai Jadvani & Anr., 2022 SCC OnLine Del 3370, and in
Phonepe Private Limited v. EZY Services and Another, 2021 SCC
OnLine Del 2635.
11. He further submits that the respondent is using the mark
„PAPERBOAT SWING‟ for juices, which is a different product from
the one of the appellant, that is, an energy drink. He submits that for
energy drinks, the respondent uses the mark. He submits that,
therefore, the learned Trial Court erred in granting an interim
injunction against the appellant, restraining it from using the mark
„CATCH SWING ENERGY INVIGORATES & MIND‟.
12. On the other hand, the learned counsel for the respondent, who
appears on caveat, submits that this Court would not substitute its
discretion for that of the learned Trial Court. In support, he places
reliance on the Judgment of the Supreme Court in Wander Ltd. and
Ors. vs. Antox India P. Ltd., 1990 SCC OnLine SC 490.
13. He further submits that the predominant part of the mark of the
parties is „SWING‟, which is apparent from the depiction thereof on
the product itself.
14. He further submits that the appellant had filed for registration of
its mark on a „Proposed to be used‟ basis and has, therefore, entered
the market only around the time when the suit was filed, while the
respondent has established goodwill over its mark. He submits that the
use of a similar mark by the appellant is likely to cause confusion in
the customers and, therefore, the injunction has rightly been granted
by the learned Trial Court.
15. We have considered the submissions made by the learned
counsels for the parties.
16. At the outset, we would remind ourselves of the limited
jurisdiction that we exercise while adjudicating an appeal against an
order passed by the learned Trial Court in exercise of its powers under
Order XXXIX Rule 1 & 2 of the CPC. In appellate jurisdiction against
such an order, this Court would not interfere with the same only
because it may, in a given case, find that it would have exercised such
discretion in a different manner. It is only when the learned Trial
Court has erred in law or has ignored vital evidence or has committed
any such similar infraction, that the Appellate Court would interfere
with such an order. We quote from the Judgment of the Supreme
Court in Wander Ltd. (supra) as follows:-
"14. The appeals before the Division Bench
were against the exercise of discretion by the
Single Judge. In such appeals, the Appellate
Court will not interfere with the exercise of
discretion of the court of first instance and
substitute its own discretion except where the
discretion has been shown to have been
exercised arbitrarily, or capriciously or
perversely or where the court had ignored the
settled principles of law regulating grant or
refusal of interlocutory injunctions. An appeal
against exercise of discretion is said to be an
appeal on principle. Appellate Court will not
reassess the material and seek to reach a
conclusion different from the one reached by
the court below if the one reached by the court
was reasonably possible on the material. The
appellate court would normally not be justified
in interfering with the exercise of discretion
under appeal solely on the ground that if it
had considered the matter at the trial stage it
would have come to a contrary conclusion. If
the discretion has been exercised by the Trial
Court reasonably and in a judicial manner the
fact that the appellate court would have taken
a different view may not justify interference
with the trial court's exercise of discretion.
After referring to these principles
Gajendragadkar, J. in Printers (Mysore)
Private Ltd. v. Pothan Joseph :
... These principles are well established, but as
has been observed by Viscount Simon in
Charles Osention & Co. v. Johnston the law as
to the reversal by a court of appeal of an order
made by a judge below in the exercise of his
discretion is well established, and any
difficulty that arises is due only to the
application of well settled principles in an
individual case.
The appellate judgment does not seem to defer
to this principle."
17. We do not find any case made out by the appellant within the
scope of the limited jurisdiction that we exercise in this appeal.
18. In the present case, even otherwise, we do not find any error to
have been committed by the learned Trial Court in the Impugned
Order. The marks of the appellant and the respondent, as depicted on
their respective products, are as under:-
Respondent‟s product Appellant‟s product
19. From the above, it would by itself be evident that the
predominant part of the mark of the parties is „SWING‟. The same has
also been pleaded by the respondent in its plaint in extenso. We refrain
from quoting from the plaint for sake of brevity. Therefore, the
submission of the learned counsel for the appellant that there is no
pleading that the word „SWING‟ is the predominant part of the mark
of the respondent in its plaint, is liable to be rejected.
20. While it is true that a composite mark should not be dissected
and should be considered as a whole, the exception lies in cases where
a part of the mark is predominant in nature. In the present case, prima
facie at least, the respondent has been able to make out a case of the
word „SWING‟ being the dominant part of its mark, with the mark
„PAPERBOAT‟ being the other dominant part which defines all its
products, including the juices for which the mark „SWING‟ is being
used. „PAPERBOAT‟ appears to be the family mark while „Swing‟ is
the sub-mark, however, equally important to identify the product with
its source.
