Chanel Ltd. v. Sunder Chemicals Agarbati Works (P) Ltd. and Anr.
2003 (26) PTC 52 (Delhi)
Plaintiff, Chanel Ltd., was a foreign company manufacturing and marketing various types of perfumes and cosmetics and has acquired a worldwide reputation for its trademark CHANEL. The pronunciation of the trade mark CHANEL starts with a “sh” sound and the last three letters drag into a longer sound “NELLE”.
Chanel Ltd. filed a suit seeking an injunction against the Defendant’s infringing use of the mark SHANELLE. Defendant was using the same for identical goods. An interim injunction was sought in the meanwhile pending the disposal of the suit.
Arguments on behalf of the Plaintiff:
• The trademark, CHANEL, belongs to the Plaintiff since the year 1925, when the same was adopted in Great Britain by the Plaintiff’s predecessor-in-title. The said trade mark was adopted on the basis of surname of its French promoter and is reputed and internationally renowned.
• As per Section 28 and 29 of the Trademarks Act, 1999, by virtue of registration, an absolute right of injunction is conferred upon the Plaintiff as soon as the infringing mark is shown to be capable of deceiving or causing confusion.
• The Defendant’s mark SHANELLE is deceptively similar to the registered trademark “CHANEL” of the Plaintiff and by indulging in such use, the Defendant is passing off its products as those of, and for, that of the Plaintiff, as the goods of both the parties belong to the same category.
• Also, there has been no delay at all on the part of the Plaintiff’ since the opposition proceedings and the appeal thereafter is continuing till date and any use during this period is at the Defendant’s own peril.
• Further, even assuming there is delay, that can only adversely affect the Plaintiff’s claim for damages but not the claim for injunction.
Arguments on behalf of the Defendant:
• The Defendant has been using the mark for 17 years and has adopted the mark in a bonafide manner as he has neither adopted the shape of the bottle or the design of the label of the Plaintiff.
• The trademark “SHANELLE” being used by the Defendant is not deceptively similar to the Plaintiff’s registered trademark “CHANEL”.
• A trademark is to be understood in the language in which the mark is written and not by the different pronunciations or different language or nuances of the different language such as French language tone to be adopted in relation to the word “CHANEL” written in the alphabet language but with “CH” being pronounced as “SH”. In India no one will confuse or be deceived between “CH” sound and the “SHANELLE” sound.
• Furthermore, there is an allegedly long delay on the part of the Plaintiff which disables the Plaintiff from claiming any injunctive relief.
Firstly, the Defendant has failed to provide any satisfactory explanation for why its adoption of the mark SHANELLE should not be seen as being prima facie dishonest.
Also, a similarity need not be one in all respects. The court placed reliance upon the case of Amritdhara Pharmacy v. Satya Deo Gupta;  2 SCR 484 in order to decide the question of deceptive similarity and held that the trade marks CHANEL and SHANELLE are phonetically identical. They may also be confused for each other on account of imperfect recollection of spelling of Plaintiff’s trade mark. Differences with regards to the packaging, if any, are visual differences.
The court also considered the plea of passing off and held that there exists confusion and deception prima facie relying upon the principles laid down in the case of Laxmikant V. Patel v. Chetanbhai Shah and Anr.; AIR 2002 SC 275.
As regards the plea of delay and laches raised by the Defendant, the court held that the defense of laches or inordinate delay is a defense in equity. Inordinate delay or laches may defeat a claim for damages or rendition of accounts, but the relief of injunction cannot be refused. The court found merit in the Plaintiff’s argument that where adoption of the mark is mala fide or where trademark is so deceptively similar, delay cannot be a ground to deny the relief of injunction.
For the aforesaid reasons, an order for interim injunction was granted in favour of the Plaintiff.
Author: Paazal Arora, ILS Law College, Pune