14th August, 2020
High Court of Delhi
CS (Comm) No. 217 of 2020
- Plaintiff was engaged in the business of logistics, transportation and management under the Trademark “DELHIVERY” since 2011.
- Plaintiff had 27 registrations pertaining the mark ‘DELHIVERY’ under Classes 35, 39 and 42 of the Trade Marks Act, 1999.
- Defendant, on the other hand, had started a business in 2014 under the trade mark “SMART-E”. Thereafter, Defendant changed its trademark from “SMART-E” to “DELIVER-E.
- As per Plaintiff, in May 2020, one of the Plaintiff’s employee came across the impugned mark “DELIVER-E” on E-rickshaws..
- Aggrieved by the act of the Defendant, Plaintiff filed a suit against the Defendant to bar him from using such trade mark. An ex-parte interim injunction was passed in favour of the Plaintiff. However, the Defendant sought vacation of the interim order.
The present summary is on the decision of application for interim relief filed by Plaintiff and application of Defendant for vacation of ex-parte order wherein injunction was granted.
- E-mail of advance notice of the suit was not sent to the Defendant intentionally in order to gain an ex-parte order in favour of Plaintiff. The ex-parte order needs to be vacated on this ground alone as the Plaintiff had e-mail address of Defendant.
- There were number of registration by third parties in relation to the generic term “delivery” like Deliver with Love, Deliver, Delivering Joy, Delivery one, and many more.
- Plaintiff has used two very generic terms, that is “Delhi” and “Very” and as such not capable of being registered.
- Refusal to set aside the injunction order, shall give exclusive monopoly to the Plaintiff over a descriptive word that is “delivery”.
- Defendant’s claim is based on its stylized mark “DELIVER-E” and that it does not claim any right over the word “delivery”.
- The ground upon which Defendant has sought vacation of the interim order is not maintainable since the registry of the Court had no pre-condition of sending papers by advance service that is through e-mail only.
- Defendant has changed its trademark to “DELIVER-E” with a mala fide intentions, in order to engage in unfair trade practices and gain illegal profits by making its trade mark as close to that of the Plaintiff’s trade mark.
- “DELHIVERY” is not a generic term, rather it is coined through combination of two words, that is “DELHI” and “VERY”. Defendant has contradicted its own trade mark by raising such an issue, that is, on one hand it states “DELHIVERY” to be descriptive in nature with “DELIVERY”, while on the other hand it is itself using the trademark “DELIVER-E” and has applied for registration of the same.
- Section 31 of the Trade Marks Act, states that registration is a prima facie evidence of validity and hence Plaintiff is entitled to an injunction.
On the ground of no advance service of the suit by E-mail
The Registry of the Delhi High court insists on one mode of service either speed post or e-mail. Thus, service through e-mail was not a requirement and was also not insisted as the advance service was effected through speed post. Further, it cannot be said that not effecting advance service on the Defendant was intentional to get advantage of an ex-parte hearing
- Plaintiff is a registered proprietor. However, the rights conferred upon the Plaintiff are also subjected to exceptions laid down in Section 28 and 29 of the Trade Marks Act.
- A mark can either be phonetically or visually similar and has to be seen disjunctively and not conjunctively.
- Plaintiff has contradicted itself by stating that, the trademark “DELIVER-E” is descriptively similar to its trademark “DELHIVERY”, because Defendant’s mark relate to a generic word “delivery” which means the act of taking goods, letters , etc to the people they have been sent. A routine pronouncement of the word “DELHIVERY” signifies or sounds similar to delivery, which is a generic term, and thus cannot be registered.
- Defendant’s mark “DELIVER-E” is also generic term and thus is not capable of registration.
- Both the Plaintiff as well as the Defendant have only either added or substituted some words in order to make their trademark similar to the generic word “delivery”. While, Plaintiff added ‘H’ in the English word “delivery”, Defendant replaced ‘Y’ with ‘E’ in “delivery”.
- A generic word cannot be registered. Even if such word has been registered, the Court cannot ignore completely the application of generic term involved in the mark and as such a person cannot claim monopoly impressing upon the fact, that his mark is registered..
- The plea of Plaintiff that the Defendant cannot call Plaintiff’s mark generic when it itself has applied for a similar mark is liable to be rejected as the mark ‘DELHIVERY’ being phonetically the generic word ‘delivery’ cannot be registered.
- A comparison of the marks clearly shows that there is no similarity between the marks as some variant marks ‘DELHIVERY’ are with stylized ‘D’, one mark is accompanied by the words ‘SMALL WORLD’ at the bottom in red colour. Whereas the mark of the Defendant is written in green colour with an ‘E’ device positioned in a slant manner.
- Further, Clients of both the parties are companies which surely can differentiate between the marks. Defendant admits that it has only long-term contractual agreements with companies, who are well informed about market realities and further that the contract signed by the Defendant and / or by its subsidiary are not done under the name of ‘DELIVER-E’. It is a settled position of law that a class of persons to whom services are rendered would be a relevant consideration to assess whether the marks are deceptively similar.
- The different numbers of marks cited by the Defendant, clearly indicates that the Plaintiff’s as well as Defendant’s mark can co-exist with the different number of registrations for marks delivery, as cited by the Defendant.
The Defendant’s application under Order XXXIX Rule 4 was allowed and thus the interim injunction granted in favour of Plaintiff was vacated.
 Praveen Kumar Jain v. Rajan Seth and Ors., 2019 SCC Online 8499
Author: Amanya Shree Gangawat, Amity University, Kolkata