By Priya Adlakha and Tanvi Bhatnagar
Natural Ice Cream is one of the most renowned homegrown ice cream brands in India, its wide spread ice cream flavors caters to the tastes of not only the Millennials and Gen Z’s of the country but also of their parents and grandparents.
At the same in the last few years, another home grown brand a.k.a. NIC NATURAL ICE CREAMS also started attracting the consumers with its variety of ice cream flavors.
Both Natural Ice Cream and NIC Natural Ice-creams are available for sale not only on physical outlets spread across India but also on Online Food Delivery Platforms i.e. Zomato and Swiggy.
Since both the ice cream brands were using the mark ‘NATURAL’ prominently and are dealing with identical goods and services, the questions of infringement, misrepresentation, consumer confusion, etc. arose and were brought before the Delhi High Court. Vide order dated November 25, 2022, the parties arrived upon an interim arrangement to conduct their business, without any prejudice upon the merits of the suit deciding their respective rights. Before coming to the interim arrangement arrived between the parties, it is imperative to understand the background of the case.
Facts of the case:
In 2022, Siddhant Icecreams LLP & Ors. (owners of Natural Ice Cream) filed a suit against Partners of NIC Natural Ice Creams seeking a decree of permanent injunction from trade mark infringement along with an application for ad-interim injunction before the Hon’ble Delhi High Court (Siddhant Icecreams LLP & Ors. Vs. Ameet Pahilani & Ors, CS (COMM) No. 735/2022).
Siddhant Icecreams LLP & Ors. claimed that they are engaged in the business of producing marketing, selling, distributing and retailing ice creams, ice cream shakes, and ancillary products and services under the name/style/brand ‘NATURAL’.
In 1984, they devised a revolutionary new machine for artisan ice creams and adopted the mark ‘NATURAL’ as its trade mark and over the years applied and obtained trade mark registrations in classes 29, 30, 35, 42 and 43.The details of some of the registrations are as below:
Siddhant Icecreams LLP has claimed that Ameet Pahilani (Partner of NIC Natural Ice Cream now), was a former partner in one of the franchisees of Natural Ice Cream and post termination of their agreement, he dishonestly registered a mark bearing the name ‘NIC Natural Ice Creams’. Details of the registration is as below:
Natural Ice Creams has also alleged trade dress infringement and claimed that, Ameet Pahilani’s aforesaid mark uses an identical shade of green colour which is used by Natural Ice Cream in course if its business hence, there is a likelihood of confusion among the consumers. Further, Ameet Pahilani has also copied similar packaging as that of the Natural Ice Cream for its NIC Natural Ice Cream. Pictures of packaging of both the entities are reproduced below:
The Plaintiff Natural Ice Cream, succeeded in obtaining an ex-parte ad-interim injunction order dated October 19, 2022 from the Delhi High Court wherein Defendants No. 1 to 3 were restrained from:
- Using Plaintiffs’ marks ‘NATURAL’, ‘NATURALS’ or using ‘NIC Natural Ice Creams’, ‘NIC’, in any form or manner, including any marks identical or deceptively similar, or from adopting same colours, trade dress and packaging for their products so as to amount to passing off;
- Using the domain names ‘nicicecreams.com’, ‘nicnaturalicecreams.com’ or any other domain name or email address or handle containing the mark NATURAL as a part thereof; and
- Using the Plaintiffs’ marks ‘NATURAL’ or ‘NATURALS’ as metatags and/or purchasing the same as keywords under Defendant No. 6’s AdWords programme to advertise their products.
Further, the Hon’ble Court directed Defendants No. 4 and 5 (food delivery aggregators) ensure that Defendants infringing marks, products bearing infringing marks or any marks using the Plaintiffs’ NATURAL Family marks are not displayed in any manner in relation to Defendants No. 1 and 2 and/or in relation to any other party apart from the Plaintiffs, on their respective online platforms or otherwise, and that the Plaintiffs’ NATURAL Family Marks are not displayed in connection with the Defendants No. 1 to 2 business in any manner whatsoever.
Appeal against the Ad-Interim order
The Defendants being aggrieved by the ex-parte order approached the Division Bench of the Hon’ble Delhi High Court in appeal. It is quite pertinent to mention that the Respondent (Natural Ice Cream) engaged a most popular senior counsels in the field of Intellectual Property Mr. Rajiv Nayyar, Mr. Sandeep Sethi and Mr. C.M. Lall to defend the appeal. The appeal was eventually withdrawn with liberty to file a vacation application before the Learned Single Judge, Delhi High Court.
