SWISS BIKE VERTRIEBS GMBH SUBSIDIARY OF ACCELL GROUP vs RELIANCE BRANDS LIMITED (RBL)

* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Reserved on: 12th February, 2024
Pronounced on: 04th March, 2024
+ CS(COMM) 25/2023 & I.A. 827/2023
SWISS BIKE VERTRIEBS GMBH SUBSIDIARY OF ACCELL GROUP ….. Plaintiff
Through: Mr. Chander M. Lall, Sr. Adv. with Ms. Manisha Singh, Mr. Abhai Pandey, Mr. Varun Sharma, Ms. Swati Mittal, Ms. Yashi Agrawal, Mr. Gautam Kumar, Mr. Abhinav Bhalla, Mr. Manish Aryan, Ms. Shivani Singh and Mr. Dhruv Tandon, Advs.
versus
RELIANCE BRANDS LIMITED (RBL) ….. Defendant
Through: Mr. Ajay Sahni, Mr. Chirag Ahluwalia and Mr. Mohit Maru, Advs.
CORAM:
HON’BLE MR. JUSTICE ANISH DAYAL

JUDGMENT
ANISH DAYAL, J.
I.A. 827/2023 (under Order XXXIX Rule 1 & 2 CPC)
1. This application has been filed as part of the suit preferred by plaintiff seeking a decree of permanent injunction restraining defendant, and all those under it, from directly or indirectly dealing in products and services under the trademark ‘RALLEYZ’ (‘impugned mark’) or any other trademarks/logo/device/domain name which may be identical or deceptively similar to plaintiff’s trademark ‘RALEIGH’ (‘plaintiff’s mark’), and other attendant reliefs.
2. On 19th January, 2023, this Court issued summons in the suit, and notice in the instant application. Parties have completed their pleadings and submissions of both parties in the instant application have been heard.
3. Plaintiff’s grievance pertains to defendant’s use of the impugned mark, which is claimed to be deceptively similar, including phonetically, to plaintiff’s mark, and is being used for identical goods i.e. bicycles. The comparative tabulation of plaintiff’s mark and the impugned mark as applied to their respective bicycles is extracted below:

4. At the outset, Mr. Chander M. Lall, Senior Counsel for plaintiff, states that defendant has registered, or applied for registration, of the impugned mark in classes other than Class 12 (vehicles, apparatus for locomotion by land, air or water). He states that plaintiff has no objection to the use of the impugned mark in classes other than Class 12, considering that plaintiff’s mark is essentially for bicycles, and parts thereof, which are allocated and classified under Class 12. Therefore, the controversy is focused around use of the impugned mark in Class 12 for various kinds of bicycles.
Submissions on behalf of Plaintiff
5. Senior Counsel for plaintiff has made the following submissions in support of this application:
(i) Plaintiff is a company organized and existing under the laws of Switzerland and is represented herein through its licensee and power of attorney holder, Mr. Rajesh Kalra. Plaintiff is operating the business of cycles internationally, and claims to be the pioneer of cycling in Europe and owns a wide range of bicycle brands including ‘RALEIGH’. Plaintiff claims that its bicycles under the mark ‘RALEIGH’ are available in 50 countries, including India. The Raleigh bicycles are supplied to a large user base, from children’s bikes to city bikes and plaintiff has acquired great reputation for their product. In 1887, Sir Frank Bowden found ‘Raleigh’. Originally the marks were filed in the name of ‘The Raleigh Cycle Company Limited’, which later, due to corporate restructuring, came to be owned by plaintiff.
(ii) In India, the mark was in commercial use since 1939. The website owned and operated by plaintiff is www.raleigh.co.uk, which is accessible to all interested persons across the globe, and was registered in the year 1998. Plaintiff claims that its mark ‘RALEIGH’ is inherently distinctive in nature, having no specific dictionary meaning, and plaintiff has acquired substantial goodwill in trade and in the eyes of the public due to extensive and continuous use for the past several decades.
(iii) Plaintiff’s counsel further submits that the trademarks have been popular in India in relation to bicycles, and its use by the Sen-Raleigh Cycle Factory, Asansol, West Bengal, can be traced back to the pre-independence era (late 1920’s – early 1930’s). A news item dated 03rd February, 2021 has been appended, which narrates the history of plaintiff’s mark and the bicycles.
(iv) It is stated that plaintiff has entered into an exclusive distributorship and license agreement with M/s Naren International (the Indian Licensee) located at Ludhiana, Punjab, permitting them to exclusively manufacture, import, sell, and distribute Raleigh bicycles in India, since 2012. A copy of the latest license agreement dated 20th June 2020, valid till 19th June 2025, has been appended. Thus, plaintiff claims to have sold numerous bicycles since 2012. Copies of invoices from the year 2015 onwards for various years have also been drawn attention to, for Raleigh bicycles.
(v) Plaintiff’s registrations in India in relation to the ‘RALEIGH’ mark in various classes, including Class 12, is tabulated below:

(vi) As per defendant’s claim, the earliest use by defendant, even on a demurrer, of the impugned marks is from December 2021. In fact, the invoices appended by defendant from December 2021 do not have the impugned mark listed in them and the first set of invoices in which the impugned mark appears is August 2022. Plaintiff, therefore, claims rights confirmed by registration under Section 28 of the Trade Marks Act, 1999 (‘the Act’), and has filed the instant suit due to infringement of their registered trademark by defendant under Section 29(1) and 29(2)(c) of the Act.
(vii) It was also pointed out that no plea relating to invalidity of the mark has been raised by defendant under Section 124 of the Act. Senior Counsel for plaintiff, therefore, stressed that as per Section 31 of the Act, registration would be prima facie evidence of validity. In response to the plea taken by defendant that the mark was not being extensively used by plaintiff in India, it was submitted that no steps for removal of the mark under Section 47 of the Act had been taken by defendant for non-use, either. Thus, in this context, the pleas raised by defendant in reply to their application were inconsequential and unsustainable.
