A.O. SMITH CORPORATION AND ANR. vs STAR SMITH EXPORT PVT. LTD. AND ANR.

* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Reserved on : 1st February, 2024
Pronounced on : 22nd March, 2024

+ I.A. 19011/2022 & I.A. 12253/2023 in CS(COMM) 532/2022

A.O. SMITH CORPORATION AND ANR. ….. Plaintiffs
Through: Mr. Ranjan Narula and Mr. Shashi P.
Ojha, Advs.
versus
STAR SMITH EXPORT PVT. LTD. AND ANR. ….. Defendants
Through: Mr. Manoj Chauhan, Mr. Zaffar Khurshid, Ms. Neha Raj Singh and Mr. Ujjwal Singh Parmar, Advs.
CORAM:
HON’BLE MR. JUSTICE ANISH DAYAL

JUDGMENT
ANISH DAYAL, J.
I.A. 19011/2022 (under Order XXXIX Rule 4 of CPC) & I.A. 12253/2022 (under Order XXXIX Rule 1 and 2 of CPC)
1. This judgment disposes of the application filed by defendants under Order XXXIX Rule 4 of Code of Civil Procedure, 1908 (‘CPC’) being I.A. No.19011/2022, as well as, application filed by plaintiffs under Order XXXIX Rule 1 and 2 of CPC being I.A. No.12253/2022.
2. The present suit has been filed by plaintiffs (‘A.O. Smith Corporation’ and ‘A.O. Smith India Water Products Pvt. Ltd.’, the US Parent Company and its Indian subsidiary) which claims rights in the mark ‘A.O. SMITH’/
.
3. Plaintiffs claim that they have used the said mark since 1874 internationally and in India since 2006. ‘A.O. SMITH’ and ‘BLUE DIAMOND’ are marks used by plaintiffs in respect of geysers, water heaters, purification systems, boilers and other related equipment. Plaintiffs claim that they have huge turnover worldwide, to the tune of 3.5 billion dollars in 2021 and have extensive presence in various Indian cities. The trademarks registered in favor of plaintiffs are claimed to be as under:
4. Grievance was against defendants who had incorporated a company in the name of ‘Star Smith Export Pvt. Ltd.’ in August, 2020 and had filed a trademark application for registration of the word mark ‘STAR SMITH’ / ‘STARSMITH’/ on proposed to be used basis. The said mark had been opposed by plaintiffs. Defendants had adopted the mark ‘STAR SMITH’ / ‘STARSMITH’/ for identical products such as geysers, purification systems, water purifiers, RO systems and the mark ‘BLUE DIAMOND’ for water heaters.
5. Taking into account these issues, this Court came to prima facie conclusion in favor of plaintiffs on ground of ex parte ad interim injunction on 3rd August, 2022, thereby restraining defendants from using the marks ‘STAR SMITH’/ ‘STARSMITH’ and ‘BLUE DIAMOND’ or any other mark that was deceptively similar to plaintiffs’ marks for geysers, purification systems, water purifiers, RO systems and other cognate and allied goods. The Court excepted out injunction of the corporate name of defendant no.1. Subsequently, this application (I.A. 10911/2022) under Order XXXIX Rule 4 of CPC was filed on behalf of defendants, to which counsels have submitted their respective arguments.

