Nirma Limited v. Nimma International and Anr.
2010 (42) PTC 307 (Del)
Plaintiff (Nirma Ltd.), was the proprietor of the trademarks ‘Nirma’ and ‘Nima’, registered in 1979 and 1982 respectively, under the class dealing with detergent powder, toilet soaps, etc.
Plaintiff was aggrieved by the Defendants’ (Nimma International and Anr.) use of the marks ‘Nimma International’ and ‘Nimson’s Nima Care’ for its cosmetic products.
Plaintiff filed a suit for permanent injunction against the Defendants seeking to restrain them from using the aforesaid marks as the same amounted to infringement of Plaintiff’s trademarks as well as passing off.
These two trademarks of the Plaintiff have been constantly advertised through various media leading to huge sales, as a result of which the Plaintiff is the largest player in the Indian detergent market and second largest in toilet soaps.
Defendants commenced their business in 1999 and applied for registration of the marks ‘Nimma’, ‘Nimint’, ‘Nirmaline’ and ‘Nima Care’ in 2001.
Their mark ‘Nimson’s Nima Care’ is used for lip guard and white petroleum jelly, and its use is honest as it has been adopted by the first Defendants out of regard for his mother’s nick name ‘Nimma’.
All the Plaintiff’s trademarks are in the name of the company Nirma Chemical Works Ltd., which is separate from Nirma Ltd. (the Plaintiff), and no evidence of assignment of the marks in favour of the Plaintiff exists on record.
(i) Whether the Plaintiff can be said to be the registered proprietor of the said trademarks?
(ii) Whether the mark ‘Nirma’ is worthy of being protected from dilution?
(iii) Whether the marks ‘Nimson’ and ‘Nimma’ are deceptively similar to ‘Nirma’ and ‘Nima’?
Rationale of decision: The documents submitted indicate that the Plaintiff applied for registration of assignment of the marks by their registered owner, and that request is pending before the Trade Marks office. According to previous precedents, as long as there is assignment of trademark, the fact that it is pending registration would not prevent the claimant from bringing an action for infringement. Priority in adoption and use of trade mark is superior to priority in registration.
Rationale of decision: The materials on record prove that the Plaintiff is prior user of the trademark ‘Nirma’, and that the mark has a widespread recognition in Indian detergent and soap market.
(iii) Both are not
Rationale of decision: Applying the previous decisions of the Supreme Court, it was held that the two marks ‘Nimson’ and ‘Nirma’ are phonetically as well as semantically different, and the trade channels and class of purchasers of goods sold under these marks also differ. Hence, ‘Nimson’ is not deceptively similar to ‘Nirma’.
But the case of ‘Nimma International’ is different. Proprietorship of any registered trademark in respect of ‘Nimma’ is not proved through the Defendants’ documents, while the Paintiff’s registration in respect of its mark ‘Nirma’ is strong and has acquired a reputation in three decades. Use of ‘Nimma’ will lead the public to believe that the goods belong to the Plaintiff.
Thus, Defendants were allowed to use ‘Nimson’ but were restrained from using ‘Nimma’, or any other mark including ‘Nima’.
Author: Arunima Bishnoi, Delhi Law Faculty