In a recent matter of Soothe Healthcare Private Limited Vs Dabur India Limited CS(COMM) 18/2022, the Hon’ble Delhi High Court passed a Judgment dated 03-03-2022 and decided upon the issue of grant of interim injunction in case of trademark infringement.
In this case, Soothe Healthcare Private Limited (Plaintiff) is engaged in the business of manufacturing, marketing and trading personal hygiene products, etc since 2012 and thereafter, it started manufacturing and trading of diapers since January 2020. The Plaintiff obtained Trademarks such as “SUPER CUTESTERS”, “SUPER CUTES” and “SUPER CUTEZ”. The Plaintiff conducted wide publicity of the said Trademarks and famous celebrities also associated with the Plaintiff as Brand Ambassadors. In short, the Plaintiff’s Products gained popularity and reputation amongst general public. Soon thereafter, in October 2021, Dabur India Limited (Defendant) ventured into the business of baby diapers using the Trademark “SUPER PANTS”.
Aggrieved by the Defendant’s use of Trademark that is deceptively similar to the Registered Trademarks of the Plaintiff, two Cease and Desist Notices were issued by Plaintiff to Defendant dated 02-04-2021 and 04-12-2021, thereby, calling upon the Defendant to not use the deceptively similar Trademark “SUPER PANTS” in respect of the identical goods i.e. diapers, in terms of Section 28 of the Trade Marks Act, 1999 (Act) (Rights conferred by registration) and Section 29 of the Act (Infringement of registered trademarks) read with Section 31 of the Act (Limits on effect of registered trade mark).
On the basis of the said Notices, the Plaintiff filed a Suit against the Defendant seeking Permanent Injunction from infringing/passing off the Trademarks of the Plaintiff, before the Delhi High Court in January 2022. The Plaintiff also filed an Interim Application seeking Interim Injunction.
The High Court passed a Judgment dated 03-03-2022 in the Interim Application and made the following observations:
1) The comparison of the Packaging of the following Products sold by the Plaintiff and the Defendant clearly establishes that (a) the only similarity in their Packaging, is the word “SUPER”, (b) the Defendant’s Product prominently displays the name ‘Dabur’ on the Packaging, (c) the color scheme of the Packaging is totally different i.e. the Plaintiff’s Packaging is yellow and orange / blue and yellow, whereas, the Defendant’s Packaging is mainly green color, (d) there is additional material added in the description on the Defendant’s Packaging which clearly distinguishes the Defendant’s Product from the Plaintiff’s Product. Hence, there is no possibility of confusion or deception in the minds of the consumers in relation to the Products of the Plaintiff and Defendant.
2) Further, the word ‘super’ is a descriptive word, as the Plaintiff has used the word ‘SUPER’ at several places on the Packaging such as “Super Soft Feel”, “Super Thinz”, “Super Bubble Technology”, and “Super Absorbent”, which suggest that the Plaintiff’s Products are extremely soft to the body and are highly absorbent.
3) Similarly, the Defendant has also used the word ‘SUPER’ in a descriptive manner i.e. ‘SUPER PANTS’ along with the words ‘Baby’ and ‘Dabur’ to convey that their diapers are of extremely good quality. Thus, taking into consideration the composite Mark i.e. “SUPER PANTS” as well as the Defendant’s Trademark “Dabur” along with the word “Baby”, it cannot be said that the use of the Mark “SUPER PANTS” by the Defendant is not bona fide.
4) Furthermore, the use of the word ‘super’ is common to the trade and other manufacturers/sellers of diapers also use the word ‘Super’ on their packaging in a descriptive manner such as “Super Baby”, “Super Plus Diaper Pants”, etc. Hence, the Mark ‘Super’ does not possess any distinctive character.
5) Further, the Plaintiff has obtained Trademark Registration in respect of the Word Marks i.e. “SUPER CUTESTERS”, “SUPER CUTES” and “SUPER CUTEZ” and not the Mark ‘Super’. Therefore, as per Section 17(2) of the Act, it would not give the Plaintiff the exclusive right to use the word ‘Super’ and hence, it is not entitled to grant of interim injunction. Section 17 of the Act is reproduced below for easy reference:
- Effect of registration of parts of a mark
(1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole.
(2) Notwithstanding anything contained in sub-section (1), when a trade mark— (a) contains any part—
(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or
(ii) which is not separately registered by the proprietor as a trade mark; or
(b) contains any matter which is common to the trade or is otherwise of a non-distinctive character,
the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered.
Based on the aforesaid observations, the Delhi High Court held that the Packaging of the Products sold by the Plaintiff and the Defendant is distinct in several aspects and thus, it cannot be said that the Defendant is passing off their Products as those of the Plaintiff. Therefore, the High Court refused to grant interim injunction in this case. However, the main Suit for Permanent Injunction is still pending before the Delhi High Court.
Senior Legal Associate
The Indian Lawyer