VAN TIBOLLI & ANR. vs K. SRINIVAS RAO & ANR.

$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 20 February 2023
Pronounced on: 26 December 2023

+ CS(COMM) 339/2021 & I.A. 8970/2021

VAN TIBOLLI & ANR. ….. Plaintiffs
Through: Mr. Gaurav Barathi, Ms.Muskan Arora and Mr. Vishal Shrivastava, Advs.

versus

K. SRINIVAS RAO & ANR. ….. Defendants
Through: Ms. Joshini Tuli, Mr. Joginder Tuli, Mr. Shrikant Sharma, Mr. Ishu Sharma and Ms. Kirti Goyal, Advs.

CORAM:
HON’BLE MR. JUSTICE C.HARI SHANKAR
JUDGMENT
% 26.12.2023

I.A. 8970/2021 (under Order XXXIX Rules 1 & 2 of the CPC)

1. The plaintiffs allege that the defendants’ mark “GK WELLNESS” and their logos and infringe the plaintiffs’ registered trade mark “GK HAIR”, within the meaning of Section 29(2)1 of the Trade Marks Act, 1999. Accordingly, the plaintiff seeks, by the present application, an interlocutory injunction against the use by the defendants, in any manner, of the impugned mark “GK WELLNESS” and the logos and .

The Plaint

2. Plaintiff 1 is a company incorporated in Luxembourg. Plaintiff 2 is the exclusive distributor, in India, of the products of Plaintiff 1.

3. Plaintiff 1 commenced selling its goods and products, under the mark “Global Keratin”, in 2007. According to the plaint, in 2010, Plaintiff 1 adopted and coined the mark “GK Hair” and the logo . “GK”, according to the plaintiffs, constitutes the prominent part of the mark “GK Hair” as well as of the logo . The mark “GK Hair” and the logo have, according to the plaint, acquired immense reputation and goodwill over a period of time and have become source identifiers of the plaintiffs. Under the mark “GK HAIR”, it is asserted that the plaintiffs not only market hair care products but also provides education to salon professionals regarding use of the products for nourishing of hair from the roots. The logo is used for hair tanning products, hair care shampoo, conditioner, hair colours, hairspray, hair packs and other similar products. The plaintiffs claim to have served over 5 lakh customers in India with more than 5000 salons. According to the plaint, Plaintiff 1 is one of the world’s largest keratin-based haircare brands.

4. The word mark “GK HAIR” is registered in favour of Plaintiff 1 under the Trade Marks Act w.e.f. 23 June 2017 in Class 3 for “haircare preparation in the form of oil and gel, hair shampoo and conditioners, hair straightening preparation in the form of lotion and spray and hair treatment preparation”; in Class 8 for “electrical hair curling and straightening irons”; in Class 11 for “hand-held electric hairdryers”; and in Class 21 for “hairbrushes”. Plaintiff 1 has licensed the use to Plaintiff 2 which, therefore, has the exclusive right to use the said marks for the goods in respect of which they are registered.

5. Plaintiff 1 claims to have entered the Indian market in 2015 through Plaintiff 2, its authorised exclusive distributor. Plaintiff 2 imports the products manufactured by Plaintiff 1 and displays them for sale in several salons, supermarkets, retail stores and online platforms, as well as on its website www.gkhair.co.in. Considerable amounts are expended in publishing and advertising the plaintiffs “GK HAIR” mark and products, with the amount expended during the year 2019-2020 alone aggregating over ? 9 crores. The plaintiffs also claims an annual sales turnover, from use of the “GK HAIR” mark, of ? 48,09,59,282/– in 2019-2020 alone.

6. The defendants are also manufacturing and selling haircare products, similar to those of the plaintiff, under the impugned marks “GK WELLNESS”, and . The plaintiffs claim to have come to learn of this in April 2021. The plaintiffs condemn the defendants’ marks as “blatant” and “slavish” imitations of the plaintiffs’ registered trademark “GK HAIR” and the logo . Apart from their logo, the plaintiffs claim that the defendants have also replicated the trade dress in which the plaintiffs pack and sell their “GK HAIR Keratin Serum”, for the defendants’ own Keratin Serum. The plaint provides the following comparison:
Plaintiffs’ Keratin Serum under the mark “GK HAIR”
Defendants’ Keratin Serum under the mark “GK WELLNESS”

The plaintiffs contend that the defendants’ “GK WELLNESS Keratin Serum” adopts an appearance and a trade dress which are virtually identical to that of the plaintiff’s Keratin Serum, with identical placement of features on the phial. It is clear, according to the plaint, that the defendants have made every effort to imitate and, thereby, ride upon the plaintiffs’ established goodwill, while in the bargain confusing consumers.

7. The plaintiffs contend that, even in respect of other products, the manner in which the defendants use their logo, and the trade dress that they adopt, are bound to result in confusion. Photographs of the plaintiffs’ and defendants’ products have, for this purpose, being thus provided in the plaint:
Plaintiffs’ products

Defendants’ Products

The plaintiff contends that there is structural, visual and conceptual similarity between the defendants’ “GK WELLNESS” and the plaintiffs’ “GK HAIR” marks. The defendants have, moreover, packed their products in containers, phials and bottles which replicate the trade dress of the plaintiff’s corresponding containers, phials and bottles. A consumer of average intelligence and imperfect recollection is bound to confuse the defendants’ products with those of the plaintiffs, and to confuse the rival marks as well. It is further alleged that the domain IDs of the defendant, gkwellness.com and gk-wellness.business.site also infringe the plaintiffs registered trademarks, as “GK” is the most prominent part of the domain names.

8. Defendant 1 possesses a registration, under the Trade Marks Act, for the device mark , registered on 6 May 2021 w.e.f. 7 November 2020 in Class 3 for “bleaching preparations and other substances for laundry use; cleaning; polishing; scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices”. Plaintiff 1 has filed an application under Section 57(2)2 of the Trade Marks Act, seeking cancellation of the registration. In this connection, the plaintiffs submit, in the plaint, that, though an opposition against Application 4736181 – which was the application which subsequently proceeded to registration of the device mark in favour of Defendant 1 – was filed by the plaintiffs consequent on the defendants’ application being published and advertised, the opposition was not accepted by the Trade Marks Registry on the ground that the statutory period of four months, with effect from the date of publication of Defendant 1’s application in the Registrar of Trade Marks, had already expired. The plaintiff submitted that, in so doing, the Trade Marks Registry violated the order passed by the Supreme Court in In re. Cognizance for Extension of Limitation3, which extended all periods of limitation that came to an end during the currency of the COVID-19 pandemic, till 28 February 2022. Defendant 1’s mark thus illegally proceeded to registration.