(viii) On 17th January, 2023, defendant raised the plea of estoppel before the Court as a preliminary submission. It was submitted that plaintiff cannot claim that defendant’s mark is phonetically similar to plaintiff’s mark since, when plaintiff filed an application for registration of its mark and the Trademarks Examiner raised an objection citing the mark ‘RALLIS’ as being phonetically similar to plaintiff’s mark, plaintiff resisted the same. Countering the above submission, plaintiff’s counsel relies on Madan Lal Kapur v. Subhash Lal Kapur, 2003 SCC OnLine Del 640, to state that the principle of estoppel can only apply inter-se parties and not in relation to third parties. Reliance was also placed on the decision of this Court in CS(COMM) 41/2023 dated 20th April, 2023, titled “Under Armour Inc. v. Aditya Birla Fashion & Retail Ltd.”, especially para 7.3.3 thereof, which is extracted below:
“7.3.3 Clearly, the reply to the FER, even as per the decision in Raman Kwatra, would be a relevant document only where the FER set up the defendant‘s mark as one of the cited marks against the mark asserted by the plaintiff. It is only in that circumstance that the plaintiff‘s response, to the defendant‘s mark having been set up against it, would be a circumstance which the Court would take into consideration as relevant while assessing the plaintiff‘s right to assert its mark. If the defendant‘s mark is cited against the proposed mark of the plaintiff in the FER as a similar mark under Section 11(1)(b), then, unquestionably, the stand adopted by the plaintiff while responding to the FER would be relevant, as it could not adopt a contrary stand, opposing the very same mark of the defendant, in the infringement suit. Any such contrary stand would amount to approbate and reprobate. The principle has no application where the defendant‘s mark, as in the present case, was never put up as a similar mark in the FER, while objecting to the application of the plaintiff for registration of the UNDER ARMOUR mark.”
(ix) Plaintiff had also relied upon the following picture stating that defendant was using the sticker of the British Flag in order to further infringe plaintiff’s mark which had a clear British connection:

However, Mr. Ajay Sahni, Counsel for defendant, categorically stated that the picture probably relates to one-time use and the said sticker is not being used and is not intended to be used on any bicycle product.
Submissions on behalf of Defendant
6. Mr. Ajay Sahni, Counsel for defendant, placed the following submissions in response:
(i) An objection was raised on the fact that the affidavit in support of the plaint was dated 25th October, 2022, whereas the plaint itself showed a date of 19th December, 2022. He stated that the affidavit could not testify/verify the contents of the plaint which had clearly been filed later. This issue had, however, been taken up by the Court on 19th January, 2023 and the Court noted that this objection would not fatally imperil the suit at the stage. Plaintiff was directed to file an affidavit setting out its stand. Accordingly, an affidavit was filed stating that the plaint had been ready for filing on or before 25th October, 2022 but only came to be filed on 19th December, 2022. Senior counsel for plaintiff clarified further that the suit was filed vide diary No.2074774/2022.
(ii) It was vehemently stressed that plaintiff could not be entitled to an injunction under Order XXXIX Rule 1 and 2 of the Code of Civil Procedure, 1908 (‘CPC’) on account of delay in filing the suit. Adverting to the plaint, counsel for defendant submitted that as per the list of dates, plaintiff knew that defendant was continuously selling bicycles under the impugned mark since 2022, though no specific date about plaintiff’s knowledge of the infringement was stated. The plaint having been filed in January 2023 (though plaintiff, as noted above stated that it was filed in December 2022), defendant was already in business since 2021 and had already accrued a turnover of about Rs.14 crores in the said products. The balance of convenience, therefore, was not in favor of plaintiff.
(iii) Further, no irreversible prejudice would be caused to plaintiff considering that defendant, which was part of the Reliance Group of Companies, was well positioned to pay damages in case plaintiff succeeded.
(iv) Counsel for defendant adverted to photographs of various shops which were selling defendant’s impugned product all over India.
(v) Para 23 of the plaint was adverted to, to submit that plaintiff itself had made a statement that a wide range of defendant’s bicycles under the impugned mark were already being sold all over India, both offline and online.
(vi) Cause of action paragraphs in the plaint was adverted to, submitting that plaintiff had itself stated that defendant had not ceased using the infringing mark and was selling its bicycles under the impugned mark all over India. Further, no cease-and-desist notice had ever been sent by plaintiff.
(vii) To substantiate their submission relating to non-use of plaintiff’s mark in India, attention was drawn to the website screenshots filed by plaintiff dated 20th September, 2022, to submit that neither any invoices nor any evidence had been filed by plaintiff to substantiate their prior continuous use argument. Reference to other documents filed by plaintiff was made, to state that plaintiff was doing robust business abroad but its association with India had failed.
(viii) In respect of the license relied upon by plaintiff in favor of M/s Naren International, it was submitted that the said license was of June 2020 and did not support plaintiff’s claim of prior continuous use since earlier.
(ix) Other articles relied upon by plaintiff were referred to show that there was no evidence on record that plaintiff’s products had an all-India presence.
(x) Relying on the invoices filed by plaintiff, defendant’s counsel argued that there was no evidence on record to show that they would have achieved a very high turnover, as claimed.
(xi) Price of plaintiff’s products was drawn attention to, contending that these were premium bicycles and a customer in that category would be sophisticated and discerning and would not be confused between marks which were dissimilar in any event.
