D’zine Garage Pvt. Ltd. vs. D’zine Cafe FZE

D’zine Garage Pvt. Ltd. vs. D’zine Cafe FZE

AND

D’zine Cafe FZE vs. D’zine Garage Pvt. Ltd.

Decided On: 09.10.2007

Key Words: service mark, domain name, phonetically similar, prior user, online communication, website, class 35, publici juris, generic word, distinctiveness

FACTS: 

The respondent/plaintiff (P) was carrying on the business of a leading interactive agency, specializing in online communication  for a spectrum of the industry, viz., banking, insurance, healthcare, IT etc.. P claimed to be one of the oldest interactive agencies with global presence and extensive experience in this field. In the course of business, P adopted the mark D’ZINE and got it registered in Class 35 in respect of “advertising which includes website building and maintenance, etc.

Plaintiff’s claim-

• The service mark D’Zine is a coined word invented by them;
• P is the first one to adopt D’Zine as a predominant feature of a service mark, corporate name and domain name in the world;
• The mark D’Zine is a unique and distinctive;
• The mark has attracted customers all over India and in several countries abroad;
• P has acquired tremendous goodwill and reputation by long, extensive, open and continuous use and advertisements of the mark D’Zine garage;
• P is doing business worth several lakhs of rupees and the business is increasing steadily all through the years.
• P has invested huge sums of money for advertising their service mark and as part of the corporate name and domain name, and
• The nature of the business is that most of the customers/clients do a search in the internet such as Google or Yahoo and access their website to get details.

The applicant/defendant (D) was also involved in the business of web designing, multimedia presentations, online communication, etc. and using the mark D’zine cafe as a service mark and as part of their corporate name and domain name www.dzinecafe.com. P alleged that D deliberately adopted a similar service mark/trade name D’Zine cafe to cash in on the reputation and goodwill enjoyed by P and  get illicit and quick gains without putting much efforts. The unauthorized and unlawful use of D’Zine cafe was with mala fide intention to make the customers believe the origin of the business.

A suit was later on filed claiming interim injunction which was granted. D filed applications to suspend and vacate the order of interim injunction and also to strike the pleadings and reject the plaint.

CONTENTIONS:

D contended –

• The word D’Zine is a common and universally corrupted and abbreviated form of the mark and word ‘design’, used in SMSes;
• There are in all 1,90,000 search results available on Google over the word D’Zine alone and as such, P did not, and cannot, have the sole and exclusive corporate and domain right over the said common mark and word;
• Dzine grage and dzine cafe are sufficiently different and use of the mark by D cannot create a general confusion or mislead public;
• Dzine is not a coined word and the registration is for a logo only;

HELD:

• There is phonetic similarity between the two marks.
• Dzine is not a generic word and it cannot be said to carry distinctive reference to a particular trade, thus losing its distinctiveness and falling into common use and (Sic) publici juris.
• Since the buisness is the same, the fact that one is Dzine cafe and the other is Dzine garage is insignificant. Use of the similar marks creates confusion in the minds of the clients.
• The prior user is established.
• Dzine is not a common word.

OUTCOME: For all the above reasons, the High Court of Madras awarded interim injunction as prayed.