9. There are other applications filed by the defendant for registration of the mark, but they are all either under objection from the Trade Marks Registry itself or under opposition by the plaintiff, as a result of which none of the applications have proceeded to registration. They do not impact the present application, one way or the other.

10. Inasmuch as (i) Defendant 1’s impugned “GK WELLNESS” mark , and its associated logos and are deceptively similar to the plaintiffs’ registered “GK HAIR” mark and the plaintiffs’ logo , (ii) the marks are used for identical products and, therefore, cater to the same customer segment and (iii) the products bearing the rival marks are available at the same counters and at the same outlets, the three factors which constitute the “triple identity test” which, when they coalesce, make out a prima facie case of infringement are, it is submitted, present here. It is further submitted that the adoption, by the defendants, of the “GK WELLNESS” mark, with the obvious knowledge of the prior existence of the plaintiffs’ “GK HAIR” mark and logo, with the defendant’s logo being structured in a manner similar to that of the Plaintiff, is clearly mala fide and with a view to capitalise on the plaintiff’s goodwill and reputation.

11. Alleging, therefore, that the defendants have indulged in infringement, passing off and unfair competition, the plaintiffs have instituted the present suit in this Court, seeking a decree of permanent injunction restraining the defendants, as well as all others acting on their behalf, from using the mark “GK WELLNESS” or the logos and , in connection with haircare preparations or any associated goods or services.

12. By the present application, the plaintiffs have sought grant of the said reliefs at the interlocutory stage, as, according to the plaintiff, it has a prima facie case in its favour and the principles of balance of convenience and irreparable loss would also justify grant of interlocutory injunction.

Written Statement

13. GK Wellness, submit the defendants by way of reply, is the proprietorship of Defendant 1 K. Srinivas Rao, operating since 2019. The device mark stands registered in the name of Defendant 1 with effect from 7 November 2020. Despite advertisement and publication of the application of Defendant 1 seeking registration of the mark, no opposition to registration was filed by the plaintiffs within time. The mark, therefore, proceeded to registration. Plaintiff 1 applied for cancellation of the registration of the mark in favour of Defendant 1 only on 10 May 2021, and the application is still pending. As the proprietor of a registered device mark, Defendant 1 submits, in the written statement, that the benefit of its use cannot be denied to the defendants.

14. Moreover, submit the defendants, “GK” is a generic abbreviation over which no one can claim monopoly though, when combined with another term or word, it may result in a composite mark entitled to protection. The case of the plaintiffs is, however, predicated on the common “GK” factor in the rival marks of the plaintiff and the defendant. Inasmuch as no one can be allowed to appropriate, to herself or himself, the right to use a generic abbreviation such as “GK”, the defendants submit that the plaintiff’s grievance is without any basis. In this context, the defendants also seek to point out that there are several registered trademarks which start with “GK”, such as “GK Legal Solutions”, “GK Industries”, “GK Little King”, “GK Management Services”, “GK Wood” and the like, of which some are registered in Class 3. For the same reason, there can be no injunction against the use, by the defendants, of the gkwellness.com domain name, either. The defendants place reliance on the judgment of the Supreme Court in Parakh Vanijya Pvt Ltd v. Baroma Agro Products4, in which the Supreme Court, while dealing with the competing marks “MALABAR” and “MALABAR BAROMA”, held that no monopoly could be claimed over the generic word MALABAR.

15. Relying on the judgment of the Supreme Court in F. Hoffmann-La Roche & Co. Ltd v. Geoffrey Manner & Co. (P) Ltd5, the defendants submit that the plaintiff could not dissect its mark and claim exclusivity over the “GK” part thereof.

16. The defendants also dispute the plaintiffs’ contention that the mass of the plaintiff and the defendant are similar. The logo , it is asserted, has no similarity with the logo , and there is no likelihood of confusion between them. Moreover, the plaintiffs have no registration for the logo as a device mark, whereas the logo is the registered device mark of Defendant 1.

17. The defendants also dispute the plaintiffs’ claim to user of the Mark “GK HAIR” since 2015, pointing out that there is no evidence on record to substantiate the submission.

18. The defendants claim that the “GK” part of the mark “GK WELLNESS” represented the initials of Defendant 1’s father and daughter, who were named Gopal and Komal respectively. It was not, therefore, as if, by using the said abbreviation, the defendants were seeking to ride on the plaintiffs’ goodwill. It is urged that, in fact, the defendants have always sold their products as their own, and have never sought to project their products as the products of the plaintiffs. There is no similarity in appearance between the plaintiffs’ and defendants’ products. Besides, the plaintiffs’ products are far more expensive than the defendants’, with the products of the defendants being sold at approximately one-tenth the price of the plaintiffs’ products. These assertions are sought to be supported on the basis of the following tabular representation

Product
Plaintiff’s packaging and its price
Defendants’ packaging and its price
Shampoo

? 1800/-

? 575/-
Hair Serum

? 1900/-
? 220/-
Hair Mask

? 2100/-
? 700/-

The vast difference in prices between the plaintiffs’ and defendants’ products, it is submitted, would itself minimise the chance of any confusion in the public.

19. The manner in which the products are used is also not the same. For example, the plaintiffs’ hair serum contains juvexin, and can be used as an individual product whereas the defendants’ hair serum is to be used only after obtaining keratin treatment, and not individually.

20. Seen as whole marks, it is submitted that and are not similar at all. The colours used in the two logos are different. The letters in the two logos are in different fonts. The overall appearance of the two logos is not similar. The plaintiffs’ logo is “GK HAIR”, whereas the defendants’ is “GK WELLNESS”. The defendants have never associated themselves with the plaintiffs, or held themselves out as connected, in any manner, with the plaintiffs. No evidence to that effect has been placed on record with the plaint.

21. As the defendants have never attempted to propagate their products as those of the plaintiffs, it is submitted that no action for passing off can lie.

22. It is also contended that Defendant 2 is not a necessary party to this litigation. Defendant 2, it is submitted, merely manufactures products as per orders placed by Defendant 1. The mark is registered in favour of Defendant 1.