(xii) Aside from the registrations in favor of plaintiff, defendant’s counsel submitted that no Legal Proceedings Certificate had been filed to show that they were the owners of the said marks and the ones filed were either of 1968 or 1982.
(xiii) It was submitted that defendant’s bicycles were also sold under the brand name ‘Reliance’ combined with various sub-brands as was evident from the following pictures:

(xiv) It was submitted that the impugned mark ‘RALLEYZ’ was used by defendant very clearly on the frame as well as the front fork, and there was no attempt to ride on plaintiff’s goodwill in any manner or to hide the said mark as has been claimed by plaintiff. The following picture was adverted to by defendant’s counsel for this purpose:

(xv) Attention was drawn to defendant’s turnover regarding these bicycles sold under the impugned mark, which was certified by a Chartered Accountant. The figure from 2021 till the end of 2022 amounted to about Rs.14.08 crores with 17, 574 bicycles being sold. Invoices from December 2021 were drawn attention to. It was stated that, at that stage, the bicycles were being sold under the impugned mark but the invoices showed a code number along with the sub-brands which continued to be used even later. Subsequent invoices from August 2022 onwards did reflect the name of the impugned mark on the sale receipts of the products.
(xvi) Reliance was placed on the certificate of an authorized signatory of Hamleys of London Limited to state that Hamleys had been involved in the designing of bicycles used by children as well as adults, which were being offered for sale by defendant under the impugned mark.
(xvii) Reliance was placed on Gora Mal Hari Ram v. Bharat Soap and Oil Industries, 1983 SCC OnLine Del 42, Wippermann JR GMBH v. Wipperdrive Engineering, ILR (1977) 1 Delhi 389, Colgate Palmolive (India) Ltd. v. Hindustan Lever Ltd.d, (1999) 7 SCC 1, M Gurudas & Ors. v. Rasaranjan & Anr., (2006) 8 SCC 367, essentially to support the submission that once defendant had developed a reputation in a business and had sold products by the time the suit was preferred, as opposed to a situation where defendant was yet to start his enterprise, interlocutory injunction would not be granted.
Rejoinder on behalf of Plaintiff
7. Senior Counsel for plaintiff, countering the submissions made by defendant’s counsel, submitted in rejoinder as under:
(i) On the issue of delay, it was reiterated that the suit was filed on 19th December, 2022 and this was within one year of December 2021, which is when defendant claims use of the said mark by them. It was also reiterated that defendant failed to produce any invoice proving use of the impugned mark on its bicycles for the period prior to August 2022.
(ii) Reference was made to the decision in M/s. Hindustan Pencils Pvt. Ltd. v. M/s India Stationery Products Co. and Anr., AIR 1990 Delhi 19, where a Single Judge of this Court has held, in para 26 and 27, that delay would not disentitle a plaintiff from being granted an interlocutory injunction.
(iii) Reliance of defendant’s counsel on the decision in Wippermann (supra) was distinguished on the basis that it was a case of acquiescence and not laches which seemed to have disentitled plaintiff from grant of interlocutory injunction. For this, reliance was placed on Daimler Benz Aktiegesellschaft v. Hybo Hindustan, AIR 1994 Delhi 239, where in para 13, while noting reliance on Wippermann (supra) by counsel for defendant in that case, it was noted that the applicant in Wippermann (supra) had acquiesced to the respondent carrying on its business under the offending mark for more than five years.
(iv) Regarding defendant’s counsel’s submission that defendant would be in a position to pay damages if at all the issue was finally adjudicated in favor of plaintiff, senior counsel for plaintiff stated that the ability to pay could not possibly be a legal consideration for disentitling plaintiff to a statutory right of interlocutory injunction.
(v) Argument of “sophistication of buyer” was addressed by adverting to the decision of this Court in Baker Hughes Limited v. Hiroo Khushalani & Anr., 1998 (V) AD (Delhi) 525, where this issue has been discussed. The Court in this decision observed that initial confusion is likely to arise even amongst sophisticated and knowledgeable purchasers under a mistaken belief that there is some sort of association between the products of two different companies with similar trademarks. Sophistication of a buyer was no guarantee against likely confusion. It was stated that the said decision had been upheld by the Hon’ble Supreme Court in Baker Hughes Ltd. and Anr. Vs. Hiroo Khushlani and Anr. (2004) 12 SCC 628, after it had been reversed by the Division Bench of Delhi High Court.
(vi) Reliance was placed on the decision in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980, where it was observed that if essential features of the trademark of plaintiff had been adopted by defendant, the fact that the getup or the packaging showed marked differences or indicated a different trade origin, would be immaterial in a case of infringement as opposed to in a case of passing off. The Hon’ble Supreme Court had held that action for infringement is a statutory remedy and would have to be tested on different bench marks than that of passing off. Reliance in this regard was, therefore, on Section 29(1) of the Act which delineated the scope of infringement of a registered trademark.
(vii) Regards the allegation of non-use of the mark, it was contended that for a registered trademark proving use was not required, particularly when no steps for removal had been taken by defendant under Section 47 of the Act or in the absence of any challenge to validity as a defence under Section 124 of the Act. Moreover, Section 29 of the Act was an exception to Section 28 of the Act which conferred rights due to registration of a mark and which was not prefaced on use of a mark. In any event, plaintiff had given enough evidence to substantiate that they had been a continuous user of the said mark.
(viii) Reliance was placed on the decision of the Hon’ble Supreme Court in Cycle Corporation of India v. T.I. Raleigh Industries Pvt. Ltd., (1996) 9 SCC 430, where aspects of the use of the mark ‘RALEIGH’ has been noted in the facts of that case. It has been noted that there was a registered trademark ‘RALEIGH’ and an agreement was entered into with Sudhir Kumar Sen on 03rd November, 1948 to render technical knowhow to the Indian company to manufacture bicycles under the ‘RALEIGH’ trademark. It was further contended that the rectification petition in relation to plaintiff’s mark ‘RALEIGH’ had been disallowed in Cycle Corporation of India (supra) and the Hon’ble Apex Court observed that there was no discontinuance or non-use of the trademark by the respondent to give a benefit to the petitioner for rectification.