Submissions by Plaintiffs
6. On behalf of plaintiffs, counsel reiterated the adoption of the mark ‘A.O. SMITH’ in the 19th century and launch in India in 2000’s. Plaintiff no.2, the Indian subsidiary, was incorporated in 2006 and plaintiffs entered the Indian Water Heater market in July, 2008. Plaintiff no.2 offers for sale its goods and services all over India through its website ‘www.aosmith.india.com’ and on other e-commerce portals. Its parent website ‘www.aosmith.com’ was registered in December, 1994. Further, the products of plaintiff no.2 are available through large retail stores including Croma, Vijay Sales, Reliance Digital and others and it was stressed that products of defendants are also available at the same stores. It was claimed that search for ‘A.O. SMITH’ on popular search engines, such as Google, shows plaintiffs’ products as the top result and even a search for ‘SMITH Water Heater’ shows up results of plaintiffs’ products. Therefore, it was contended that ‘SMITH’ was the dominant aspect of their mark. Attention was drawn to various awards which have been obtained by plaintiffs and registrations of the marks of plaintiffs, as already extracted above. Sales and promotional expenditure of plaintiffs in respect of these products was also adverted to in para 15 and 16 of the plaint.
7. Plaintiffs’ counsel contended that aside from the international use since 1874, use in India since 2006 and a large amount of goodwill and reputation in the said mark, as well as continuous persistent use, the word itself was a coined mark from the names of two co-founders viz. Arthur Oliver Smith and C.J. Smith. Applying the anti-dissection rule, reliance was placed on M/s. South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. & Anr., 2014 SCC OnLine Del 1953, to state that a particular element of a composite mark which enjoys greater dominance, may be termed as a dominant mark. The illustration provided was of the mark ‘Golden Deer’ wherein the Court held that the expression ‘Deer’ was arbitrarily adopted by the appellant with respect to its product rice, having no connection or co-relation and therefore, such arbitrary adoption of a mark with respect to a product, with which it has no co-relation, is entitled to a very high degree of protection. The relevant paragraphs of the said judgment are extracted 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’.”
…
“28. This Court, in its judgment reported as MANU/DE/2307/2010: 2010 (44) PTC 293(Del) Kirorimal Kashiram Marketing and Agencies Pvt. Ltd. v. Shree Sita Chawal Udyog Mill recognised the principle that arbitrarily chosen expressions carry greater protection. The plaintiff prayed for an injunction restraining the defendant from using
the trademark ‘Golden Deer’, which was claimed to be deceptively similar to ‘Double Deer’, the registered trademark of the plaintiff. The Court held that the expression ‘Deer’ was arbitrarily adopted by the appellant with respect to its product rice. A deer has no connection or co-relation with the product namely rice. Such arbitrary adoption of a word/mark with respect to a product, with which it has no co-relation, is entitled to a very high degree of protection.”

(emphasis added)

8. The mala fide intention of defendants, as per plaintiffs, was evident from reference to a cease-and-desist notice dated 19th April, 2022 issued to defendants, to which a response was received on 21st April, 2022. The explanation given by defendants was that adoption of trademark ‘STAR SMITH’ was because ‘Smith’ is their son’s name and further, that ‘SMITH’ was a generic name. As regards the contention of ‘SMITH’ being a generic name and there being various marks in that regard, it was contended by counsel for plaintiff that the burden of proof was on the challenger and simply by providing registration details of other marks using ‘SMITH’, that burden would not be discharged. Reliance was placed on the decision of Pankaj Goel v. Dabur India Ltd., 2008 SCC OnLine Del 1744 and Dr. Reddy’s Laboratories Ltd. v. Reddy Pharmaceuticals Ltd., 2004 SCC OnLine Del 668. The fact that defendants had applied for registration of the mark in July, 2020 on proposed to be used basis in class 11, contended that mere application would not give them any right, while placing reliance on Automatic Electric Ltd. v. R.K. Dhawan & Anr., 1999 SCC OnLine Del 27.
9. Reference was made to an abstract from the website narrating the company profile of defendants in ‘About Us’, where it was stated that defendants had started the unit of ‘Star Smith Export Pvt. Ltd.’, “after conducting extensive market research and studying of foreign technologies”. This, according to plaintiffs’ counsel also provided support to their contention that defendants had dishonestly adopted the mark.

Submissions by Defendants
10. Defendants’ counsel in support of its application under Order XXXIX Rule 4 of CPC and in response to plaintiffs’ submissions, contended that plaintiffs were not entitled to an injunction, particularly on the reading of Section 15 and 17 of the Trade Marks Act, 1999 (the ‘Act’). While Section 17(1) of the Act provided that registration would confer the proprietor rights in use of the trade mark “taken as a whole”, Section 15 of the Act provided that there will be no right in part of the mark, unless registered. Further, on a comparative analysis of both the marks, i.e., and , it was pointed out that not only was the look of the marks different but they also had a different byline (‘stronger than trust’ used by defendants and ‘innovation has a name’ used by plaintiffs) and that the name in itself was very different. It was claimed that ‘AO’ was the dominant part of plaintiffs’ mark and not ‘SMITH’. Further, the marks were affixed in a very different style, as was evident from the following pictorial representations:

