By Tanvi Bhatnagar and Rima Majumdar
The Plaintiff, a private limited company (manufacturing, marketing and trading in goods related to personal hygiene, sanitary preparations, etc. since 2012) started manufacturing and dealing in baby diapers in the year 2020. The plaintiff got various trademarks like “Super Cutes”, “Super Cutez” and “Super Cutesters” registered for this purpose. The plaintiff had been using these marks publically and thereby gained popularity and reputation in the market. In the year 2021, the Defendant ventured in the business of baby diapers with the trademark “Super Pants”, which according to the plaintiff was deceptively similar to their trademarks “Super Cutes”, “Super Cutesters” and “Super Cutez”. Thereafter, the Plaintiff filed a suit before the Delhi High Court, inter alia seeking interim injunction against the Defendant for the alleged infringement and passing off their trademarks.
Brief facts of the case
In this case, the Plaintiff, Soothe Healthcare Private Limited, was engaged in the business of manufacturing, marketing and trading personal hygiene products, etc. since the year 2012 and thereafter in January 2020, it started manufacturing and trading diapers. The Plaintiff got registered various Trademarks such as “SUPER CUTESTERS”, “SUPER CUTES” and “SUPER CUTEZ” for this business. Plaintiff also conducted wide publicity of the said Trademarks and famous celebrities associated with Plaintiff’s business as Brand Ambassadors. The Plaintiff’s Products gained popularity and reputation among the general public. Soon thereafter, in October 2021, Defendant, Dabur India Limited ventured into the business of baby diapers using the Trademark “SUPER PANTS”.
Aggrieved by the Defendant’s use of a trademark that, according to the Plaintiff, was deceptively similar to the Registered Trademarks of the Plaintiff, two Cease and Desist Notices were issued by Plaintiff to Defendant dated 02-04-2021 and 04-12-2021, inter alia calling upon the Defendant to not use the deceptively similar trademark “SUPER PANTS” in respect of the identical goods, i.e. diapers, in terms of Section 28 of the Trade Marks Act, 1999 (Rights conferred by registration) and Section 29 of the Act (Infringement of registered trademarks) read with Section 31 of the Act (Limits on effect of registered trade mark).
On the basis of the said notices, the Plaintiff filed a Suit against the Defendant seeking Permanent Injunction against the Defendant in order to restrain the Defendant from infringing/passing off the registered trademarks of the Plaintiff, before the Delhi High Court in January 2022. The Plaintiff also filed an Interim Application seeking interim injunction against the Defendant.
Submissions by the Plaintiff
- The Plaintiff contended that the trademark used by the Defendant “Super Pants” was deceptively similar to the registered trademarks of the Plaintiff “Super Cutes”, “Super Cutesters” and “Super Cutez” in respect of identical goods i.e., baby diapers and hence sought interim injunction in terms of Sections 28, 29 read with Section 31 of the Trade Marks Act, 1999.
- The Learned Counsel for the Plaintiff contended that the Plaintiff had been using the trademark since 2020 and hence is a prior user of the aforesaid trademarks with regard to baby diapers.
- According to the plaintiff, the intention of the defendant was not bona fide since the defendant did not provide the plaintiff with a justification to use a similar trademark.
- It was also contended by the plaintiff that the essential elements of the plaintiff’s trademark has been copied by the defendant.
Submissions by the Defendant
- According to the defendant, the word ‘Super’ is a laudatory word and has been used in a descriptive manner by the plaintiff as it has used ‘Super Soft Feel’, ‘Super Thinz’, ‘Super Bubble Technology’, and ‘Super Absorbent’ to describe their product. Hence, the word ‘Super’ is laudatory and descriptive in nature.
- The word ‘Super’ has been in common use by other manufacturers of baby diapers. Hence, it is common to trade. The word ‘Super’ is descriptive in nature and indicates the quality of the product of the defendant. Therefore, no case of infringement can be made in accordance with section 30(2)(a).
- The defendant claimed that it only sought registration of the device mark which includes “Super Pants” along with the registered trademark of the defendant ‘Dabur’ and did not seek registration of the word “Super Pants”.
- The defendant submitted that the registration granted to the plaintiff was only with regard to the composite mark “Super Cutes” “Super Cutesters” and “Super Cutez” and not wordmark ‘Super’. In terms of Section 17 of the Act, registration of a composite mark will not confer any exclusive right to the plaintiff in respect of a part of the said composite mark, i.e. “Super” in the present case.
- Defendant contended that on comparing the packaging of the defendant’s product with that of the plaintiff’s, no similarity could be made out and hence there is no case of passing off.
The High Court passed a Judgment dated 03-03-2022 in the Interim Application and made the following observations:
1. The comparison of the packaging of the following products sold by the Plaintiff and the Defendant clearly establishes that:
(a) the only similarity in their Packaging, is the word “SUPER”,
(b) the Defendant’s Product prominently displays the name ‘Dabur’ on the Packaging,
(c) the color scheme of the Packaging is totally different, i.e. the Plaintiff’s Packaging is yellow and orange / blue and yellow, whereas, the Defendant’s Packaging is mainly green color, and
(d) there is additional material added in the description on the Defendant’s Packaging which clearly distinguishes the Defendant’s Product from the Plaintiff’s Product.
Hence, there is no possibility of confusion or deception in the minds of the consumers in relation to the Products of the Plaintiff and Defendant.
2. Further, the word ‘super’ is a descriptive word, as the Plaintiff has used the word ‘SUPER’ at several places on the Packaging such as “Super Soft Feel”, “Super Thinz”, “Super Bubble Technology”, and “Super Absorbent”, which suggest that the Plaintiff’s Products are extremely soft to the body and are highly absorbent.
3. Similarly, the Defendant has also used the word ‘SUPER’ in a descriptive manner i.e. ‘SUPER PANTS’ along with the words ‘Baby’ and ‘Dabur’ to convey that their diapers are of extremely good quality. Thus, taking into consideration the composite Mark i.e. “SUPER PANTS” as well as the Defendant’s Trademark “Dabur” along with the word “Baby”, it cannot be said that the use of the Mark “SUPER PANTS” by the Defendant is not bona fide.
4. Furthermore, the use of the word ‘super’ is common to the trade and other manufacturers/sellers of diapers also use the word ‘Super’ on their packaging in a descriptive manner such as “Super Baby”, “Super Plus Diaper Pants”, etc. Hence, the Mark ‘Super’ does not possess any distinctive character.
5. Further, the Plaintiff has obtained Trademark Registration in respect of the Word Marks i.e. “SUPER CUTESTERS”, “SUPER CUTES” and “SUPER CUTEZ” and not the Mark ‘Super’. Therefore, as per Section 17(2) of the Act, it would not give the Plaintiff the exclusive right to use the word ‘Super’ and hence, it is not entitled to grant of interim injunction.
According to the Delhi High Court, the plaintiff failed to establish a prima facie case against the defendant as the Packaging of the Products sold by the Plaintiff and the Defendant is distinct in several aspects and thus, it cannot be said that the Defendant is passing off their Products as those of the Plaintiff. The word ‘super’ was also proved to be laudatory or descriptive in nature and it indicates the quality of the product of the defendant hence, no case of infringement could be proved as well. Therefore, the High Court refused to grant interim injunction in this case. However, the main Suit for Permanent Injunction is still pending before the Delhi High Court.
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