(ix) Reliance was placed on various invoices of plaintiff dating back to 2015 of Naren International which would distinctly bear out that bicycles had been sold in India, which in any case would predate defendant’s best-case of 2021 user. A newspaper report relating to the license to Naren International would also bring out that it had been originally granted in 2012.
(x) Plaintiff’s case was pitched under Section 29(2)(c) of the Act being that for identical goods and services with identical marks or at best Section 29(2)(b) of the Act with identical goods but similar marks.
(xi) Considering that there was no user claimed prior to 2021, even Section 34 of the Act would not come to the rescue of defendant, which could have provided benefit to defendant in case there was a user prior to the first use by plaintiff of the mark or of the registration of plaintiff’s mark.
(xii) With regard to the submission by defendant’s counsel that there was no Legal Proceedings Certificate was filed in order to prove the ownership of the mark by plaintiff, senior counsel for plaintiff pointed to the various registered search documents which had been appended in relation to various trademarks registered in favor of plaintiff which would show that they were in the name of plaintiff itself. There was no quarrel on the part of defendant to the search reports in relation to plaintiff’s trademarks. Senior Counsel for plaintiff drew attention to paras 17 and 21 of the Written Statement filed by defendant in this regard, to submit that plaintiff’s ownership of their mark was not refuted by defendant.
Analysis and Conclusion
8. The said suit has been filed alleging infringement by defendant of plaintiff’s registered trademark. Before dealing with various contentions of the parties, in order to establish a prima facie case in favor of plaintiff to sustain their application under Order XXXIX Rule 1 and 2 of the CPC, a comparative analysis of plaintiff’s and defendant’s mark must be made.
9. Comparison is between plaintiff’s mark ‘RALEIGH’ and the impugned mark ‘RALLEYZ’. Both these marks are used on identical goods i.e. bicycles and parts thereof. To assess whether there is infringement as delineated under Section 29 of the Act, the consideration at this stage is whether the marks are similar or identical.
10. The word ‘identical’ is used usually as an adjective or as a noun. It derives its source from the word ‘identity’, which is etymologically derived from the Latin ‘idem’. ‘Identity’ is defined by the Oxford English Dictionary as “the quality or condition of being identical in every detail; absolute sameness”. The word ‘similar’, on the other hand, is also used as an adjective and as a noun, deriving its source from the French ‘similaire’ or Latin ‘similaris’, and as per the Oxford English Dictionary, means “having a resemblance or likeness; of the same nature or kind”. These are the two operative words which imbue trademark jurisprudence, particularly, Section 29 of the Act.
11. In all cases of infringement, the Act invites a comparative assessment of two competing marks. Such comparison is based on concepts of ‘identity’ and ‘similarity’. If ‘identical’ is taken to mean “absolutely the same” then any mark which is marginally different from the other competing mark would naturally be assessed in the silo of ‘similarity’. While ‘identity/identical’ would be an objective criterion, ‘similar/similarity’ necessitates subjective analysis.
12. In the realm of subjective analysis, Section 29 of the Act further introduces three more concepts to guide in assessment viz. “deceptively similar”, “likely to cause confusion” and “likely to have an association”. Shorn of the verbiage used in Section 29 of the Act, the three concepts can be usefully synopsized as under:
(i) Deceptive similarity: This entails an “intent to deceive”; requires that facts presented by parties be sifted to arrive at a conclusion that defendant adopted a very similar mark to deceive consumers; and is defined under Section 2(h) of the Act as “near resemblance likely to deceive or cause confusion”.
(ii) Confusion: ‘Confusion’ is a state of mind which obliterates the distinction of elements presented before a person.
(iii) Association: ‘Association’ involves a mental connection between related ideas.
13. These aspects have been extensively elaborated upon and discussed in numerous decisions of the Courts as well as in commentaries on trademark law. The attempt here is to understand these concepts fundamentally. Simply put, an assessment of similarity will involve the support of either of these three concepts of ‘deceptive similarity’, ‘confusion’ and ‘association’.
14. Without splitting hairs on the exact placement of these concepts in Section 29 of the Act, it is evident that each of these concepts used for an assessment of similarity will, necessarily, give color to the other, and will not be mutually exclusive to each other.
15. A useful articulation of these inextricably intertwined principles and concepts is found in the opinion of N. Rajagopala Ayyangar, J. in Kaviraj Pandit (supra), which continues to be cited and relied upon by Courts. Relevant paragraphs thereof are extracted below:
“28. The other ground of objection that the findings are inconsistent really proceeds on an error in appreciating the basic differences between the causes of action and right to relief in suits for passing off and for infringement of a registered trade mark and in equating the essentials of a passing off action with those in respect of an action com plaining of an infringement of a registered trade mark. We have already pointed out that the suit by the respondent complained both of an invasion of a statutory right under Section 21 in respect of a registered trade mark and also of a passing off by the use of the same mark. The finding in favour of the appellant to which the learned counsel drew our attention was based upon dissimilarity of the packing in which the goods of the two parties were vended, the difference in the physical appearance of the two packets by reason of the variation in the colour and other features and their general get-up together with the circumstance that the name and address of the manufactory of the appellant was prominently displayed on his packets and these features were all set out for negativing the respondent’s claim that the appellant had passed off his goods as those of the respondent. These matters which are of the essence of the cause of action for relief on the ground of passing off play but a limited role in an action for infringement of a registered trade mark by the registered proprietor who has a statutory right to that mark and who has a statutory remedy for the event of the use by another of that mark or a colourable imitation thereof. While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods” (Vide Section 21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant’s mark is likely to deceive, but where the similarity between the plaintiff’s and the 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 the plaintiff’s rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
29. When once the use by the defendant of the mark which is claimed to infringe the 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. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff’s registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide Section 21). 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”. But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks — the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff’s mark. The purpose of the comparison is for determining whether the essential features of the plaintiff’s trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.”