11. ‘STAR ENTERPRISES’ was incorporated in 1990 and manufactured electrical appliances; was converted into ‘AEROSTAR’ in 2005 and later into ‘STAR SMITH’ in 2020. Documents in relation to the same had been filed along with written statement by defendants. It was clarified that the said mark was not used for water purifiers at that time but it was used for other electrical products like irons, TVs and fans. Importantly, it was claimed by defendants that there are other entities which were using the mark ‘SMITH’ in classes 7 & 11, which is tabulated as under:

12. Reliance was placed by defendants’ counsel on various decisions, in particular on Phonepe Pvt. Ltd. v. EZY Services & Anr., 2021 SCC OnLine Del 2635, where in para 13, the Court had adverted to Section 17(1) of the Act to reiterate that separate parts of the mark when not registered, will not confer exclusive right on the proprietor of the composite mark; S.M. Dyechem Ltd. v. Cadbury (India) Ltd., (2000) 5 SCC 573, where the Court has noted that plaintiff must prove that the essential features of the mark have been copied, further, the onus to prove deception was on plaintiff and ascertainment of an essential feature is not by ocular test alone.

Submissions in rejoinder by Plaintiffs
13. Counsel for plaintiffs submitted that S.M. Dyechem (supra) was overruled by Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., 2001 SCC OnLine SC 578 on the points that firstly, difference in essential features is more relevant; secondly, along with visual representation of the mark, phonetic resemblance is also to be considered; and thirdly, that deceptive similarity and likelihood of confusion is evident from the fact that a search for defendants’ mark ‘STARSMITH’ on e-commerce platforms like Amazon, shows results for plaintiffs’ ‘A.O. SMITH’ water heaters.

Analysis
14. Having heard counsel for parties and perused the written submissions, pleadings and documents on record, the following points become relevant for our analysis:
14.1 It is evident and admitted that, while plaintiffs have a registered mark in India since 2008, including the word mark and the device mark ‘A.O. SMITH’, defendants’ mark is not yet registered. Plaintiffs and defendants sell identical products under their respective marks i.e. geysers and water heaters. The issue of identical goods, therefore, comes into play under Section 29(1) and (2) of the Act viz. ‘deceptive similarity’, ‘likelihood of confusion on part of the public’ and ‘likely to have an association with the registered trademark’. A useful dissection of these elements in Section 29 of the Act have been supplied by a prior decision of this Court dated 4th March, 2024 in CS (COMM) 25/2023 titled Swiss Bike Vertriebs Gmbh Subsidiary of Accell Group v. Reliance Brands Ltd. (RBL), 2024: DHC:1884. In the said decision, principles enunciated by N. Rajagopala Ayyangar, J. in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceuticals Laboratories, AIR 1965 SC 980, were summarized, which are reproduced below for ease of reference:
“a. An action for infringement is a statutory remedy conferred on the registered proprietor of a trademark for vindication of the exclusive right to the use of the trademark in relation to those goods.
b. In an action for infringement, plaintiff must make out that use of defendant’s mark is likely to deceive, but where the similarity between plaintiff’s and defendant’s mark is so close either visually, phonetically, or otherwise, and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that plaintiff’s rights are violated.
c. If defendant adopts the essential features of plaintiff’s trademark, that the get-up, packing and other writing or marks on the goods or on the packets in which goods for sale are offered show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark, would be immaterial.
d. Once use by defendant of the mark which is claimed to infringe plaintiff’s mark is shown to be “in the course of trade”, the question whether there has been an infringement is to be decided by comparison of the two marks.
e. Where the two marks are identical, no further questions arise, for then the infringement is made out.
f. When the two marks are not identical, plaintiff would have to establish that the mark used by defendant so nearly resembles plaintiff’s registered trademark as is likely to deceive or cause confusion in relation to goods in respect of which it is registered.
g. A point has sometimes been raised as to whether the words “or cause confusion” introduce any element which is not already covered by the words “likely to deceive” and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words “likely to deceive”.
h. In an action for infringement, the onus would be on plaintiff to establish that the trade mark used by defendant, in the course of trade in the goods in respect of which his mark is registered, is deceptively similar.
i. This is necessarily to be ascertained by a comparison of the two marks — the degree of resemblance which is necessary to exist to cause deception is not capable of definition by laying down objective standards.”

