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- Trademark Litigation
It is well established that a Trademark have to be used in its totality. A trademark having several components in it, when registered, is taken as a whole. Whereas, according to Section 15 and 17 of the Trade Mark Act, 1999, if the applicant seeks exclusive rights over a part of trademark then he may have to register that part separately.
Despite the fact that there are various provisions dealing with trademark to be used as a whole, the Delhi High Court passed a judgment stating otherwise in the case of Izuk Chemical Works v. Babu Ram Dharam Prakash in 2007.
In this case, the plaintiff filed a suit seeking relief of permanent injunction and to restrain the defendants from infringing its trademark. The plaintiff was engaged in the business of manufacturing and trading bleaching preparations and other various substances for cleaning, polishing, laundry use etc. since the year 1917. The plaintiff since then is conducting his business under the trademark ‘MOONSTAR’ and has adopted a device of a star in the lap of the moon. By virtue of long and extensive use of the trademark since the year 1917 and of the label since 1998, the trademark and the label have become distinctive and are associated with the goods and business of the plaintiff.
The plaintiff therefore filed a suit against the defendant for malafide and fraudulent acts done by him by using the similar/identical Trade Mark dealing with the manufacture and trade of goods similar to that of the plaintiff. The plaintiff claimed that the defendant dishonestly copied all the essential features of the plaintiff’s trademark and label and is trading henna under the mark ‘SUPERSTAR’. When the suit was filed, the plaintiff was aggrieved by the similarity between the cartons in which the plaintiff was marketing its products and those adopted by the defendant. The same colour scheme, device of a woman and the expression ‘herbal henna’ were displayed in an identical position on the front of the carton as they appeared on the plaintiff’s cartons. The defendant had also copies the device of the star and displayed the same in a similar manner as displayed by the plaintiff with the mark of registration of the trademark and had printed the word ‘SUPERSTAR’ in the same colour and style as the plaintiff’s ‘MOONSTAR’ on its carton. The back of the defendant’s carton was almost identical to that of the plaintiff with same identical changes in the language in which the printed material was displayed and the contents of the information which was given.
Going through the above contentions, the court held:
- That the plaintiff has established a prima facie case of infringement of its registered trademark by the defendant. The trademark adopted by the defendant contains an essential part of the plaintiff’s trademark that is used for trading.
- The goods dealt by the defendant and the plaintiff are same and the mark used by the defendant is also very similar to the plaintiff’s mark.
- The plaintiff also established reputation and goodwill in its business under such trademark which would undoubtedly suffer irreparable loss and damage if the defendant is not restrained from continuing with its offending acts. The balance of convenience, interest of justice and equity lie in favor of the plaintiff and against the defendant. The potential customers would consist of literate, semi-literate and even illiterate people who by virtue of the adoption of the word ‘Star’ as part of its trademark by the defendant as also the device star would be persuaded to believe that the product of the defendant is associated with that of the plaintiff’s.
The application was allowed and the defendants were restrained from using plaintiff’s trademark ‘MOONSTAR’ or any part thereof for manufacturing, selling, offering for sale, advertising or displaying directly or indirectly or dealing in any other manner for its products or business. The defendants, proprietors, promoters, retailers, their agents, partners, servants, assigns, representatives, successors, distributors and all others acting for and on their behalf are also hereby restrained from using the device of star in the lap of the moon or any portion thereof for its products or business. The defendants are also restrained from using any other trademark or device identical or deceptively similar to that of the plaintiff amounting to infringement of plaintiff’s registered trademark; or violating the plaintiff’s common law rights in the trademark.
It is therefore, clear from the above judgment that the Court overturned the provision that trademark has to be considered as a whole and that the applicant may have exclusive rights over a part of his trademark if it contains an essential part of the whole mark.
Author: Ms. Tushita Dogra, intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at email@example.com