16. Principles enunciated in the above paragraphs are summarized below:
(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.
17. All these elements articulated by Ayyangar, J., continue to form the fundamental bedrock of an assessment of trademark infringement. Embellishments, analysis, articulation, substantiation aside, the assessment is in a well-defined matrix. It is the element of subjectivity which invites these additional supplementations by Courts. However, as most case law on the subject would bear out, the final plank is always that matters need to be assessed on a case-to-case basis, therefore, the dive now into the facts of the matter.
18. Clearly, plaintiff’s and defendant’s marks, at first blush, are not ‘identical’ since one is ‘RALEIGH’ and the other is ‘RALLEYZ’. Whether they are similar has to be assessed on the three concepts discussed above – “deceptive similarity”, “likely to cause confusion” and “likely to have an association”. As per Kaviraj Pandit (supra), similarity can be assessed between the marks either visually, phonetically or otherwise. Axiomatically, something expressed on any medium as a word or as an image can be perceived by the senses either through sight or speech, which is why the visual or phonetic tests. Evidently more than visual similarity, the dominant issue here is of phonetic similarity, considering both words in contention roll off the tongue similarly.
Phonetic similarity between plaintiff’s mark and the impugned mark
19. ‘RALEIGH’ is clearly a proper noun, a distinctive word, that traces its root to its origins in the English city of Nottingham (as per plaintiff). ‘RALLEYZ’ on the other hand is clearly a constituted word, with no dictionary meaning assigned to it. Even though these two marks are ex facie phonetically similar, it would be instructive to indulge in a bit of phonetic dissection, to cover all bases of analysis.
20. At first blush, the word ‘RALEIGH’, by virtue of the letters ‘eigh’ may invite a pronunciation somewhat akin to the word ‘sleigh’ which, as per the pronunciation key in the Oxford English Dictionary, is / (sle?) /, with a pronunciation in the nature of ‘convey’.
21. However, according to the online Cambridge English Dictionary, the word ‘RALEIGH’ is to be pronounced as ‘/?r??.li/’. Thus, the word ‘RALEIGH’ may also be pronounced as “rah-lee”, thereby being somewhat akin to “rally”, with pronunciation in the nature of ‘keys’. A useful sound-by- sound pronunciation of the word is extracted below from https://dictionary.cambridge.org/dictionary/english/raleigh?q=RALEIGH:

22. Defendant’s mark ‘RALLEYZ’, after the first set of syllables infused in ‘ral’ introduces letters ‘eyz’, and also invites a pronunciation as for ‘rally (s)’ in the nature of ‘keys’. This is so stated by Counsel for defendant too. However, by using an ‘eyz’ formulation, the pronunciation could easily be as in ‘convey(s)’. Therefore, the word ‘RALLEYZ’ could either be pronounced akin to ‘keys’ or akin to the word ‘convey(s)’ and there can be no determination or fixation on how an Indian consumer may pronounce the same.
23. Therefore, both ‘RALLEYZ’ and ‘RALEIGH’ involve similar kinds of variations in their pronunciation and each mirrors the other, with no real distinction and difference.
24. Moreover, shorn of the technicalities of dictionary pronunciation, what is relevant is whether an Indian consumer would find these words to be phonetically deceptively similar. In a world populated by millions of accents, vernacular, local languages, and dialects, and a country as diverse as ours, it cannot past muster, as contended by defendant’s counsel, that the two marks ‘RALEIGH’ and ‘RALLEYZ’ are not phonetically similar, and that ‘RALEIGH’ will always be pronounced as in “sleigh” and ‘RALLEYZ’ will always be as in “keys”. The brief pronunciation analysis given above, does not favor this phonetic distinction. In fact, it’s quite otherwise. Defendants’ mark is constituted in such a manner so as to phonetically sit very close, if not together, and squeezed with, plaintiffs’ mark. It is clearly in the core zone of deceptive similarity, likely to cause confusion and likely to have an association with plaintiff’s mark.
25. In K.R. Chinna Krishna Chettiar v. Sri. Ambal & Co. and Ors., (1969) 2 SCC 131, the Hon’ble Supreme Court emphasized that Courts must consider the usage of words in India when considering the issue of phonetic similarity between rival marks, in the following paragraph:
“10. Mr Sen stressed the point that the words Ambal and Andal had distinct meanings. Ambal is the consort of Lard Siva and Andal is the consort of Ranganatha. He said that in view of the distinct ideas conveyed by the two words a mere accidental phonetic resemblance could not lead to confusion. In this connection he relied on Venkateswaran Law of Trade and Merchandise Marks, 1963 Ed., p. 214, Kerly Law of Trade marks and Trade Names, 9th Edn., p. 465, Article 852 and the decision Application by Thomas A. Smith Ltd., to Register a trade mark. [1913 30 RPC 363] In that case Neville, J., held that the words “limit” and “summit” were words in common use, each conveying a distinctly’ definite idea; that there was no possibility of any one being deceived by the two marks; and there was no ground for refusing registration. Mr Sen’s argument loses sight of the realities of the case. The Hindus in the south of India may be well aware that the words Ambal and Andal represent the names of two distinct Goddesses. But the respondent’s customers are not confined to Hindus alone. Many of their customers are Charistians, Parsees, Muslims and persons of other religious denominations. Moreover, their business is not confined to south of India. The customers who are not Hindus or who do not belong to the south of India may not know the difference between the words Andal and Ambal. The words have no direct reference to the character and quality of snuff. The customers who use the respondent’s goods will have a recollection that they are known by the word Ambal. They may also have a vague recollection of the portrait of a benign goddess used in connection with the mark. They are not likely to remember the fine distinctions between a Vaishnavite goddess and a Shivaite deity.”