21. In this regard, it may be apposite to note the Judgment in M/s
South India Bevrages Pvt. Ltd vs. General Mills Marketing Inc. &
Anr., 2014 SCC OnLine Del 1953, wherein it was held as under :-
"19. Though it bears no reiteration that while
a mark is to be considered in entirety, yet it is
permissible to accord more or less importance
or 'dominance' to a particular portion or
element of a mark in cases of composite
marks. Thus, a particular element of a
composite mark which enjoys greater
prominence vis-à-vis other constituent
elements, may be termed as a 'dominant mark'.
xxxx
21. The view of the author makes it
scintillatingly clear, beyond pale of doubt, that
the principle of 'anti dissection' does not
impose an absolute embargo upon the
consideration of the constituent elements of a
composite mark. The said elements may be
viewed as a preliminary step on the way to an
ultimate determination of probable customer
reaction to the conflicting composites as a
whole. Thus, the principle of anti-dissection'
and identification of dominant mark' are not
antithetical to one another and if viewed in a
holistic perspective, the said principles rather
compliment each other.
xxxx
23. It is also settled that while a trademark is
supposed to be looked at in entirety, yet the
consideration of a trademark as a whole does
not condone infringement where less than the
entire trademark is appropriated. It is
therefore not improper to identify elements or
features of the marks that are more or less
important for purpose of analysis in cases of
composite marks."
22. The above noted Judgment was also followed by this Court in
M/s P.K. Overseas Pvt. Ltd. & Anr. v. M/s Bhagwati Lecto
Vegetarians Exports Pvt. Ltd. & Anr., 2016 SCC OnLine Del 5420,
wherein it was held as under; -
"20. It is often argued in trademark
infringement cases that the trademark has to
be considered as a whole and has not to be
dissected. That is to say the anti-dissection
rule is brought into force. On the other hand
the theory of a dominant part of a trademark is
propounded which essentially requires a Court
to look at the trademark compositely but
identify if any part thereof is the dominant
part. To a layman it may appear to be a legal
paradox, for on the one hand there is a rule
that you cannot dissect a composite mark and
on the other hand you have a rule which has
the feature of dissecting. In the decision
reported as 2015 (61) PTC 231 South India
Beverages Pvt. Ltd. v. General Mills
Marketing Inc. this issue was addressed by a
Division Bench of this Court with respect to
same products i.e. ice cream. The rival marks
under consideration were „HAAGEN-DAZS‟
and „D'DAAZS‟. Propounding the rule of anti-
dissection to contend that the respondent's
mark „HAAGENDAZS‟ should be viewed as an
indivisible whole and when viewed in its
entirety, it was not deceptively similar to the
impugned trademark „D'DAAZS‟, the rival
argument was that „DAZS‟ formed a
prominent part of the trademark „HAAGEN-
DAZS‟ and therefore warranted protection
against the impugned trademark. The Division
Bench then referred to various judicial
decisions and opined that the rule of anti-
dissection essentially mandates that where the
issue is of deceptive similarity between
composite marks, the commercial impression
of the mark as a whole needs to be considered
for the reason the jurisprudence behind the
anti-dissection rule was that the combination
of the terms in its entirety and not its dissected
elements constitute the distinctive mark. The
Division Bench then referred to the decision
reported as 211 (2014) DLT 296 Stiefel
Laborataries v. Ajanta Pharma Ltd. and
therefrom extracted the rationale for the anti-
dissection rule :„The rationale of the anti-
dissection rule is based upon this
assumption:„An average purchaser does not
retain all the details of a mark, but rather the
mental impression of the mark creates in its
totality. It has been held to be a violation of
the anti-dissection rule to focus upon the
„prominent‟ feature of a mark and decide
likely confusion solely upon that feature,
ignoring all other elements of the mark.