Rival Submissions

Submissions of Mr Gaurav Barathi for the plaintiffs

23. Mr. Barathi, appearing for the plaintiffs, reiterates the assertions in the plaint. He submits that “GK” is the dominant part of the rival marks. The manner in which the defendants have written “GK” in its logo, he submits, is identical to the manner in which the plaintiffs have written “GK” in . “WELLNESS”, in the defendant’s logo, he submits, is printed in such a microscopically small font as to be virtually imperceptible, when compared to “GK”.

24. The plaintiffs, submits Mr. Barathi, have been using the “GK HAIR” mark since 2015, and obtained registration for the mark on 23 June 2017. He submits that, while obtaining registration, it was erroneously stated that registration was being sought on “proposed to be used” basis. As against this, the registration of the device mark, in favour of Defendant 1, is of 6 May 2021. The rectification proceedings filed by the plaintiffs, seeking cancellation of the said registration, are pending.

25. Mr. Barathi also seeks to point out, from the photograph of an outlet of the defendants at Bareilly, that the defendants are prominently using the logo even on signages outside the salon, thus:

Besides, on e-commerce websites, the plaintiffs and defendants products figure side-by-side, enhancing the possibility of confusion. He draws attention to the following screenshot reflecting the manner in which the products are displayed on the Flipkart e-commerce page:

26. Mr. Barathi points out that the defendants do not dispute either the plaintiffs’ sales turnover or the promotional expenses incurred by the plaintiffs in promoting the “GK HAIR” brand.

27. The facts, therefore, submits Mr. Barathi, clearly justify grant of interim injunction, as sought by the plaintiffs.

Submissions of Ms. Jyotsna Tuli for the defendants

28. Ms Jyotsna Tuli, appearing for the defendants, also reiterates the assertions contained in the written statement and submits that there is no visual similarity between the logo of the plaintiff and the logo of the defendants. The colours used in the logo are different from those used by the plaintiff. The plaintiffs’ logo is in monochrome. Defendant 1 is the proprietor of registration in the logo, as a device mark.

29. The acronym “GK”, submits Ms. Tuli, is publici juris. No one can claim a monopoly over such a generic acronym. She reiterates the assertions, in the written statement, that the defendants use “GK” as an acronym as G and K are the initial letters of the names of the father and daughter of the proprietor of Defendant 1. In the rival marks “GK HAIR” and “GK WELLNESS”, Ms Tuli submits that “GK” constitutes the dominant part. As there can be no monopoly over the acronym “GK”, she submits that the plaintiffs really have no legitimate cause of action against the defendants. For the proposition that no monopoly can be claimed over the generic acronym “GK”, Ms Tuli cites, apart from F. Hoffmann la Roche, paras 14, 25, 26, 35 and 36 of the judgment of the Division Bench of this Court in SBL Ltd v. Himalaya Drug Co.6, paras 51 to 53, 57, 58, 65, 67, 73 and 74 of the judgment of a learned Single Judge of this Court in Himalaya Drug Co. v. SBL Ltd7, paras 6 to 8 and 19 of the judgment of the Division Bench in Marico Ltd v. Agro Tech Foods Ltd8, paras 9 to 16 of the judgment of a learned Single Judge in Bigtree Entertainment Pvt Ltd v. Brain Seed Sportainment Pvt Ltd9 and paras 5 and 11 of the judgment of a learned Single Judge of this Court in Superon Schweisstechnik India Ltd v. Modi Hitech India Ltd10 . She submits that the plaintiff has led no evidence to indicate that the acronym “GK” has acquired any secondary meaning. In any event, that would be a matter for trial, for which purpose Ms Tuli cites paras 67 to 68 of the decision in Delhivery Pvt Ltd v. Treasure Vase Ventures Pvt Ltd11 .

30. The abbreviation “GK”, she submits, is common to the trade. She draws attention to the fact that, against the application of Plaintiff 1 for registration of the word mark “GK HAIR”, the Trade Marks Registry, in its First Examination Report (FER), cited the mark , already registered prior in point of time in favour of M/s Guy Kremer Products Ltd in Class 3 for “shampoo; conditioner; hairspray; hair lotion; hair wax; hair putty; hair mousse; hair colourants; hair dye; hair cream; shaving gel; skin balm; shower gel; moisturiser; soaps, face wash preparations; facial scrubs; perfumery; eau de toilette; aftershave; essential oils”.

31. The defendants, submits Ms Tuli, have discontinued manufacture and sale of their Hair Serum and are not, therefore, any longer using the trade dress with which the plaintiffs are aggrieved. She undertakes, on behalf of her clients, that they would not use the said trade dress pending disposal of the suit. Except for the possible similarity in the trade dress of the Hair Serum of the plaintiffs and defendants, Ms Tuli submits that there is no similarity whatsoever either in the rival marks of the plaintiffs and the defendants, or the trade dresses used by the defendants for their products, when compared to the trade dresses of the plaintiffs’ products. She further submits that her clients are willing to discontinue use of the trade dress for their hair mask, as well.

32. In view of Ms Tuli’s statement that the defendants have discontinued the use of the phial for their Hair Serum, I do not propose to enter any observations in that regard. The defendants would, however, be bound by Ms Tuli’s undertaking that they would not use the said trade dress, pending disposal of the suit.

33. Though the defendants contest the allegation of similarity between the existing logo and the plaintiffs’ logo , Ms Barathi submits that her clients are further willing to replace the mark with the mark with which, she submits, the plaintiffs can have no legitimate grievance.

Mr. Barathi’s submissions in rejoinder

34. In rejoinder, Mr. Barathi cites, in response to the submission of Ms Tuli that the acronym “GK” is common to the trade, para-12F of the judgment of a learned Single Judge of this Court in Max Healthcare Institute Ltd v. Sahrudya Health Care Pvt Ltd12. The mark, which was registered in favour of Guy Kremer Products Pvt Ltd, he points out, was never renewed and has lapsed. In any event, he submits that a mere reference to various marks, figuring on the Register of Trade Marks, which include “GK” as a part, cannot make out a case of the abbreviation “GK” being common to the trade. He relies, for this purpose, on the well-known judgment of the Division Bench of this Court in Pankaj Goel v. Dabur India Ltd13, apart from Indian Shaving Products Ltd v. Gift Pack14, Automatic Electric Co. v. R.K. Dhawan15, P.M. Diesels v. S.M. Diesels16 and Dish TV India Ltd v. Prasar Bharati17. Mr. Barathi further submits, relying on Coolways India v. Princo Air Conditioning and Refrigeration18, that the Court cannot be concerned with use of the mark by third parties and is only concerned with the parties before it. He also cites, in this context, Clinique Laboratories LLC v. Gufic Ltd19 .