(emphasis added)
26. Dr. D.Y Chandrachud J. (as the Hon’ble Chief Justice of India then was), in a decision of the Division Bench of the Bombay High Court in Encore Electronics Ltd. v. Anchor Electronics & Electircals Pvt. Ltd., 2007 SCC OnLine Bom 147, made similar observations in the following paragraph:
“8. The phonetic similarity between ‘Anchor’ on the one hand and “Encore”, on the other, is striking. The two marks are phonetically, visually and structurally similar. The overall impression conveyed by a mark as a whole, has to be assessed in evaluating whether the mark of the defendant is deceptively similar to the mark of the plaintiff. Phonetic similarity constitutes an important index of whether a mark bears a deceptive or misleading similarity to another. The phonetic structure indicates how the rival marks ring in the ears. Courts in a country such as ours whose culture is enriched by a diversity of languages and scripts have to consider how the rival marks are spelt and pronounced in languages in which they are commonly used. Counsel for the defendant submits before the Court that while ‘Encore’ is a word of French origin, ‘Anchor’ is a word of English usage and the pronunciation of the two words must differ. The submission misses the point. The case before the Court is not about how an Englishman would pronounce ‘Anchor’ or a Frenchman would pronounce ‘Encore’. The Court must consider the usage of words in India, the manner in which a word would be written in Indian languages and last but not least, the similarity of pronunciation if the rival marks were to be pronounced in languages prevalent in the country where the marks are used. The manner in which the ‘a’ as in ‘anchor’ is pronounced by an Englishman on Notting Hill may well appear to a discerning traveller to be distinct from a Frenchman’s pronunciation of the ‘e’ in ‘encore’ on a fashionable by lane near Champs Elysees. That is no defence to an action in our courts for passing off: For the ordinary consumer in Ahmedabad and her counterpart in Mumbai’s shopping streets, the ‘a’ in ‘anchor’ and the ‘e’ in ‘encore’ are perilously and deceptively similar. The Court must assess the make up of an Indian consumer and, associated with that, the cultural traits that underlie the spelling and pronunciation of words. The case of the plaintiff is that in Gujarati as well as in Hindi, there is not even a subtle distinction between the manner in which ‘Anchor’ and ‘Encore’ would be pronounced and we find merit in the submission. The overall impact in terms of phonetical usage is one of striking similarity. The test is not whether a customer who wishes to buy the product of the plaintiff is likely to end up buying the product of the defendant. The test is whether the ordinary customer is likely to be led to believe that ‘Encore’ is associated with the mark and the trading style of the plaintiff. The phonetical, visual and structural get up of the two words is so strikingly similar as to lead to a likelihood of deception. The question of deception is a matter for the Court to determine, particularly at the interlocutory stage. The judgment of the learned Single Judge has been criticized on the ground that the Court attempted to break up the words contained in the rival marks. We do not share that perception. What the learned Single Judge has done in the present case is to compare the two rival marks and to emphasize a striking similarity between the marks with reference to the common features of the rival words. That is a permissible exercise and the judgment of the learned Single Judge does no more than that.”
(emphasis added)

27. The said decision has also been cited approvingly by the Coordinate Bench of this Court in Indian Hotels Company Ltd. v. Ashwajeet Garg, 2014 SCC OnLine Del 2826, while comparing rival marks ‘JIVA’ and ‘ZIVA’. Pronunciations vary from individual to individual. Therefore, slight change of scansion may be immaterial in what is otherwise phonetically similar.
28. It would be difficult, therefore, to not grant the benefit of prima facie finding on a phonetic similarity between the two marks. At this juncture, it is apposite to recall the following words by Kekewich J.’s in the Chancery Division’s decision in Slazenger & Sons v. Feltham & Co., (1989) 6 RPC 53:
“It is an uncommonly small point, I know, and I repeat I quite believe many other persons might come to a different conclusion to myself; but I think that there is sufficient nearness, sufficient neighbourhood, in the one word to the other, to justify me in coming to the conclusion that it is calculated to deceive, I shall, no doubt, be assumed to conclude—and I make no secret that I do conclude that that finding is at least consistent with the honesty of the case.”
(emphasis added)

29. The goods (bicycles) being identical in Class 12, Section 29 of the Act would, consequently, get attracted. Following Kaviraj (supra) no further evidence would be required to establish that plaintiff’s right is being violated by defendant. However, considering that issues were raised on various other points, I would prefer to advert to all these issues in order that there is no lack of clarity in the overall assessment for an interim injunction, which also requires determination on balance of convenience and irreversible prejudice.
Prior Use by Plaintiff
30. ‘RALEIGH’ bicycles have a long-established history, going back to the early years of the 20th Century. Defendant cannot possibly have any dispute on the same and has not presented any either.
31. The historical fact, as presented by plaintiff, is that while the ‘RALEIGH’ bicycle was conceptualized in the last years of the 19th Century, it came into popular commercial renown in the first few decades of the 20th Century. The list of registered trademarks itself, as extracted above, would bear out that the various marks, both word and device, are of the years 1939, 1944, 1942 and 1951, all in Class 12. Plaintiff appears to have registrations for ‘RALEIGH’ in multiple jurisdictions including the European Union, United Kingdom, Switzerland, Mexico, Canada, France, Germany, Australia, New Zealand etc., since as early as the 1900’s.