VACATION OF EX-PARTE AD-INTERIM INJUNCTION ORDER:
The Defendants filed an application for vacation of the ex-parte ad interim injunction on the ground of misrepresentation, non-disclosure by the Plaintiffs. However, both the parties came to an interim arrangement, which is as below:
- Defendant No. 2 along with its subordinates, subsidiaries, officers, directors, distributors, agents, franchisees, dealers, servants, and all other persons claiming through or under them or anyone acting for and, on their behalf shall not use ‘Natural’ and/or ‘Naturals’ in any form or manner whatsoever, including the style/manner under the Plaintiffs’ trademark registrations, for any purpose, in relation to ice creams, frozen desserts, gelatos, sorbets, softens, frozen yogurt, sundaes, and Ice Cream- Shakes
- Defendant No. 2 along with its subordinates, subsidiaries, officers, directors, distributors, agents, franchisees, dealers, servants, and all other persons claiming through or under them or anyone acting for and, on their behalf shall not use ‘Natural’ and/or ‘Naturals’ in any form or manner whatsoever, in relation to the aforementioned products on or in relation to any logo, social media, trademark(s), labels, packaging, menus, containers, cups, moulds, stickers, websites, domain names, e-mail addresses, meta-tags, ad-words, physical stores, sign-boards, signages, branding, online listings, online platforms, including platforms operated by Defendants No. 4 and 5, advertisements or on any other medium. Defendant No. 2 shall not in relation to the aforementioned products, use or permit to be used the word ‘Natural’ and/or ‘Naturals’ in any manner on any online platform, including platforms operated by Defendants No. 4 and 5, e-commerce site, including for the purpose of any brand listing, restaurant/outlet listings, product description or any advertisement/promotion;
- Defendant No. 2 shall be entitled to use the mark ‘NIC’ and/or ‘nic’ on its packaging/containers provided that such packaging/container, in relation to ice creams, is distributed and/or sold within the Republic of India. Defendant No. 2 shall also be entitled to display the mark ‘NIC’ and/or ‘nic’ on the side panels of the packaging in appropriate vernacular language, as the case may be, in equal prominence and in a font of size equal to the English representation of the said mark. Defendant No. 2 shall also be entitled to use the mark ‘NIC’ and/or ‘nic’ only in English language on the lid/cap of the packaging/container, without any vernacular representation thereof.
- Defendant No. 2 shall be entitled to use the word ‘NIC’ and/or ‘nic’ in English language alone, without any vernacular representation, on its packaging/containers for products to be sold outside the Republic of India.
- Defendant No. 2 shall be entitled to use the word ‘NIC’ and/or ‘nic’ for communications on social media, menus, cups, moulds, stickers, websites, domain names, e-mail addresses, metatags, ad-words, physical stores, sign-boards, signage, branding, marketing, online listings, online platforms, advertisements, or on any other medium including any online platform, e-commerce site, or any advertisement or for promotion.
- Defendant No. 2 shall not use any packaging/labels/designs/containers/cups/menu/signages/ trade dress/artwork or any other element/characteristic, which are in any manner deceptively similar to the Plaintiffs’ present and/or previous packaging/labels/design/containers/cups/menu/signages/ trade dress/art work or any other distinct element/characteristic including the photographs in documents No. 1 to 7, which have been handed over to Defendant No. 2 and shall be filed in Court during the course of the day.
- Notwithstanding the above, Defendant No. 2 is permitted to distribute and sell its existing unexpired stock of ice creams in the boxes with the printed trademark ‘nicHonestly Natural Ice Cream’ worth Rs. 5.81 Crore. Defendant No. 2 shall not use ‘Natural’ and/or ‘Naturals’ in association with ‘nic’ or otherwise, at any place (particularly online) other than on the packaging and product pictures of the existing packaging
- Defendant No. 2 is permitted to use 50 % of its unutilized existing stock of packaging/labelling under the brand ‘nic-Honestly Natural Ice Cream’, numbering 18, 71, 450 pieces i.e. 935725 pieces to package its ice cream to be manufactured until 31.12.2022, but not thereafter, notwithstanding that Defendant No. 2 is unable to use the aforementioned unutilized existing stock of the packaging or label by that date. Defendant No. 2 undertakes that none of its existing ice cream packaging shall have an expiry date beyond 20.02.2023.
The Hon’ble court further held that in agreement arrived at between the Plaintiffs and Defendant No. 2, Defendants No. 4 and 5 are directed to ensure that except for the product pictures of the existing packaging provided by Defendant No. 2, only for the limited purpose of para 1 (g) and (h) above till 20.02.2023 and not thereafter, they shall not list any product(s), restaurants or outlets of Defendant No. 2 using the word/mark ‘Natural’/‘Naturals’ in any manner or form whatsoever.
The Hon’ble Court did not express its views on the merits of the matter and disposed off the application for vacation of ex-parte ad-interim injunction and the injunction application on the basis of the above interim arrangement.
Red Bull Loses its Wings to STING in Trademark Infringement- India