Avtar Singh & Ors. v. Sakshi Srivastava & Anr.

Avtar Singh & Ors. v. Sakshi Srivastava & Anr.

CS (COMM) 385/2020

Decided on 04/10/2021

FACTS

M/S Aero Club is a company consisting of four partners, namely Mr Avtar Singh, Mr Harkirat Singh, Aero Traders Private Ltd., and Aero Associates Pvt. Ltd., who own the trademark WOODS in India. They have been using the trademark for Class 25 and Class 3 goods and registered the trademarks under the trade names WOODLAND, WOODLAND (Styled), and other WOODLAND marks on different dates.

From the beginning, the company has been using the trademark WOODLAND to protect its business's uniqueness. As time passed, they expanded their business globally under their brands WOODS and WOODLAND, including apparel like jackets, t-shirts, casual shirts, and sweatshirts.

The Defendants, who are the founders/co-owners of M/s. Siddhi Vinayak Clothes & Concepts, filed an application for the registration of the mark NUWOODLEY, while already using the mark WOODLEY for their apparel range, which was mentioned in the TM Journal for the registry.

The Plaintiffs opposed the trademark application for WOODLEY, stating that it was deceptively and confusingly similar to the trademarks WOODS and WOODLAND, and hence filed the present suit.

Under Section 28 of the Trademarks Act, 1999 (the Act), licensees have the exclusive right to exploit the trademark in relation to the goods for which they are used. The original registrations are regarded as evidence of their validity under Section 31.

CONTENTIONS OF THE PARTIES       

The Plaintiffs argued that the Defendant's trademark, WOODLEY, is causing confusion among customers because it is too similar to their own trademark. They claimed that the visual and phonetic aspects of the two trademarks are alike, and also the font, colour, and background of the WOODLEY trademark are similar to those of the Plaintiffs. Additionally, the inclusion of "Carnaby St. London" under the WOODLEY trademark falsely implies that the Defendant's goods are affiliated with the Plaintiff's brand.

On the other hand, the Defendants claimed that the Plaintiff was aware of their presence and the WOODLEY trademark since 2017. However, they alleged that the Plaintiff strategically waited until 2020 to file a lawsuit, after the Defendants had already opened 22 retail outlets and invested a large sum of money in the brand and retail ventures. The Defendants argued that the delay in filing the suit was done on purpose by the Plaintiff to harm their business.

Moreover, the Defendants contended that the word "WOOD" cannot be exclusively claimed by the Plaintiff, and the styling of the WOODLEY trademark sets it apart from the Plaintiff's trademark, making it distinct. The Defendants also argued that the two trademarks have different phonetic pronunciations. Therefore, they claimed that Section 29(4) of the Act, which deals with the similarity of marks, does not apply to this case as the goods in question are similar but not identical.

The Defendants further stated that the targeted customers of the two companies are different, with the Plaintiff's company catering to the rich and upper-middle class while the Defendant's company caters to the lower-middle class. They argued that their rights are protected under Section 34 of the Act and cited two judgments of the Hon'ble Supreme Court to support their claim.

In addition, the Defendants claimed that this lawsuit was a malicious attempt by the Plaintiff to deviate from the ongoing proceedings under specialized authority, the Trademark Registry, where the parties are already contesting the issue of the similarity of the marks.

Finally, the Defendants argued that the Plaintiff cannot claim exclusivity over the trademark by dissecting "Wood" and "Land" or by removing the "s" from WOODS. They stated that the word "WOOD" is non-distinctive and generic in nature, and therefore exclusivity cannot be claimed under Section 17(2)(b) of the Act. They also argued that the WOODLEY trademark was inspired by the environmental activist Ms Shailene Woodley, who was well-known for her tree-hugging movement. Additionally, the Defendants found various trademarks under Class 25 in the market with similar marks to the Plaintiffs and even discovered that the trademark WOODS was owned by another entity.

COURT DECISION

The Delhi High Court relied on previous cases to make a decision on a trademark issue. In Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories, it was decided that if a trademark imitates essential features of another trademark but has other features that indicate a different trade origin, then it is invalid. In M/S. South India Beverages Pvt. Ltd. v. General Mills Marketing INC., it was decided that if two marks are phonetically similar and used for similar goods, it can cause confusion for customers.

In this case, the Court found that the Defendant's trademark 'WOODLEY' was deceptively similar to the Plaintiff's trademark and that the essential features of the Plaintiff's trademark had been copied. The Court observed that the Defendant's trademark could confuse the minds of customers with average memory.

The Court also dealt with the Defendant's plea, which was based on the principle of anti-dissection. The Court held that if the dominant part of a trademark has similarity, then it is considered an infringement. The Court also observed that the dominant features of a trademark are likely to be remembered by consumers and relied upon for identification purposes. Therefore, the Defendant's claim did not hold ground.

The Court also noted that in some cases, the type of product in question matters when considering customer demographics. For example, goods like premium alcohol, luxury cars, and exclusive perfumes are expected to have more mature and niche customers.

Based on the evidence, the Court decided that the Plaintiff had made a prima facie case and allowed the suit.

COURT ANALYSIS:

The Delhi High Court ruled in favour of M/S Aero Club in the case of Avtar Singh & Ors. v. Sakshi Srivastava & Anr (CS (COMM) 385/2020). The Court held that the Defendant's trademark 'WOODLEY' was deceptively similar to the Plaintiff's trademarks 'WOODS' and 'WOODLAND,' and that the essential features of the Plaintiff's trademarks had been copied. The Court concluded that the Plaintiffs had established a prima facie case and allowed the suit. This decision reinforces the importance of protecting trademarks and preventing confusion in the marketplace.

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