35. In response to Ms. Tuli’s contention that the plaintiffs could not seek a monopoly over the generic acronym “GK”, Mr. Barathi cites B.K. Engineering Co. v. U.B.H.I. Enterprises20 to contend that “GK” is certainly entitled to the same treatment as “BK”. He also cites the judgment of the Division Bench of this Court in Kirorimal Kashiram Marketing & Agencies Pvt Ltd v. Shree Sita Chawal Udyog Mill21.

36. The decisions cited by Ms Tuli, he submits, all cases in which the parts which were common between the rival marks were descriptive. As against this, “GK” is arbitrary and coined. Mr. Barathi submits that, having itself applied for, and obtained, registration for the “GK WELLNESS” device mark, the defendants are estopped from contending to the contrary.

Analysis

The plea of registration

37. One of the defendants’ primary contentions is that the mark is registered in favour of Defendant 1 and that, therefore, no action for infringement can lie against the said mark.

38. I am unable to accept the said submission, for the simple reason that the registration of the mark, in favour of Defendant 1, was granted in a manner contrary to the law. Defendant 1 applied for registration of the mark on on 23 February 2019. The application was advertised under Section 20 of the Trade Marks Act. Section 21 provided for any opposition, to the registration of the mark, being filed within four months of advertisement. That period, however, expired during the currency of the COVID-19 pandemic, at which time all periods of limitation, under all statutes, for all purposes, stood extended by orders of the Supreme Court in In re. Cognizance for Extension of Limitation. The extension continued till 28 February 2022. Before that date, the plaintiff filed its opposition, under Section 21, to the registration of the mark in favour of Defendant 1. The opposition was rejected as having been filed beyond the statutory period of four months envisaged in Section 21(1). The decision was clearly illegal, as the period of limitation stood extended till 28 February 2022 by the Supreme Court. The mark was granted registration, therefore, without considering the opposition of the plaintiff, which was filed within time. The grant of registration was itself, therefore, prima facie invalid ab initio.

39. No right can flow, in law, from an illegal act. Having obtained registration in a manner which contravenes the statutory scheme, the registrant cannot claim, on the basis of the said registration, either the exclusive right to use the mark, or a protection against any infringement action, as would otherwise be available under Section 30(2)(e)22 of the Trade Marks Act.

40. Section 31(1)23 states that the registration of a trademark shall be treated as prima facie evidence of its validity. The use of the words “prima facie” is significant. The legislature has consciously provided scope for the validity of the mark to be questioned, despite its registration. In such an event, the registration would operate as prima facie evidence of the validity of the mark, which means that the onus would shift to the challenger, who challenges the validity of the registered mark, to prove that the registration is invalid. That onus stands discharged in the present case, for the reasons already stated hereinabove. Section 31(1) cannot, therefore, come to the rescue of the defendants.

41. There are three more reasons why the registration of the mark in favour of Defendant 1 cannot enure to the benefit of the defendants in their defence against the plaintiffs’ allegation of infringement.

42. Firstly, a coordinate Single Bench of this Court has, in its decision in Dr Reddy’s Laboratories Ltd v. Controller General of Patents Designs and Trademarks24 for the reasons already stated in the foregoing paragraphs, directed that registrations granted to applicants against whose applications oppositions were filed before 30 May 2022 would stand suspended till the oppositions were decided by the office of the Registry of Trade Marks. That has yet to happen in the present case.

43. Secondly, the plaintiffs, whose opposition to the application of Defendant 1 for registration of the mark was illegally not taken into consideration, cannot be foreclosed from pleading infringement merely on the ground that, ignoring the plaintiffs’ opposition, the mark illegally proceeded to registration.

44. Thirdly, of all the goods and services in respect of which the mark stands registered in favour of Defendant 1, the only goods having any connection with the manner in which the defendants use the said mark, insofar as we are concerned, is “hair lotion”. It is not, prima facie, possible to include, within the ambit of the expression “hair lotion”, every kind of preparation for hair treatment. Significantly, in sharp contrast, the plaintiffs’ registration for the mark “GK HAIR” covers “hair care preparation in the form of oil and gel, hair shampoo and conditioners, hair straightening preparation in the form of lotion and spray and hair treatment preparation”. A registration granted only for “hair lotion” cannot be treated as extending to all kinds of hair care products. Even if, therefore, the defendants’ registration were to be taken into account, it would only protect the use, by the defendants, of the impugned mark for hair lotions, and for no other products.

45. I am, therefore, of the view that the defendants cannot, in the peculiar facts of the present case, plead registration of the mark as a defence to the allegation of infringement, laid by the plaintiffs.

Do the defendants’ marks infringe the plaintiffs’?

46. Infringement, under Section 29 of the Trade Marks Act, can only be of a registered trademark. The validity of the registration is not a relevant consideration for Section 29. However, if infringement is found to exist within the meaning of Section 29, it is only if the registration is valid that the proprietor of the mark which is infringed can obtain relief against infringement under Section 28(1)25, as validity of the registration is a precondition to obtain relief against infringement.

47. Section 29(2)(b) envisages infringement as occurring where the defendant’s mark is similar to that of the plaintiff and both marks are used in respect of goods or services which are identical or similar. If, owing to these two conditions coexisting, there is a likelihood of confusion in the public or a likelihood of association between the marks in the minds of the public, the defendant’s mark is said to infringe the mark of the plaintiff.

48. Plaintiff 1, in the present case, is the proprietor of the registered word mark “GK HAIR”. The plaintiffs have no device mark registered in their name. What is to be seen, therefore, is whether the word mark “GK HAIR” is infringed by the defendants “GK WELLNESS” word mark or the logo .

49. Section 17(2)(a)26 of the Trade Marks Act clearly proscribes any claim of exclusivity in a part of a composite mark, where that part is not separately registered as a trade mark. The plaintiffs’ mark “GK HAIR” is a composite mark, composed of “GK” and “HAIR”. The plaintiff has no registration for “GK” per se. Section 17(2)(a), therefore, read as it is, would not permit the plaintiff to plead infringement by claiming exclusivity for the “GK” part of its “GK HAIR” Mark. This is also referred to as the “anti-dissection rule”.

