DABUR INDIA LIMITED vs MI LIFESTYLE MARKETING GLOBAL PRIVATE LIMITED & ANR.
$~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. No.
Trademark
Application No. & Date
Class
Status
1.
DABUR RED
4615532; 19/08/2020
3
toothpaste;
toothpowder;
dentifrices
Valid Upto 19/08/2030
2.
DABUR RED (Device)
2847015; 21/11/2014
3
toothpaste
Valid Upto 21/11/2024
3.
DABUR RED (Device)
1547235; 09/04/2007
3
toothpaste
Valid Upto 09/04/2027
4.
DABUR RED TOOTH PASTE
1208783; 24/06/2003
5
medicinal
preparation
included in class 5
Disclaimer: Registration of this trade mark shall give no right to the exclusive use of the Device & Write ups along with RED
Valid Upto 24/06/2033
2. The plaintiffs 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 plaintiffs 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 plaintiffs 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 defendants mark with the plaintiffs 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 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 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 plaintiffs 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 plaintiffs house mark .
16. These are all prominent features of the plaintiffs device marks and it is not really possible to accord, to any one features dominance over the others.
17. While comparing the plaintiffs device marks with the proposed new marks of the defendants, therefore, one has to treat all the individual parts of the plaintiffs marks as equally dominant.
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 plaintiffs 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 plaintiffs 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 plaintiffs 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
Click here to check corrigendum, if any
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.
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.
3 2014 SCC OnLine Del 1953
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