2019 (77) PTC 222 (Del)
Plaintiff was using the mark ‘BLUE HEAVEN’ since 1972 for cosmetic products. Defendant started to use the mark ‘MISS HEAVEN’ in the year 2016 for identical goods. Plaintiff filed a suit for infringement of trade mark and passing off against the Defendant. Along with the suit, the Plaintiff also filed an application for interim relief. The present summary is of the order of the Hon’ble High Court of Delhi on the said application.
The photograph of product of both parties is provided herein below:
- Plaintiff does not have a separate registration for the word ‘HEAVEN’ and thus cannot claim exclusivity with respect thereto.
- The term ‘HEAVEN’ is also common to trade and thus as per Section 17 (2) (b) of the Trade Marks Act, 1999 cannot be exclusively appropriated.
- There are 21 registered trade marks in Class 3 with the word ‘HEAVEN’ forming a part of them.
- Since cosmetics are associated with beauty, a beautiful person is considered to be on the ‘seventh heaven’ or said to be having ‘heavenly looks’; thus, the word ‘HEAVEN’ qualifies as common to trade.
- Perusal of the list of marks filed by Defendant shows that the same are distinct from the marks of the parties herein, either to the prefix or suffix to the word ‘HEAVEN’ or use of the word ‘HEAVENS’ or ‘HEAVENLY’ which are distinguishable from the word ‘HEAVEN’. Even otherwise, without knowing the weight and volume in the market of the said products, merely from the list, it cannot be said at this stage that the word ‘HEAVEN’, which otherwise is not relatable to cosmetics is common to the trade of cosmetics.
- I have not known of ‘looking heavenly’ being used to complement beauty of face or being considered in praise of a beautiful face. Similarly, I cannot comprehend anyone, even if considering self beautiful, describing self as in ‘seventh heaven’. The same, can be comprehended in praise of a place or locale or weather, but neither of which is attributable to cosmetics.
- From a bare perusal of the danglers, an attempt by the Defendant, to ride Plaintiff’s goodwill is evident. The consumers, in the habit of and / or used to buying the goods of the Plaintiff, identifying them on the danglers aforesaid hung in the shops selling the said goods, owing to similarity in the danglers of the Defendant with the danglers of the Plaintiff, are likely to ask for and buy the goods of the Defendant.
- Such consumers, considering the other similarities in the two set of danglers and the size and shape of the products, are also unlikely to distinguish between the two from the difference in the word preceding the word ‘HEAVEN’, i.e. ‘BLUE’ in the mark of the Plaintiff and ‘MISS’ in the mark of the Defendant.
- The word ‘HEAVEN’ is found to be the dominant part of the mark of the Plaintiff, by which the consumers thereof are likely to remember / recall the product of the Plaintiff.
The Defendant was restrained from using the trade mark ‘MISS HEAVEN’ or any other mark/name identical or deceptively similar to ‘BLUE HEAVEN’ and/or from otherwise passing off its goods as those of the Plaintiff.
 Section 17, Trade Marks Act, 1999 – 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.