50. The plaintiffs’ and defendants’ marks have, therefore, to be compared as wholes. In other words, the whole mark of the plaintiffs has to be compared with the whole mark of the defendants to ascertain whether there is infringement. In doing so, however, it is permissible, where a part of the plaintiffs’ mark constitutes its dominant feature, to take that fact into consideration while comparing the two marks as whole marks. By doing so, one does not breach the anti-dissection rule or Section 17(2)(a), as the comparison is still between the two marks as whole marks. The possibility of likelihood of confusion, or of association, for the purposes of Section 29(2)(b), has to be assessed from the perspective of a consumer of average intelligence and imperfect recollection.27 Also, the Court has to assess the possibility of “initial interest confusion”. In other words, what has to be seen is the effect, on the consumer of average intelligence and imperfect recollection, of the defendant’s mark, if such a consumer has, sometime earlier, seen the plaintiff’s mark. The marks are not to be placed side-by-side. If the consumer of average intelligence and imperfect recollection, who has earlier seen the plaintiff’s mark and, at a later point of time, comes across the defendant’s mark, is immediately inclined to ponder – or to wonder – whether he has seen the mark, or associated mark, earlier, the defendants mark, even for that sole reason, infringes the plaintiffs. It is the impression on the mind of the average consumer at the initial point when he sees the defendant’s mark which matters. This is often referred to as “initial interest confusion”. The human mind tends to compartmentalise. Certain aspects impress themselves more prominently on the psyche of the individual than others. Where a part of a mark is dominant, that part registers most prominently or the psyche of the mind of the consumer of average intelligence and imperfect recollection, when he first sees the mark. Thus, though a consumer, who had first seen the plaintiff’s mark and later sees the defendant’s mark compares the 2 marks as whole marks, even so, while so comparing the marks, the consumer recollects that feature of the marks which is dominant, where such a dominant feature exists. It is for this reason that, in its judgment in South India Beverages Pvt. Ltd. v. General Mills Marketing Inc.28, a Division Bench of this Court has held as under:

“The Rule of Anti-Dissection

16. This rule mandates that the Courts whilst dealing with cases of trademark infringement involving composite marks, must consider the composite marks in their entirety as an indivisible whole rather than truncating or dissecting them into its component parts and make comparison with the corresponding parts of arrival mark to determine the likelihood of confusion. The raison d’tre underscoring the said principle is that the commercial impression of a composite trademark on an ordinary prospective buyer is created by the mark as a whole and not by its component parts [Fruit of the loom, Inc. v. Girouard29; Autozone, Inc. v. Tandy Corporation30].

*****

The Identification of ‘Dominant Mark’

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’.

20. At this juncture it would be apposite to refer to a recent decision of this Court reported as Stiefel Laborataries v. Ajanta Pharma Ltd31. The Court whilst expounding upon the principle of ‘anti-dissection’ cited with approval the views of the eminent author on the subject comprised in his authoritative treatise-McCarthy on Trademarks and Unfair Competition. It was observed:

“41. The anti-dissection rule which is under these circumstances required to be applied in India is really based upon nature of customer. It has been rightly set out in McCarthy on Trademarks and Unfair Competition about the said rule particularly in Para 23.15 which is reproduced hereunder:

23.15 Comparing Marks : Differences v. Similarities

[1]  The Anti-Dissection Rule
[a] Compare composites as a Whole : Conflicting composite marks are to be compared by looking at them as a whole, rather than breaking the marks up into their component parts for comparison. This is the “anti dissection” rule. The rationale for the rule is that the commercial impression of a composite trademark on an ordinary prospective buyer is created by the mark as a whole, not by its component parts. However, it is not a violation of the anti-dissection rule to view the component parts of conflicting composite marks as a preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole. Thus, conflicting marks must be compared in their entireties. A mark should not be dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof, that is important. As the Supreme Court observed; “The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety.” The anti-dissection rule is based upon a common sense observation of customer behaviour : the typical shopper does not retain all of the individual details of a composite mark in his or her mind, but retains only an overall, general impression created by the composite as a whole. It is the overall impression created by the mark from the ordinary shopper’s cursory observation in the marketplace that will or will not lead to a likelihood of confusion, not the impression created from a meticulous comparison as expressed in carefully weighed analysis in legal briefs. In litigation over the alleged similarity of marks, the owner will emphasize the similarities and the alleged infringer will emphasize the differences. The point is that the two marks should not be examined with a microscope to find the differences, for this is not the way the average purchaser views the marks. To the average buyer, the points of similarity are more important that minor points of difference. A court should not engage in “technical gymnastics” in an attempt to find some minor differences between conflicting marks.

However, where there are both similarities and differences in the marks, there must be weighed against one another to see which predominate.

The rationale of the anti-dissection rule is based upon this assumption: “An average purchaser does not retain all the details of a mark, but rather the mental impression of the mark creates in its totality. It has been held to be a violation of the anti-dissection rule to focus upon the “prominent” feature of a mark and decide likely confusion solely upon that feature, ignoring all other elements of the mark. Similarly, it is improper to find that one portion of a composite mark has no trademark significance, leading to a direct comparison between only that which remains.”
[Emphasis Supplied]

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.

22. We may refer to the decision of the United States Court of Appeals for the Federal Circuit reported as Re Chatam Int’l, Inc32, wherein the Court enunciated the interplay between the principle of ‘anti dissection’ and identification of ‘dominant mark’. The Court, while ascertaining whether the mark ‘JOSE GASPAR GOLD’ was similar to the registered mark ‘GASPAR’S ALE’, held that ‘GASPAR’ was clearly the dominant element in the two marks and resembled the relevant mark enough to cause a likelihood of confusion, to cause a mistake or to deceive. Relevant would it be to note that the defendant in the said case urged that the approach of splitting of the marks was in violation of the anti-dissection rule. The said contention was repelled by the Court and it was pertinently observed that there was no violation of anti-dissection rule because the marks were any way examined in entirety, and each individual term in the marks were given more or less weightage depending on the overall impression it appeared to create. The Court was of the view that both marks convey the commercial impression that a name, GASPAR, is the source of related alcoholic beverages, tequila or ale. In other words, the commercial significance of ALE in the registered mark ‘GASPAR’S ALE’ and JOSE and GOLD in appellant’s mark ‘JOSE’S GASPAR GOLD’ assumed less significance in the opinion of the Court.

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.

24. In this regard we may fortify our conclusion by take note of the decision reported as Eaton Allen Corp. v. Paco Impressions Corp33. The facts of the said case reveal that the plaintiff manufactured coated paper under the registered trademark ‘Super-Ko-Rec-Type’. The defendant manufactured and advertised a similar product under the mark ‘Super Type’ and ‘Super Type-7’. The defendant contended that the only similarity between the said marks was use of the words ‘Super’ and ‘Type’, terms which were neither significant parts of the plaintiff’s registered trademark nor protectable as a matter of law. The court held that the consideration of a trademark as a whole does not preclude infringement where less than the entire trademark is appropriated.

