Party Applying For Registration Of A Particular Trademark Estopped From Claiming That It Is A 'Descriptive' Mark: Delhi High Court

The Delhi High Court recently confirmed the ex-parte injunction granted in favour of "Plant Powered", an entity involved in sale and distribution of baby care and personal care products, in a trademark infringement suit. The Court rejected the contention of the Defendant, also said to be using the name 'Plant Powered' as a trading style for identical goods, that the impugned term is a descriptive mark and there can be no monopoly over the same. Justice Pratibha M. Singh was of the view, "the fact that the Defendant itself applied for the trademark application and registration of the mark 'PLANT POWERED' means that they are estopped from claiming that the same is the description of the product." The Judge further noted that the product of the Defendant is not described with any prefix on the website of Amazon. In fact, it is described as 'Plant Powered'. Thus, it is clear that the mark 'Plant Powered' is being used as a trademark and not as a description of the products. Reliance was placed on Automatic Electric Limited v. R. K. Dhawan & Ors., 77 (1999) DLT 292, where it was held that since the defendant itself has sought to claim trade proprietary right and monopoly in "DIMMER DOT", it does not lie in their mouth to say that the word "DIMMER" is a generic expression. The High Court also held that products of both the Plaintiff and the Defendant are being sold on e-commerce platform Amazon. Thus, when a user searches the product 'Plant Powered', it would automatically throw up the results with the Plaintiff's and Defendant's product, "which ought to be avoided". Background The Court was hearing a suit filed by Mother Sparsh Baby Care Pvt Ltd, seeking permanent injunction, restraining infringement of trademark, passing off, and other reliefs in respect of the trademark 'Plant Powered'. The Plaintiff claimed to be incorporated in the year 2016 and to have adopted the trademark 'Plant Powered' in the year 2019. Further, it was claimed that the sales of the Plaintiff's products since the year 2019 is Rs.5.95 crores, and the promotional expenses are over Rs.4 crores. It was argued that upon gaining knowledge of the Defendant's activities, the Plaintiff issued a cease and desist notice to the Defendant. However, instead of responding to the same, the Defendant wrote a complaint to Amazon, raising a grievance against the Plaintiff's products, which resulted in an Plaintiff's products being delisted from Amazon. "Thus, the Defendant chose not to reply to the legal notice, but parallelly, took action against the Plaintiff. This shows the mala fide and dishonest nature of the Defendant's conduct," it was argued. The Defendant on the other hand claimed that 'Plant Powered' is a descriptive mark. Further, that their products are clearly distinguishable as the house mark 'Mother Sparsh' is used by the Plaintiff for its products. Defendant submitted that it should also be permitted to use the mark 'Plant Powered' along with the logo 'Bio International' or 'Bo International'. Reliance was placed on ITC Ltd. & Ors. v. Britannia Industries Ltd., [2021 SCC OnLine Del 1489] to argue that once there is a house mark which a distinguishing factor between the two parties, if the Defendant adds the name 'Bo International' or 'Bio International' as a prefix to their mark, it would be sufficient to distinguish the Defendant's products from the Plaintiff's products. Findings The High Court was prima facie convinced that the Plaintiff is the prior adopter and the user of the said mark since the year 2019. "The words 'PLANT' and 'POWER' by themselves, when considered as standalone words, may be descriptive. However, when used in conjunction with each other for identical products, there is likely to be confusion between the Plaintiff's products and Defendant's products, as is clear from the invoices which are placed on record by the ld. Counsel for the Defendant even today," it held. Reliance was placed on Godfrey Philips India Ltd. v. Girnar Food and Beverages Pvt. Ltd., (2004) 5 SCC 257, where it was held that a descriptive trade mark may be entitled to protection if it has assumed a secondary meaning which identifies it with a particular product or as being from a particular source. The Court also noted that there appears to be some manipulation of the e-way bill and tax invoice which has been placed on record by the Defendant. "The tax invoices claim that the products sold are of 'PLANT POWERED', whereas in the e-way bill, there is no mention of the mark 'PLANT POWERED'," it noted. In light of the aforesaid, the Defendant was injuncted during the pendency of the suit, from using the mark 'PLANT POWERED' conjunctively in relation to baby care or personal care products or any other goods falling under Classes 3 and 5, including but not limited to, face wash, face cream, shampoo, etc., and/or such allied and cognate...

Party Applying For Registration Of A Particular Trademark Estopped From Claiming That It Is A 'Descriptive' Mark: Delhi High Court

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