Order dated 28th September, 2022 in IA No. 9130 of 2022 in CS (Comm) No. 395 of 2022
Hon’ble High Court of Delhi
- The owner of Palm Abrasives, Late Shri Yogesh Gupta, began using the registered trademark APPLESTREE as well as packaging and trade dress in 2008 for a variety of items, including abrasive strips, rolls, paste, and more, as well as silicon carbide waterproof abrasive paper, velcro discs, sandpaper, etc.
- Plaintiff was registered proprietor for goods in Classes 3, 8, 7 and 17.
- In 2021, Mr. Gupta expired and Plaintiff took over the said firm.
- In November, 2021, Plaintiff came across Defendant’s trade mark application for the following mark in Class 3:
- In November, 2021, Plaintiff also found that the Defendant has obtained a registration for the trade mark NUAPPLEPPLAINT in Class 3.
- In January, 2022, Plaintiff became aware of the products sold by the Defendant, i.e. Abrasive Papers. Plaintiff sent a legal notice. Defendant, however, continued to use the impugned trade mark. Thus, Plaintiff filed this lawsuit, inter alia, for injunction forbidding the Defendant from marketing, advertising, or selling any goods using the trade mark APPLEPLANT or any other mark that is confusingly identical to the Plaintiff’s trade mark APPLETREE, which could lead to consumers mistaking the Defendant’s goods for the Plaintiff’s, including goods with similar packaging, get-up, and trade dress.
- The present decision is on the application for Interim relief.
- The marks of the Defendant are identical to or confusingly similar to Plaintiff’s trade mark APPLESTREE. Defendant also copied the trade dress, packaging and advertisements.
- Defendant has reproduced all crucial and distinctive elements of the label mark. The words PLANT and TREE have the same meanings, thus there is a conceptual connection between the two trademarks that gives the appearance that they are related and affiliated.
Defendant’s Main Contentions:
- Due to the concealment of important facts from this Court, the Plaintiff is not entitled to equitable remedy in the form of an injunction. The assertion made in the plaint that the Plaintiff has been using the trademark APPLESTREE since 2008 is untrue and also goes against the information found in the Trade Marks Registry. Some of the invoices on record show that usage of the trademark only started in 2018.
- Marks are not similar.
- Although the remedy requested in the prayer clause is merely for passing off and copyright infringement, the Plaintiff has claimed infringement of the trademark APPLESTREE in the body of the plaint. The replication, however, makes it clear that the current lawsuit is for passing off rather than trademark infringement, and it appears that the Plaintiff’s position has changed as a result of the Defendant’s status as the registered owner of the trademark NUAPPLEPLANT. In arguments, Plaintiff’s counsels during arguments, stated that the argument was limited to copyright infringement and passing off. Thus, this Court need not dwell on aspect of infringement.
- The Defendant has disputed the Plaintiff’s use date of 2008. It is an undisputed position prevailing between the parties that the Defendant’s use date of the contested trademark with regard to the products at issue is from the year 2019. The period of time from the Plaintiff’s first use of the trademark APPLESTREE in relation to the goods in Class 3 remains to be investigated.
- The invoices of Plaintiff from 2008 to 2018 reflect sales under the name “Palm Abrasives”. There is no indication of use of trade mark APPLESTREE. The invoice which prima facies demonstrate use of APPLESTREE are of 2018. Thus, Plaintiff is a prior user.
- Defendant has copied the essential part of the mark APPLE and has merely added PLANT and NU to it as suffix and prefix respectively.
- The two marks have semantic similarity. The words PLANT and TREE are a classic example of synonymy where reading one would bring to the mind of a purchaser the other, which he may have seen as a part of the trademark on an earlier occasion but is unable to decipher the difference on account of imperfect recollection. No purchaser, while buying the products such as Abrasive Paper, will dissect the trademark to find a scientific (botanical) difference between a PLANT and TREE, especially when both are even otherwise synonymous to each other. A purchaser with average intelligence and imperfect recollection would go by the overall and first impression of the trademark and the similarity in idea is likely to cause confusion.
- A comparison of the packaging of the parties shows that both packagings have a dark pink background, colour combination is pink and white and both have image of an apple on the label.
Temporary Injunction was granted in favour of the Plaintiff.
Contributions by: Arjun Nair, Navalmal Firodia Law College