32. In India, plaintiff’s mark appears to have been used since 1930s. Newspaper reports appended with the plaint reflect the long history of plaintiff’s mark. According to plaintiff, ‘RALEIGH’ bicycles were manufactured in Siliguri, India in the late 1920’s – early 1930’s by Sen-Raleigh Cycle Factory, Asansol (West Bengal). This submission is substantiated by the news report dated 3rd February, 2021, appended to the plaint.
33. Defendant’s claim for use is from December 2021, however, the set of invoices for sale of bicycles which bear the mark ‘RALLEYZ’ is only from August 2022. Though, defendant’s counsel submits that defendant was selling bicycles using the impugned trademark since December 2021, but the mark was not reflected in invoices. This assertion was made by defendant’s counsel to establish prior use. However, in light of the historical facts noted above, such assertion, even if substantiated, would not come to defendant’s rescue. Plaintiff prima facie appears to have been in the business of bicycles for more than a century, and has established prior use, at least, at the interim stage.
Allegation of Non-use
34. Defendant’s counsel brought to attention various websites, screenshots and newspaper articles to assert that plaintiff did not have an all-India presence and aside from the news of the license granted in favor of M/s Naren International in June 2020, there was no evidence that the mark had been used earlier. In rejoinder, plaintiff’s invoices from 2015 had been presented as well as decision of the Hon’ble Supreme Court in Cycle Corporation of India (supra) in 1996 which narrates some aspects of the history of plaintiff’s mark and its presence in India. In any event, it is an admitted position that defendant has not filed for rectification of plaintiff’s mark on the ground of non-use and, therefore, we need not be dwelling upon this any further. In this regard, reliance is placed on the decision of a Coordinate Bench of this Court in Foot Locker Retail v. Geeta Kewalani, 2023 SCC OnLine Del 616. In the said decision, the subject mark was registered in favor of plaintiff since 1988, and the registration was valid and subsisting at the time of the decision. No application for rectification of the subject mark was preferred by defendant therein. In light of the same, the Court held as follows:
“25. The fact that the plaintiff has not used the mark for 30 years after it was registered in the plaintiffs favour cannot be a ground to hold that there is no infringement, as the mark is valid and subsisting even as on date.” 
Principle of estoppel
35. Defendant’s counsel pressed estoppel against plaintiff. It was submitted that plaintiff cannot claim that defendant’s mark is phonetically similar to plaintiff’s mark as, when plaintiff filed an application for registration of its mark, and the Trademarks Examiner raised an objection citing the mark ‘RALLIS’ as being phonetically similar to plaintiff’s mark, plaintiff resisted the same by stating that there is no similarity between ‘RALEIGH’ and the cited mark ‘RALLIS’. To this, plaintiff’s contention that estoppel can only apply inter se parties and not in relation to third parties finds favor with this Court. For this, the reliance on Madan Lal Kapoor (supra) and Under Armour (supra) is instructive. Reference to the principle of estoppel contained in Section 115 of the Evidence Act, 1872 would also support inter se applicability. The said provision is extracted below with emphasis added in order to underscore this issue:
“Section 115: When one person has, by his declaration, act or omission, intentionally caused or permitted another person to believe a thing to be true and to act upon such belief, neither he nor his representative shall be allowed, in any suit or proceeding between himself and such person or his representative, to deny the truth of that thing.”
(emphasis added)
Sophistication of User
36. Defendant claims that due to the price range in which plaintiff’s and defendant’s bicycles are sold, the end user will necessarily be a sophisticated and discerning buyer, and therefore, there will be no confusion between the marks. However, the Court in Baker Hughes (supra) inter alia held that phonetic similarity would be likely to cause “initial confusion” even amongst sophisticated and knowledgeable purchasers under a mistaken belief that there is some association between products of two different companies. Sophistication of a buyer would be too tenuous an element to assess in order to dilute the aspect of a strong prima facie case in favor of plaintiff.
Requirement of a Legal Proceedings Certificate
37. Defendant’s counsel submits that no Legal Proceedings Certificate was produced by plaintiff to support the registration in its name. In this regard, it would be useful to refer to the decision by a Division Bench of this Court in Maan Pharmaceuticals v. M/s Mind Wave Healthcare, FAO(COMM) 78/2022, dated 12th September, 2022, where it was held that the statute does not mandate that a Legal Proceedings Certificate be filed, and absence of the same would not proscribe plaintiff from exercising its statutory right against infringement. Relevant paragraphs from the said decision are extracted below:
“34. The contention of the learned counsel for MAAN with regard to non-filing of the Legal Proceedings Certificate, has been rightly dealt with by the learned Trial Court. The said plea has been taken on the strength of the decision passed by a Single Bench of this Court in the case of Amrish Aggarwal v. Venus Home Appliances Pvt. Ltd. (supra). In the said case, this Court had passed certain directions in order to deter frivolous litigations and for the purpose that the time of the courts is not wasted due to non-filing of relevant documents. It was felt that a Legal Proceedings Certificate is an important document, which should be placed before the Court at the time of deciding preliminary applications. It is to be noted that there is no such requirement in the statute that a suit for infringement will not be entertained, if not accompanied by a Legal Proceedings Certificate.
…..
38. Though a Legal Proceedings Certificate is an important document, which should be placed before the court at the time of deciding preliminary applications, the same, however, will not take away the statutory right of a plaintiff to seek injunction, which it is otherwise entitled to.”