25. Therefore, the submission of the appellant-defendant predicated upon the principle of ‘anti-dissection’ that action for infringement would not lie since use of the word ‘D’DAAZS’ does not result in complete appropriation of the respondent-plaintiff’s mark ‘HAAGEN DAZS’, which is to be viewed as an indivisible whole, is liable to be rejected.

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.[Autozone, Inc. v. Tandy Corporation]”

(Italics in original; underscoring supplied)

South India Beverages is, thus far, regarded as an authority of sorts on how to balance the anti-dissection rule with the dominant mark principle.

51. In the rival marks before me, “HAIR”, in the case of the plaintiff’s and “WELLNESS” in the case of the defendants are descriptive of the products in respect of which the marks are used. Clearly, the defining and dominant feature of each mark, which immediately impresses itself on the consumer psyche, is “GK”. Applying the South India Beverages principle, if, owing to the common “GK” part of the plaintiffs’ and defendants’ marks, there is a likelihood of confusion or association in the minds of the public, it would be possible to hold that the defendants’ mark infringes the plaintiffs.

52. But is there such a likelihood?

53. Mr. Barathi placed reliance on the judgment of the Division Bench of this Court in B.K. Engineering. That was the case in which the plaintiff B.K. Engineering Co. Ltd (“BKECL”) was using “BK” as its house mark. Though the case was one of passing off, as, apparently, BKECL did not possess a registration for the trade mark “BK”, the requirement of likelihood of confusion, as a result of the coexistence of the rival marks, is common to infringement and passing off. The respondent-defendant UBHI Enterprises (“UBHI”) was using the mark “BK-81”. BKECL alleged that, by use of the deceptively similar mark BK-81, UBHI was passing off its goods as those of BKECL. BKECL instituted a suit against UBHI, seeking permanent injunction against UBHI using the mark “BK-81”. The suit was accompanied by an application for interlocutory injunction. The application was rejected by a learned Single Judge of this Court. BKECL appealed to the Division Bench. That appeal came to be decided by the judgment under discussion.

54. UBHI sought to contend, before the Division Bench, that the “81” suffix was sufficient to distinguish between BKECL’s and UBHI’s marks. As in the present case, UBHI also sought to explain the use, by it, of “BK” as the initials of the name of the mother of the proprietor of UBHI, which was Balwant Kaur. The Division Bench held, unexceptionably, that, even if “BK” had been coined, by UBHI, from the initials of Balwant Kaur’s name, that would not permit UBHI to use a mark which infringed the mark of another.

55. The Division Bench, in the following passages from the judgment, found the use, by UBHI, of the mark “BK-81” as likely to confuse the public into believing the defendants goods to be those of the plaintiff, thereby making out a prima facie case of passing off:

“15.  “B.K.” is the plaintiffs’ house name. Under this banner they carry on business. These two letters have become associated with their goods. They have been in the manufacturing line since 1971. In 1981 the defendants started manufacturing bells with the trade mark “B.K.-81”. In my opinion this is prima facie a case of injury to the plaintiffs’ business goodwill. (A.G. Spalding v. A.W. Gamage Ltd.34 per Lord Parker). New goodwill was defined by Lord Macnaghten as “the benefit and advantage of the good name, reputation and connection of a business…… the attractive force which brings in custom” (IRC v. Muller and Co.’s Margrine Ltd35).

*****

17.  It was than said that the defendants are using “81” in addition to letters “B.K.” to distinguish their product from the plaintiffs’ product. This is merely “garnishing”, as the expression goes, merely altering the name by the addition of 81. Even the altered name is likely to mislead. The defendants’ product will deceive people into thinking that their goods are the goods of the plaintiffs.

*****

Unfair competition

18.  The setting of the law of passing-off is competition between traders. There is a real risk of injury to the reputation of the plaintiffs if the defendants are not prevented from selling cycle bells under the name “B.K.-81”. This is a misappropriation of plaintiffs’ name. “B.K.-81” is strongly suggestive of association with the plaintiffs, or some licence or endorsement from them. This is called “misappropriation of business reputation”. This is a conduct which will come into the new, generalised idea of “unfair competition”.

*****

24.  Take this very case. “B.K.” is the house name of the plaintiffs, the producers of the article, Crown bell, that has won popular favour. The defendants have attached this name to the article they produce, “B.K. 81” bell. The probability of deception and confusion is certainly there. “B.K.-81” conveys “a false impression, has something of a faculty ring about it; it is not sterling coin; it has no right to the genuine stamp and impress of truth.” (Reddaway v. Banham36  pp. 218-214) per Lord Macnaghten.

*****

29.  Both firms are engaged in a “common field of activity”. There is a real possibility that the public to which the defendants address their wares would draw the association with the plaintiffs of which they complain.

*****

32.  The plaintiffs, in my opinion, have prima facie shown that they are likely to sustain injury by defendants’ misuse of their “goodwill”. The crux of the case is that “B.K.” is a word or device which is distinctive of plaintiffs’ goods. It is a distinctive indicium of the plaintiffs’ bells. The defendants have misappropriated this indicium which is distinctive of the goods manufactured by the plaintiffs. It is not essential that the plaintiff be identified by name, provided the mark is recognised as indicating the origin of the goods or services and the plaintiff is in fact that source. (Powell v. Birmingham Vinegar Brewery Co. Ltd.37). A message is conveyed by a memorable word or name to the purchasing public that the goods are of the plaintiff. So the potential purchaser is misled and deceived if there is misappropriation of name, symbol or slogan by a competitor.

*****

34.  “B.K.” is the manufacturer’s mark of the plaintiffs. This is seen by the public. In a “common field of activity” it is likely to deceive prospective purchaser if the defendants are allowed to market their product under the mark “B.K.-81”. There is likelihood of diversion of trade from the plaintiffs to the defendants. This is an injury against which an injunction is directed in the action of passing off. The plaintiffs can well complain that their goodwill suffers from an “injurious association” with the defendants’ goods. In Harrods Ltd. v. R. Harood Ltd.38, the public thought that the great, departmental store had stopped to money lending. An action of passing off lies if one trader represents his business as being that of or connected with that of, the plaintiff, as is the case here. There is a false suggestion by one competing trader in the same line of business that his business is connected with that of the other. This, I apprehend, would damage the reputation and thus the goodwill of the plaintiffs’ business.