14.2 Adverting to various previous decisions, a useful set of principles were culled out by a Single Judge of this Court in Phonepe (supra). These principles are reproduced below for ease of reference:
“(i) In assessing deceptive similarity, the class of the customer who would purchase the product is relevant. The look/appearance, and the sound, of the trade marks, as well as the nature of the goods, are all relevant considerations. Surrounding circumstances are also relevant.
(ii) The onus of proof is on the plaintiff who alleges passing off. As against this, in an opposition to the registration of a trade mark, the onus to prove deceptive similarity is on the defendant who seeks non-registration, or removal of the trade mark from the register.
(iii) “Confusion” refers to the state of mind of the customer who, on seeing the mark, thinks that it differs from the mark on the goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection. The question is one of first impression.
(iv) This is especially true in the matter of phonetic similarity. A meticulous comparison of the words, syllable by syllable, is to be avoided. The possibility of careless pronunciation and speech, both on the part of the buyer walking into the shop, as well as the shop assistant, is also required to be factored into consideration.
(v) The matter has to be examined from the point of view of a person of average intelligence and imperfect recollection. It has to be seen as to how such a purchaser would react to the trade mark, the association which he would form and how he would connect the trade marks with the goods he would be purchasing.
(vi) The Pianotist test, postulated over a century ago, has repeatedly been endorsed by the Supreme Court, as the definitive test to be adopted while comparing rival trade marks. According to this test, the Court is required to judge the rival trade marks by their look and sound, and consider,
(a) the goods to which they are to be applied
(b) the nature and kind of customer who would be likely to buy those goods,
(c) all surrounding circumstances and
(d) the consequences which would follow if each of the marks is used in the normal way as the trade mark for the goods of the respective owners.
While doing so, the common part of the words forming the competing marks may not be decisive. The overall similarity of the composite words is required to be seen, having regard to the circumstance (if applicable) that both are on like goods of similar description. The test to be applied is whether, if the two marks are used in a normal and fair manner, there is likelihood of confusion or deception.
(vii) The whole word/mark is to be considered. An ordinary man would not split a word or name, in a trade mark, into its components, but would go by the overall structural and phonetic similarity of the marks at the nature of the goods previously purchased, or of which he has been told and which he wants to purchase. It has to be examined whether the totality of the trademark of the defendant is likely to cause deception/confusion or mistake in the minds of the persons accustomed to the existing trade mark of the plaintiff.
(viii) The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff’s mark. The Court is, however, required to apply both the phonetic and the visual tests. At times, ocular similarity may be sufficient to find possibility of confusion/deception, even if the marks are visually dissimilar, though ocular similarity, by itself, may not, generally, be the decisive test. Where, however, (i) in all other respects, the marks of the plaintiff and defendant are different, (ii) the word/words, in the marks, which are phonetically similar, cannot be regarded as the dominant word, or essential feature, in the marks, and (iii) the surrounding circumstances also belie any possibility of confusion, it has been held that deceptive similarity cannot be found to exist merely on the basis of phonetic similarity or even identity. The matter, apparently, is always one of fact. The Court would have to decide, on a comparison of the two marks, and the parts thereof which are phonetically similar, as to whether such phonetic similarity is likely, considering all other circumstances, to confuse or deceive a purchaser of average intelligence and imperfect recollection, always bearing in mind the nature of the goods, and the degree of circumspection which would be expected of the purchasers who would purchase such goods.
(ix) The Court is required to examine whether the essential features of the plaintiff’s mark are to be found in the mark of the defendant. Identification of the essential features is a question of fact, left to the discretion of the Court.
(x) No objective standards are possible, regarding the degree of similarity which is likely to cause deception. It has to be seen from the viewpoint of the purchasers of the goods.
(xi) The test to be applied would depend on the facts of the case. Precedents are valuable only to the extent they specify tests for application, and not on facts.
(xii) On the issue of deceptive similarity, and especially with respect to the aspect of phonetic similarity, English cases are not of relevance. English cases are useful only to the extent they aid in understanding the essential features of trade mark law. The tests for deceptive similarity, which apply in other jurisdictions, may not always apply in India.”

14.3 For the purpose of assessment, it may be useful to dwell on the two rules often used in trademark jurisprudence and often cited in conjunction i.e. ‘anti-dissection rule’ and ‘dominant mark rule’. In Phonepe (supra), this Court also telescoped the principles relating to anti-dissection and dominant mark, reproduced as under:
“23. The prima facie merits of the case of the plaintiff can be gauged on the following five principles:

(i) A registered trade mark cannot, therefore, be dissected, and exclusivity claimed in respect of part thereof.

