The Delhi High Court has recently granted an interim injunction in favour of Havells (Plaintiff) in relation to the use of a mark structurally and phonetically similar to its trademark “Reo”. The renowned electrical and power distribution equipment manufacturer had filed an application under Order XXXIX Rule 1 & 2 of the Code of Civil Procedure, 1908 in CS (Comm.) seeking relief from trademark infringement, passing off of its goods, and for ancillary reliefs.
Case Background
Somewhere in October 2024, it surfaced to the Plaintiff, through its distributors and dealers, that the Defendant (CAB-RIO Industries & Ors.) was engaged in selling electrical wires and cables under the mark ‘CAB-RIO’- the mark in question. The Plaintiff moved to the Hon’ble Delhi High Court aggrieved on the fact that the mark in question was phonetically and structurally similar to its mark Reo; which the Plaintiff introduced as a brand in 2012 and that the same was declared as a “well-known mark” by the Hon’ble Delhi High Court in 2024.
I. Plaintiff’s Claims
There are two broad aspects which the Plaintiff highlighted in the present case-
a. ‘adoption’ and ‘usage’ of its mark Reo,
b. structural and phonetic similarity between the two rival marks
In relation to the first aspect, the Plaintiff adopted the mark ‘Reo’ in 2012 and had been using it since then. In relation to the same, the Defendant’s earliest use of its mark was in 2019 by which time Plaintiff acquired immense goodwill and reputation. Furthermore, that since Plaintiff acquired immense goodwill w.r.t. Reo, it was highly unlikely that Defendants were unaware of the presence of ‘Reo’ in the market.
In relation to the second aspect, it was highlighted that the customers of the products of Plaintiff and Defendants were the same- contractual workers/builders, who usually do not read the mark on the product’s packaging. Since these customers were of average intelligence and imperfect recollection, the phonetic and structural similarity between the two rival marks was likely to cause confusion.
II. Defendants’ Submissions
The Defendants submitted that the adoption of the mark ‘CAB-RIO’ was done in 2017. Since the mark was registered in favour of Defendants, they were entitled to seek protection u/S 28(3) of Trade Marks Act, 1999. In light of the same, it was submitted that the Plaintiff can only make a case of passing off and cannot make a claim for infringement.
It is pertinent to note that the Defendants in relation to its claim w.r.t. ‘adoption’ of mark in 2017, put forth that from 2012 (i.e. Plaintiff’s adoption of Reo) to 2017 (i.e., Defendant’s adoption of CAB-RIO) the Plaintiff did not use its mark Reo.
Additionally, it was also pressed that while comparing two marks in question, the marks have to be seen as a whole and that letter-by-letter comparison cannot be done.
III. Analysis & Findings of Court
i. Rights of prior user are superior
Referring to the decision in Syed Mohideen v. P. Sulochana Bai [(2016) 2 SCC 683] it was observed that the rights of prior user are superior to the rights of a subsequent user. Further the prior user’s rights remain unaffected by registration granted under the Trade Mark’s Act, 1999.
ii. Three elements of passing off
As held in above-mentioned Syed Mohideen’s judgment, following are the three elements necessary for a case of passing off- (a) misrepresentation by defendant, (b) goodwill and reputation gained by plaintiff, (c) damage to the goodwill and reputation of plaintiff due to defendant’s actions. This court also highlighted that for a claim of passing off, both the prior user and subsequent user getting registration is irrelevant.
iii. Determining deceptive similarity between competing marks
When dealing with the aspect of deceptive similarity between competing marks, the following things need to be considered-
a. The nature of marks- whether label mark, composite or word mark
b. The degree of resemblance/similarity between the marks
c. Nature of the goods for which the marks are used
d. Similarity in the nature, character and performance of the goods
e. Class of purchasers of the goods of competing marks in question, their education, intelligence and the care likely to be used by them when purchasing the marks
f. Mode of purchasing goods
g. Any other surrounding circumstance relevant w.r.t. the extent of dissimilarity between competing marks.
The Court took into consideration that despite the Defendants adopted the mark ‘CAB-RIO’, a prominent part i.e., ‘RIO’ is phonetically and structurally similar to Plaintiff’s mark. Therefore, the aspect of similarity has to be decided from the point of view of a consumer of average intelligence and imperfect recollection.
It was also observed that since the Defendants were the later users of their mark, they ought to have been aware of the Plaintiff’s mark (considering the significant turnover of the Plaintiff’s product having mark “Reo”).
Additionally, the Court also observed that the customers who purchased the products of the Plaintiff and the Defendants would not generally take into consideration the difference in the logo and color scheme of the Plaintiff and Defendants’ products and draw a distinction accordingly.
Taking all these aspects into consideration, the Court held that the Defendants’ use of mark ‘CAB-RIO’ was deceptively similar to ‘Reo’ i.e., the mark of the Plaintiff. Further, such use by the Defendants shall cause irreparable loss, harm and damage to the goodwill and reputation of Plaintiff; and is likely to cause confusion in the market as well (and also to the public). Accordingly, the Defendants were injuncted from using or dealing in any manner under the mark ‘CAB-RIO’ or any mark phonetically/structurally similar to the Plaintiff’s mark ‘Reo’ in relation to electrical cables, wires or other related goods.
It should however be noted that these observations were made only for the Plaintiff’s application under Order XXXIX Rule 1 and 2 of CPC and shall not have a bearing on the final outcome of the suit.
Authors: Malabika Boruah & Tushar Gerewal