*****

39.  We were referred to telephone directory to show that “B.K.” is a business name used by hundreds of people. I am not impressed by this argument. It must be remembered that here we are concerned with a case where both firms are engaged in a “common field of activity”. The question arises whether the defendants are misleading the public into buying their goods in the belief that they emanated from the plaintiffs. Most defendants in these cases start business fully well knowing of the fame of the plaintiff’s name and mark [Equity Doctorines and Remedies by R.P. Meagher (1984) 2nd ed. P. 857]. They want to cash in on the popularity of the plaintiffs product. Whether the goods are inferior or superior every infringement is, in a way, a tribute to the excellence of the plaintiff’s wares. It is a measure of the popularity of plaintiff’s goods.

40.  The mischief in this case is that the defendants have taken their rival trader’s name and made it their trade mark. B.K. is the striking and significant feature of the plaintiffs’ name. This trade name and reputation the defendants have appropriated to their use. The old mischief was in the imitation of get-up or appearance of the plaintiff’s goods. The new mischief is in injury to goodwill. The liability is now wider than before [See Winfield and Jolowicz on Tort (12th) 1984 ed. p. 546]. The main concern of the law now is to protect the plaintiffs property in the goodwill.

*****

42.  Counsel contended that there should be no injuction till the plaintiffs establish at the trial upon evidence that the word “B.K.” is calculated to deceive the ultimate customer I do not agree. It is well to remember what Ford Parker said in Spalding v. Gamage (supra) at 286, 287. There may, of course be cases of so doubtful a nature that a judge cannot properly come to a conclusion without evidence being led on the point; but in a passing off action the matter complained of is calculated to deceive, in other words, whether it amounts to misrepresentation is a matter for the judge who, looking at the documents and evidence before him, comes to his own conclusion, and to use the words of Lord Macnaghten in Payton & Co. Ltd. v. Snelling Lampard & Co.39, “must not surrender his own independent judgment to any witness whatever”.

*****

56.  If there is a real prospect of injury to the plaintiff’s goodwill he is entitled to injunction. Applying this principle it seems to me that “B.K.” is the most valuable single asset of the plaintiffs. Prima facie they possess a substantial reputation in this. The adoption of “B.K.-81” by the defendants would lead persons to think that “B.K.-81” is the product of a business associate or an affiliate of B.K. Engineering Co. There is a real risk that a substantial number of members among the public would in fact believe that there is a business connection between the plaintiffs and the defendants. The defendants cannot be allowed to cash in on the popularity of the plaintiffs’ product in which they have built up a goodwill. If not prevented they will harm the plaintiffs’ business. In my opinion there is sufficient material to support a claim for temporary injunction at this stage.”

56. The rival marks in the present case are “GK HAIR”, of the plaintiff, and “GK WELLNESS”, of the defendants. “GK” is, unquestionably, the dominant part of both the marks. This is, indeed, apparent even from the logos used by the plaintiffs and defendants, in which “GK” is in sharp relief in the foreground, with the descriptors “HAIR” and “WELLNESS” relegated to a disproportionately small print towards the base of the logo. (Indeed, if I were to use, for the plaintiffs’ and defendants’ logos, smaller print than the one which I am using, I doubt if the words “HAIR” and “WELLNESS” would at all be readable.)

57. The acronym “GK” is obviously not descriptive of the services provided by the plaintiffs or the defendants. Apropos hair care solutions, it is prima facie inventive and arbitrary.

58. Given the fact that the marks “GK HAIR” and “GK WELLNESS” are both used for hair care solutions, there is, prima facie, every likelihood of a consumer being confused, or at least presuming an association between the two marks. This possibility is exacerbated by the likeness in the logos of the defendants and the plaintiffs, which emphasise the “GK” and relegate the words “HAIR” and “WELLNESS” to tiny letters, towards the base of the logo. The consumer would ordinarily see the products of the plaintiffs and defendants on the shelves of the outlets where they are displayed. At the normal distance at which consumers view products on the shelves of stores, it would be extremely difficult to read the words “HAIR” or “WELLNESS”, as printed on the face of the products of the plaintiffs and defendants. The letters “GK” stand out. The marks are used for identical products, which are available at common outlets and cater to the same consumer segment. These three factors, if present, are themselves a prima facie indicator of the existence of likelihood of confusion in the mind of the average consumer.40

59. Thus, as (i) the marks “GK HAIR” and “GK WELLNESS” are similar to each other, (ii) they are used for identical products, catering to the same consumers and available at the same outlets and (iii) there is prima facie likelihood of confusion in the mind of the consumer, or of the consumer believing an association between the marks as a result of these factors, the three ingredients which are required to cumulatively be satisfied for infringement, within the meaning of Section 29(2)(b) of the Trade Marks Act to be found to exist, are satisfied in the present case.

60. The judgment in F. Hoffmann La Roche is clearly distinguishable as, in that case, the “VIT” suffix in the rival marks “PROTOVIT” and “DROPOVIT” was found to be descriptive of the products in respect of which the marks were used, which were vitamin preparations. Besides, the Supreme Court specifically noted, in para 8 of the report (in SCC), that the affidavits filed by the appellant before it indicated that the suffix “VIT” was a well-known common abbreviation used in the pharmaceutical trade to denote vitamin preparations. Similarly, in SBL, the common “LIV” suffix/prefix was found to be common to the trade for liver preparations and, in Marico, the mark “Sugar Free” was found to be “a common descriptive adjective”. The acronym “GK” cannot, however, aspire to to any such status in the hair care preparations trade.

61. Thus, prima facie, the defendants’ mark “GK WELLNESS” infringes the plaintiffs’ registered trademark “GK HAIR”.

Section 17(2)(b) – The “common to the trade” defence

62. Section 17(2)(b) disallows any claim to exclusivity, by the proprietor of a registered trademark, in any matter, contained in the mark, which is common to the trade or is otherwise not distinctive.

63. Ms. Tuli sought to contend that the acronym “GK” is common to the trade and is otherwise not distinctive and, therefore, the plaintiffs cannot claim any exclusivity over the said acronym.

