Delhi High Court Restrains ‘Monsoon Harvest’ In Trademark Suit: Mere Use of Prefix is Not Sufficient to Distinguish Two Marks
Delhi High Court Restrains ‘Monsoon Harvest’ In Trademark Suit: Mere Use of Prefix is Not Sufficient to Distinguish Two Marks
The Delhi High Court by its single judge Justice Navin Chawla while ruling in favor of ‘Monsoon Harvest Farms’, has observed that mere use of a prefix may not be sufficient to distinguish the two marks.
In the present case, the plaintiff- Preetendra Singh Aulakh had filed a suit against Green Light Foods Private Limited alleging that the entity had copied its trademark “Monsoon Harvest Farms” with a dishonest intention with a dishonest intention to deceive the consumer and the public. Such adoption and use of marks, as per the suit, amounted to infringement of Aulakh’s trademarks, passing off, and unfair competition.
The first issue that was determined by the Court was whether the two marks, which were, ‘MONSOON HARVEST FARMS’ of the plaintiff and ‘WINGREENS MONSOON HARVEST’ of the defendant, were deceptively similar to each other.
The Court was of prima facie view, the two marks were deceptively similar to each other. The addition of the word ‘WINGREENS’ to the marks of the defendant was not sufficient to bring about a distinction in the two marks. The test to be applied in determining whether the marks in question are deceptively similar to each other is that of an unwary purchaser with an average intelligence and imperfect recollection.
The judge held, “therefore, mere addition of the word ‘WINGREENS’ cannot reduce the deceptive similarity of the mark of the defendant with that the plaintiff. I find that even with this addition there is a strong likelihood of the defendant’s mark being confused with the mark of the plaintiff. Accordingly, I find that the two marks in question are similar to each other.”
The second issue was whether the Rule of Estoppel could be applied on stand taken before the Registrar of Trade Marks by the plaintiff.
The Court noted that because both the parties had taken contradictory stands before the Court and before the Registrar of Trade Marks, the principle of estoppel, if it were to be applicable, shall apply equally to both the parties, therefore leaving for the Court to determine whether the two marks could be said to be similar to each other or not.
While applying the test of determining ‘allied/cognate goods or services’ as laid down in FDC Limited vs. Docusuggest Healthcare, (2017), the Court observed that the respective goods of the plaintiff and the defendant were under the umbrella of food items; the plaintiff deals in the sale of raw and unprocessed agricultural and horticultural products, while the defendant sells processed food items such as granola bars, energy bars, cookies, bread and other confections. The intended purpose for both the plaintiff and the defendant is to market and sell their food items to the public at large. The respective users of the goods of both the parties are the end point retail consumers. The plaintiff and the defendant were entities which come under the food industry.
Therefore, the Court in prima facie opinion found that the goods of the plaintiff and the defendant were allied and cognate products.
Considering the question of whether the activities of the appellant therein were likely to cause confusion in the mind of the average consumer and tarnish the goodwill of the respondent therein in its product, the Court relied on the decision in Montari Overseas Limited vs. Montari Industries Ltd., (1995), to affirm that there would be confusion in the minds of the consumers based on a future trade progression of the plaintiff.
“Applying the above principle, due to the plaintiff expanding into the selling of processed food items, which can be considered as a natural trade progression of its already existing field of business, in my prima facie opinion, there would be confusion in the mind of the average consumer who would likely mistake the goods of the defendant bearing the impugned mark with those of the plaintiff or as originating from the plaintiff,” the Court held.
With respect to whether the exception under Section 34 of the Act could be applied to the present case. The Court observed, “once it is held that the goods of the plaintiff and the defendant are allied and cognate, the exception carved out in Section 34 of the Act would not apply. It is applicable where the goods of the defendant are different from the ones in which the plaintiff deals in and the defendant is shown to be the prior user of the mark for such goods. It cannot apply where the defendant is using identical or similar marks to that of the plaintiff, and for goods which are similar to those of the plaintiff.”
The defendant, therefore, in prima facie opinion, was not entitled to the benefit of Section 34 of the Act, opined the judge.
In view of the foregoing observations, the Court appositely stated that the balance of convenience was also in favor of the plaintiff and against the defendant inasmuch as the plaintiff is the prior adopter of the mark and was likely to suffer grave irreparable injury in case the defendant is not restrained from selling its products using similar marks for similar goods.
Accordingly, it disposed the application.