(ii) If, however, part of the registered trade mark is dominant, or is its essential feature, imitation thereof can constitute a basis to claim infringement.

(iii) Exclusivity cannot be claimed of descriptive, or generic, marks, or parts of marks.

(iv) This principle cannot be avoided by merely misspelling the descriptive word, or descriptive part of the mark.

(v) This principle would, however, not apply where the descriptive, or generic, mark, or part of the mark, has acquired distinctiveness, or a secondary meaning, invariably identifying the mark as belonging to the plaintiff.”

14.4 In this regard, reference is also made to the decision of South India Beverages (supra), which is elaborated as under:
14.4.1 A Division Bench of this Court in dealing with deceptive similarity in relation to ice cream between plaintiff’s trademark ‘HAAGEN-DAZS’ and that of defendant’s mark ‘D’DAAZ’, analysed these two rules and held that these are not antithetical to one another and if viewed in a holistic perspective, they complement each other. Para 21 of South India Beverages (supra), is instructive in this regard and is extracted as under:

“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.”
(emphasis added)
14.4.2 In the said decision, the following was held in relation to identical products, which is extracted as under:

“39. It is also a settled proposition of law that where products are virtually identical, as they are in the present case, ‘the degree of similarity in the marks necessary to support a finding of infringement is less than in the case of dissimilar, non-competing products.”

(emphasis added)
14.4.3 In adumbrating a test relating from the point of view of a consumer, the Division Bench in the said decision, observed as under:
“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.
51. With a view to further foster our understanding of the concept of similarity and likelihood of confusion arising in trademark jurisprudence, we may profitably take cue from the analogous principle of ‘observability’ which is applied in the context of copyright laws.
52. The ‘ordinary observer’ test is applied to determine if two works are substantially similar. The Court will look to the response of an ‘average lay observer? to ascertain whether a copyright holder’s original expression is identifiable in the allegedly infringing work 274 F.2d 487 (2nd Cir. 1960) Peter Pan Fabrics Inc. v. Martin Weiner Corp. Since it is employed to determine qualitative and quantitative similarity in visual copyright work, the said test can also be usefully applied in the domain of trademark law as well.”
(emphasis added)
14.4.4 For the purposes of this decision, it is therefore, underscored that the dominant mark rule is significant and applicable. In this regard, the Division Bench holds as under:
“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.
…

26. Dominant features are significant because they attract attention and consumers are more likely to remember and rely on them for purposes of identification of the product. Usually, the dominant portion of a mark is that which has the greater strength or carries more weight. Descriptive or generic components, having little or no source identifying significance, are generally less significant in the analysis. However, words that are arbitrary and distinct possess greater strength and are thus accorded greater protection.[174 F. Supp. 2d 718, 725 (M.D. Tenn. 2001) Autozone, Inc. v. Tandy Corporation]”
(emphasis added)

14.5 What is being stressed for the purposes of our determination is that a comparative analysis of both these marks would show that ‘SMITH’, which is a word of uncommon usage in India generally, is clearly the dominant part of the marks. Defendants’ contention that ‘AO’ is the dominant part of the mark does not find merit with this Court. ‘AO’ is largely incongruous with no definitive meaning or recall, while ‘SMITH’ is much more specific, has a definite resonance and familiarity, being obviously a name used by persons as well as a suffix for various workers such as blacksmith, ironsmith, goldsmith, etc. Defendants’ explanation that ‘SMITH’ was the name of the son of the proprietor, has not been supported by any evidence or documents and therefore, cannot be accounted for. Even, the manner in which ‘SMITH’ is depicted in plaintiffs’ mark and defendants’ mark, has an equal play alongside ‘AO’ and ‘STAR’, respectively and is certainly not minor or subservient to the other part of the mark. It has been held by this Court in Vasundhra Jewellers Pvt. Ltd. v. Kirat Vinodbhai Jadvani & Anr., 2022 SCC OnLine Del 3370, that examining the dominant part of the trademark for the sake of comparison is for the purpose of determining whether marks are deceptively similar when viewed as a whole.
14.6 Reliance may be placed on Under Armour, INC v. Aditya Birla Fashion & Retail Ltd., 2023 SCC OnLine Del 2269, where it has been held that an average purchaser does not retain all the details of the mark but rather the mental impression of the mark that it creates in totality.  It was reiterated, that it has to be seen whether from a point of view of a customer with average intelligence and imperfect recollection, there exists a possibility of a feeling, that there could be an association between the two marks. Reference was also made in the said decision to the landmark decision of Amritdhara Pharmacy v. Satya Deo Gupta, 1962 SCC OnLine SC 13, wherein the Hon’ble Supreme Court, while applying the ‘Pianotist test’, culled out certain principles (commonly referred to as ‘Amritdhara principles’) and held as under:

“You must take the two words. You must Judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.”