(emphasis added)
Delay in filing the suit
38. Defendant’s counsel submitted that delay in filing of the suit and the injunction application would preclude any relief in favor of plaintiff. However, the facts are that while the suit was filed in December 2022, the first invoice, even as per defendant, of selling their products under the trademark ‘RALLEYZ’, is of August 2022, even though use is claimed since December 2021. In this situation, it is not as if the delay was extraordinary. Even otherwise, the Hon’ble Supreme Court in Midas Hygiene v. Sudhir Bhatia, (2004) 3 SCC 90, has observed in para 5, that in cases of infringement of trademark or copyright, mere delay in bringing action is not sufficient to defeat the grant of injunction, and the law on the subject is well settled.
Use of the ‘Reliance’ sub-brand by Defendant
39. It was submitted that defendant’s bicycles were also sold under the brand name ‘Reliance’ combined with various other sub-brands. As per Kaviraj Pandit (supra), if the essential features of plaintiff’s trademark have been adopted by defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark, would be immaterial. Therefore, in the present case as well, since the impugned mark is prima facie phonetically similar to plaintiff’s mark, the use of any sub-brand is inconsequential.
Defendant’s sales and damages in lieu of injunction
40. Defendant’s counsel submits that once a defendant develops a reputation in business by virtue of selling products prior to the institution of the suit, interlocutory injunction would not be granted. Defendant’s counsel submits that defendant has been selling bicycles under the impugned mark since 2021, with sales of around Rs. 14 crores as of December 2022, therefore, injunction ought not to be granted in the present case. To buttress this argument, reliance was placed on decisions in Gora Mal (supra), Wippermann (supra), Colgate Palmolive (supra), and on the decision in M. Gurudas (supra).
41. None of these decisions come to defendant’s aid. The decision in Gora Mal (supra) was rendered in the context of an unregistered mark, and is inapplicable to the present factual matrix. Further, as submitted by plaintiff’s counsel, in Wippermann (supra), the applicant therein had acquiesced to respondent carrying on its business under the offending mark for more than five years. Therefore, the said decision is also not applicable to the present case.
42. Insofar as the decisions in Colgate Palmolive (supra) and M. Gurudas (supra) are concerned, they reiterate the principal considerations to be weighed by Courts in an application for interim injunction. The relevant paragraph from Colgate Palmolive (supra) is extracted below:
“24. We, however, think it fit to note herein below certain specific considerations in the matter of grant of interlocutory injunction, the basic being non-expression of opinion as to the merits of the matter by the court, since the issue of grant of injunction, usually, is at the earliest possible stage so far as the time-frame is concerned. The other considerations which ought to weigh with the court hearing the application or petition for the grant of injunctions are as below:
(i) extent of damages being an adequate remedy;
(ii) protect the plaintiff’s interest for violation of his rights though, however, having regard to the injury that may be suffered by the defendants by reason therefor;
(iii) the court while dealing with the matter ought not to ignore the factum of strength of one party’s case being stronger than the other’s;
(iv) no fixed rules or notions ought to be had in the matter of grant of injunction but on the facts and circumstances of each case — the relief being kept flexible;
(v) the issue is to be looked at from the point of view as to whether on refusal of the injunction the plaintiff would suffer irreparable loss and injury keeping in view the strength of the parties’ case;
(vi) balance of convenience or inconvenience ought to be considered as an important requirement even if there is a serious question or prima facie case in support of the grant;
(vii) whether the grant or refusal of injunction will adversely affect the interest of the general public which can or cannot be compensated otherwise.”
43. The relevant paragraph from the decision in M. Gurudas (supra) is as under:
“21. While considering the question of granting an order of injunction one way or the other, evidently, the court, apart from finding out a prima facie case, would consider the question in regard to the balance of convenience of the parties as also irreparable injury which might be suffered by the plaintiffs if the prayer for injunction is to be refused. The contention of the plaintiffs must be bona fide. The question sought to be tried must be a serious question and not only a mere triable issue.”
44. Adverting to defendant’s sales figures, as also their readiness and ability to pay damages as a conglomerate, defendant’s counsel, in light of the above decisions, submitted that damages would be an adequate remedy in the present case. However, that is a specious argument having no legal basis. To accept it would mean that an extremely prosperous or a commercially sound defendant would be able to prevent an injunction, merely on the basis of their relative corporate worth and would have a better and higher right to defend an infringement action, than a defendant who does not have such commercial heft. In fact, for this reason itself, it is surprising that defendant being a conglomerate of enormous worth, as stated by their counsel, should adopt a mark so phonetically similar to plaintiff’s mark for identical goods, rather than conceiving something innovative and promoting it to consolidate their reputation.
45. Furthermore, if defendant’s sales figures are to be believed, backed by defendant’s avowed commercial heft, denial of interim injunction in favor of plaintiff, in all likelihood, will obliterate, erode, and efface the existence of ‘RALEIGH’ in India, despite its earliest registration since 1942, use since 1939, and a history that traces back to the pre-independence era. Therefore, weighing the comparative strength of plaintiff’s case as against defendant’s, this Court is of the view that defendant will suffer irreversible prejudice should the injunction be denied, and the same cannot be compensated by damages. The balance of convenience lies in plaintiff’s favor.
Conclusion
46. Accordingly, an interim injunction in favor of plaintiff is granted till the pendency of the suit in the following terms:
Defendant, its partners, officers, agents, distributors, licensees, and all others acting on its behalf, are injuncted from selling and/or offering for sale, advertising, directly or indirectly, dealing with bicycles or bicycle related services and products under the impugned mark ‘RALLEYZ’, or any other mark deceptively similar to plaintiff’s mark ‘RALEIGH’.
47. The present application is allowed in the above terms, and is disposed of.
48. Judgment be uploaded on the website of this Court.

(ANISH DAYAL)
JUDGE
MARCH 04, 2024/MK

CS(COMM) 25/2023