64. In support of the contention, however, no substantial evidence has been produced by the defendants. The ingredients which are required to be established for a plea that a mark, or a part of a mark, is common to the trade, to succeed are, by now, well settled. In Pankaj Goel, the rival marks, with which the Division Bench of this Court was seized, were HAJMOLA and SATMOLA. It was sought to be contended, by the defendant in that case, that the suffix “MOLA” was common to the trade and that, therefore, no exclusivity could be claimed therein. The Division Bench, rejecting the submission, observed and held as under:
“21.  As far as the Appellant’s argument that the word MOLA is common to the trade and that variants of MOLA are available in the market, we find that the Appellant has not been able to prima facie prove that the said ‘infringers’ had significant business turnover or they posed a threat to Plaintiff’s distinctiveness. In fact, we are of the view that the Respondent/Plaintiff is not expected to sue all small type infringers who may not be affecting Respondent/Plaintiff business. The Supreme Court in National Bell v. Metal Goods41,  has held that a proprietor of a trademark need not take action against infringement which do not cause prejudice to its distinctiveness. In Express Bottlers Services Pvt. Ltd. v. Pepsi Inc.42, it has been held as under:—

“….To establish the plea of common use, the use by other persons should be shown to be substantial. In the present case, there is no evidence regarding the extent of the trade carried on by the alleged infringers or their respective position in the trade. If the proprietor of the mark is expected to pursue each and every insignificant infringer to save his mark, the business will come to a standstill. Because there may be occasion when the malicious persons, just to harass the proprietor may use his mark by way of pinpricks…. The mere use of the name is irrelevant because a registered proprietor is not expected to go on filing suits or proceedings against infringers who are of no consequence… Mere delay in taking action against the infringers is not sufficient to hold that the registered proprietor has lost the mark intentionally unless it is positively proved that delay was due to intentional abandonment of the right over the registered mark. This Court is inclined to accept the submissions of the respondent No. 1 on this point… The respondent No. 1 did not lose its mark by not proceeding against insignificant infringers…”

22.  In fact, in Dr. Reddy Laboratories v. Reddy Pharmaceuticals43,  a Single Judge of this Court has held as under:—

“…the owners of trade marks or copy rights are not expected to run after every infringer and thereby remain involved in litigation at the cost of their business time. If the impugned infringement is too trivial or insignificant and is not capable of harming their business interests, they may overlook and ignore petty violations till they assume alarming proportions. If a road side Dhaba puts up a board of “Taj Hotel”, the owners of Taj Group are not expected to swing into action and raise objections forthwith. They can wait till the time the user of their name starts harming their business interest and starts misleading and confusing their customers.” ”
(Emphasis supplied)

65. The defendants’ contention that the acronym “GK” is common to the trade is squarely hit by the principles contained in these passages from Pankaj Goel. In order to succeed in their contention that the acronym “GK” is common to the trade, the defendants would have had to produce substantial evidence to indicate considerable use, in the trade in which the plaintiffs use their “GK HAIR” Mark – meaning, the trade of hair treatment, hair care salons and the like – of marks of which “GK” constitutes the prominent part. Details regarding the extent of use of such marks, which would include details regarding sale of the products or services in which such marks are used, have necessarily to be forthcoming. A mere reference to a proliferation of marks, of which “GK” is a part, cannot suffice to constitute a substantial defence predicated on Section 17(2)(b).

66. The decision in Parakh Vanijya cannot help the defendants as, in that case, the registration of the mark “MALABAR” was subject to a disclaimer against any exclusivity being claimed in respect of the word “MALABAR”. There is no such disclaimer in the present case.

Entitlement of plaintiff to relief against infringement – Section 28(1)

67. Once, thus, it is found, prima facie, that infringement, within the meaning of Section 29, exists, the Court has to proceed backwards to Section 28(1). This is because Section 28(1) envisages, among the rights available consequent on registration of a trademark, the right to remedy against infringement, provided the registration is valid. Thus, while validity of the registration of the plaintiff’s mark is not an imperative for infringement, by the defendant’s mark, to be found to exist, it is the sine qua non for the plaintiff to obtain relief against such infringement.

68. The validity of the registration of the plaintiffs’ mark “GK HAIR” is not in dispute. Indeed, the defendants, who themselves seek to rely on the registration of the mark in favour of Defendant 1, are estopped from questioning the validity of the “GK HAIR” Mark of the plaintiff. The goose-and-gander principle applies.

69. As the proprietor of a validly registered trademark “GK HAIR”, the plaintiffs are entitled to relief against infringement of the mark, in view of Section 28(1).

Relief and considerations of balance of convenience and irreparable loss

70. The Supreme Court has, in Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia44, clearly held that, where infringement is found, prima facie, to exist, an injunction, and nothing less, must follow. Delay in approaching the Court has also been held, in the said decision, not to be a factor inhibiting grant of injunction. The judgment says thus:
“5.  The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.”

71. The considerations of balance of convenience and irreparable loss would also justify grant of interlocutory injunction in the present case. The balance of convenience is clearly in favour of the plaintiffs, as the defendants are using an infringing mark, and, while grant of injunction would only require the defendants not to use a mark of which “GK” is a part, refusal of injunction would result in the plaintiff having to tolerate continued infringement. Refusal of injunction would also be contrary to public interest, as there would be likelihood of further confusion, in the public, between the products of the defendants and the plaintiffs as a consequence of similarity of the marks used by them.

72. The plaintiffs are entitled, therefore, to an injunction, restraining the defendants from using the mark “GK WELLNESS” in any form, in connection with hair care solutions or any other goods or services dealing with hair care or any allied enterprise, pending disposal of the present suit.

73. I have not deemed it necessary to refer to decisions of learned Single Judges of this Court cited by either side as they are merely prima facie opinions at the interim stage – as is this – and cannot, therefore, claim precedential status. At the highest, such decisions would be relevant if they involve marks which are before this Court in the present case, in which case consistency would require this Court to take stock of the decision. They, however, do not.

Conclusion

74. The defendants, as well as all others acting on their behalf, shall, consequently, stand restrained, pending disposal of the present suit, from using the mark “GK WELLNESS” in any form, including the logos , , any domain name of which “gkwellness” is a part, or any other mark which is confusingly or deceptively similar to the plaintiffs’ registered trade mark “GK HAIR”, or for any goods or services dealing with hair care or hair treatment, or any other goods or services which are allied or cognate therewith.

75. The application stands allowed accordingly.

C.HARI SHANKAR, J
DECEMBER 26, 2023

1 (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 (2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the High Court or to the Registrar, and the Registrar or the High Court, as the case may be, may make such order for making, expunging or varying the entry as it may think fit.
3 (2022) 3 SCC 117
4 (2018) 16 SCC 632
5 (1969) 2 SCC 716