“For deceptive resemblance two important questions are: (1) who are the persons whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that it differs from the mark on goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection.”
(emphasis added)

14.7 As regards the burden of proof on the other ‘SMITH’ marks available on the register, plaintiffs’ counsel has rightly placed reliance on Pankaj Goel (supra) and Dr. Reddy’s (supra), which have held that the onus is on the defendant to show significant business turnover by third party users of similar marks or that they posed a threat to plaintiff’s distinctiveness. Further, that plaintiff is not expected to take action against infringement, which does not cause prejudice to it.
14.8 The issue of association also comes to fore, considering that there was a prior adoption and extensive use of the mark by plaintiffs. This aspect has been considered in Shree Nath Heritage Liquor Pvt. Ltd. v. M/s. Allied Blender and Distillers Pvt. Ltd., 2015 SCC OnLine Del 10164, noting that when a person knows that the mark in question does not originate from the senior user but the senior mark is called to mind, then it’s a step before confusion. If on the other hand, the consumer is in a state of wonderment if there’s a connection between the two marks, then that is confusion.
14.9 Owing to the fact that defendants have been using a different mark namely ‘Aero Star’ before adopting ‘STAR SMITH’ in 2020 and ‘Star Enterprises’ prior to 1990, it is obvious that they had predilection for the ‘STAR’ mark and certainly not for the ‘SMITH’ part of the mark. The adoption of ‘SMITH’ in conjunction with ‘STAR’ in 2020 seems prima facie dishonest adoption in order to ride on the goodwill of plaintiffs and cause confusion in the market, particularly on identical goods. The fact that it was being used in electrical products like irons, TVs and fans, would not support defendants’ contention of honest adoption. In fact, it bears out that defendants could have been planning to secure reputation in the geyser industry by using the ‘STAR SMITH’ mark and thereby, expanding to other cognate and allied goods.
14.10 Reliance by defendants’ counsel on Section 17 and 15 of the Act may not be relevant in light of the discussion on the anti-dissection rule and the dominant mark rule, as noted above, read with the parameters of Section 29 of the Act, which is also extracted above.
14.11 As regards any plea that defendants may have by virtue of applying for a trademark, reference may be made to Automatic Electric (supra), where in para 16, it has been held as under:

“16. The defendants got their trade mark “DIMMER DOT” registered in Australia. The fact that the defendant itself has sought to claim trade proprietary right and monopoly in “DIMMER DOT”, it does not lie in their mouth to say that the word “DIMMER” is a generic expression. User of the word “DIMMER” by others cannot be a defence available to the defendants, if it could be shown that the same is being used in violation of the statutory right of the plaintiff. In this connection, reference may be made to the decision of this Court in Prakash Roadline Ltd. v. Prakash Parcel Service (P) Ltd., 1992 (2) Arbitration Law Reporter page 174. Reference may also be made to the decision in P.M. Diesels Ltd. v. S.M. Diesels, 53 (1994) Delhi Law Times 742…”
(emphasis added)

14.12 Moreover, the fact that they had applied for the ‘STAR SMITH’ mark, also shows that defendants really cannot contend that the ‘SMITH’ mark does not have distinctiveness.
15. In view of the above, I.A. No.19011/2022 under Order XXXIX Rule 4 of CPC filed by defendants is not sustainable and is dismissed.
16. Accordingly, injunction issued by this Court vide order dated 3rd August, 2022 in favor of plaintiffs is made absolute. The exceptions in the said order regarding corporate name and domain name of defendants, remain to be adjudicated.
17. Both the applications stand disposed of in the above terms.
18. List before the Joint Registrar on 16th April, 2024 for further proceedings in CS(COMM) 532/2022.
19. Judgment be uploaded on the website of this Court.

ANISH DAYAL
JUDGE
MARCH 22, 2024/sm/na

CS(COMM) 532/2022 1/23