Similarly, it is improper to find that one
portion of a composite mark has no trademark
significance, leading to a direct comparison
between only that which remains.‟ In view of
the aforesaid, the Division Bench opined that
the principles of „anti-dissection‟ and that of
„identification of „dominant mark‟ are not
antithetical to one another but are rather
complimentary. It was held that the constituent
elements may be viewed as a preliminary step
in ultimately determining probable customer
reaction to the conflicting composites as a
whole. The Division Bench expounded that the
rule of anti-dissection does not absolutely
restrict consideration of the constituent
elements of a composite mark and more
significantly, where less than the entire
trademark was appropriated amounting to
infringement thereof, there would be no
violation of the anti-dissection rule. Reliance
was placed on the decision reported as 380
F.3d 1340 Re Chatam Int'l, Inc, where the
Court held that the commercial impression
created by the dominant part „GASPAR‟ of the
registered mark „GASPAR'S ALE‟ was far
more substantial than by its other part
„ALE and therefore the impugned mark „JOSE
GASPAR GOLD‟ was found to be deceptively
similar to the registered mark. Reference was
then made to decision reported as 405 F.
Supp. 530 (1975) Eaton Allen Corp. v. Paco
Impressions Corp where it was held that
consideration of a trademark as a whole does
not preclude infringement where less than the
entire trademark is appropriated. In the facts
of the case, the Division Bench, rejected the
appellant's arguments advanced on the basis
of the anti-dissection rule to hold that the
impugned mark „D‟ DAAZS‟ infringed a
dominant feature i.e. „DAZS‟ of the
respondents' trademark „HAAGEN‟ „DAZS‟
which feature can be easily relied on to trace
the source of its product and therefore must be
accorded protection. Thereafter, noting that
the expression „HAAGEN DAZS‟, was a
unique combination of Danish-sounding words
having no dictionary meaning in any
language, the Division Bench reiterated that
being an arbitrarily chosen trademark, the
same was entitled to a high degree of
protection and referred to the decision of this
Court reported as 2010 (44) PTC
293 (Del) Kirorimal Kashiram Marketing and
Agencies Pvt. Ltd. v. Shree Sita Chawal Udyog
Mill in support thereof. The Division Bench
highlighted that the consumer generally
retained only a vague impression of a mark to
ascertain its similarity upon encountering a
new rival mark. Interestingly, the Division
Bench imported the „ordinary observer‟ test in
copyright law to hold that this principle could
be adopted if a dominant part of a trademark
which had acquired a goodwill had been
adopted by the defendant.
21. In view of the principles of law
hereinabove discussed in the instant case
plaintiffs' trademark „India Salaam‟ would
have both words „India‟ and „Salaam‟ as
dominant parts thereof and use by the
appellants of the trademark „Al Salaam‟ would
be a prima-facie case of infringement. We
highlight that the sales figure by the
respondents for sale of rice under the
trademark „India Salaam‟ justify a prima-facie
opinion of reputation acquired in the
trademark and that the appellant had just
entered the market. Injury caused to the
appellants would be minimal if injunction was
granted because the appellants had yet to
acquire a reputation in the trademark adopted
by them."
23. In Phonepe Private Ltd. (supra) also, this Court accepted that
though exclusivity can be claimed, and infringement/passing off
alleged, only in respect of the entire mark of the plaintiff, and not in
respect of part thereof, at the same time, it was acknowledged that it is
open for the plaintiff to assert infringement on the ground that a part
of the mark has been copied by the defendant, provided the part so
copied, is the dominant part or the essential feature of the plaintiff‟s
trademark.
24. In Vasundhra Jewellers Pvt. Ltd. (supra), this Court explained
that examining of the dominant part of the trademark for comparing it
with the conflicting marks is solely for the purpose of determining
whether competing marks are deceptively similar when viewed as a
whole.
25. Applying the above test to the conflicting marks in question, it
is the prima facie opinion of this Court that the additions in the two
marks do not detract from the predominant part of the two marks, that
is, „SWING‟. The test of imperfect recollection of the customer would
make them draw their attention to the mark „SWING‟ even though
there are other parts of the mark which make the mark a complete
whole.
26. As far as the submission of the learned counsel for the
appellant that the products in question are different, we again find no
merit in the said contention. The appellant is dealing with energy
drinks, while the respondent is using the mark in question for juice.
These are allied products, available across the same counter, and
cannot be considered to be so distinct so as to not cause confusion in
the mind of the public if the same mark is used for the two products.
Therefore, because the respondent is using its mark „TZINGA Energy
Drink‟ for its product of energy drink, would not disentitle the
respondent from the grant of injunction as prayed for.
27. Accordingly, we find no merit in the present petition. The same
along with the pending application is, accordingly, dismissed.
28. Needless to state, any observations made herein are only prima
facie in nature and shall not influence the trial of the suit pending
before the learned Trial Court.
NAVIN CHAWLA, J
SHALINDER KAUR, J
MARCH 3, 2025/ss/sk/DG
Click here to check corrigendum, if any
