High Court: Test For Determining Similarity Is Possibility And Not Probability Of Confusion

Introduction

Recently in the case of Astral Poly Technik Limited & Anr. v. Astralglee through its proprietor Ms Pooja Surendra Ayre & Ors., the Delhi High Court granted an interim injunction in favor of the Plaintiffs restraining the Defendants from selling, manufacturing or distributing the essential oils under the mark “ASTRALGLEE”, considering its deceptive similarity to the Plaintiffs’ mark “ASTRAL”.

Background

The Plaintiff No.1, manufacturer and distributor of sewage pipes and plumbing fittings and plaintiff No.2, a subsidiary of Plaintiff No. 1 engaged in manufacturing building material, sought an injunction restraining the Defendants from manufacturing and selling essential oils, aroma oils, diffusers and hydrosols under the mark “ASTRALGLEE” claiming that it is deceptively similar to their trademark “ASTRAL”. They claimed that the Plaintiff No.1 had first adopted the mark in 1996 and obtained registrations of the “ASTRAL” in word form as well as a device in class 3.

The Plaintiffs claimed that aggrieved by the Defendants’ attempt to register the mark ASTRALGLEE, they had opposed their trade mark application. The Defendant No.2 did not respond with a counter-statement, and the application was thereafter abandoned. However, the Plaintiffs continued to oppose the use of the Defendants' mark and sent them a legal notice regarding the same, and the present suit was filed when the Defendants refused to discontinue.

On the other hand, the Defendants argued that they have been using the trademark “ASTRALGLEE” since 2018 and that they have also obtained domain name registrations for www.astralglee.com, www.astralglee.in and www.astralgee.co.uk. They also claimed that their products do not in any manner conflict with those of the Plaintiffs’. They further stated that the Plaintiffs were falsely claiming use under class 3 and that they had no real intent to use their mark in the field of products under this class. Furthermore, the Defendants claimed that they had bona fidelity adopted the mark “ASTRALGLEE”, which is a conceptualized term, created by the merging of two words “ASTRAL” and “GLEE”. They stated that their intention was to project that the use of their essential oils would give a blissful experience. Finally, they also stated that the Plaintiffs cannot claim a monopoly over “ASTRAL” being a dictionary word.

However, the Plaintiffs claimed that they had already been using the mark in class 3. Further, they also claimed that their mark was completely incorporated into the Defendants’ mark and therefore amounted to trademark infringement. They also stated that they marketed goods including essential oils under a different brand name however the house mark remained the same.

Decision

Upon considering arguments from both sides, the Court stated that it is already established that the Plaintiff No.1 is the registered proprietor of the mark “ASTRAL'' under class 3, which includes “essential oils”. Referring to Section 29(1) of the Trade Marks Act, 1999 (‘the Act’), the Court stated that this section gives a registered proprietor the exclusive right to use the same in relation to the goods and services in respect of which the trade mark is registered and to obtain relief in respect of infringement.

Further, upon a deliberation of section 28 of the Act and mentioning the principles of deceptive similarity, the Court stated that the test for deceptive similarity is approached from the “point of view of a man of average intelligence and imperfect recollection.” The Court also stated that, “the test while determining similarity is one of possibility and not probability of confusion.” Applying this, the Court found that the two marks were indeed deceptively similar and that there was a risk of an unwary consumer forming an opinion of association.

Taking into account the fact that the Defendants’ mark fully incorporated the Plaintiffs’, the Court also concluded that at least at this stage, it has to be held that the Plaintiffs are the prior adopters and users of the mark.

The Court also noted that just because the Plaintiffs marketed goods under a different brand name did not mean that they could not claim infringement or that they had lost their rights in the mark “ASTRAL”. In fact, the brochures and files presented by the Plaintiffs clearly showed that they had used the mark “ASTRAL” also to identify the source of their goods.

Furthermore, the Court also clarified that the Defendants’ could have had a remedy by filing a petition for non-use cancellation of the Plaintiffs mark. However, they had not filed any such application. The Court also stated that the Plaintiffs’ expansion of business under its house mark “ASTRAL” could not be curtailed, especially when the Plaintiff was a registered proprietor of the mark with respect to those goods.

Finally, the Court found the balance of convenience in favor of the Plaintiffs since the Defendants had already abandoned their trademark application and their other trademark application was also on a proposed to be used basis. Thus, the Court firmly stated, “The defendants have, therefore, entered the market with full knowledge, not only of the plaintiffs, but also of the fact that the plaintiffs assert their right over the said mark and claim that the mark of the defendants is deceptively-similar to its mark.”

On the assertion of “ASTRAL” being a common dictionary word, the Court responded that the word did not have any meaning with regard to the goods in question. The Court stated, “In any case, the registration having been granted in favour of the plaintiffs and the same not been challenged till date, the plaintiffs are entitled to seek protection of their rights in the marks.”

Therefore, the Court found a prima facie case in favor of the Plaintiffs and granted an interim injunction restraining the Defendants from manufacturing, selling or distributing any products including essential oils, under the mark “ASTRALGLEE” or any other mark deceptively similar to the Plaintiffs’ mark “ASTRAL”. The Court also directed the Defendants to remove all listings from their websites and other various e-commerce platforms bearing the mark “ASTRALGLEE” and suspend use of their email IDs, domain names bearing the impugned mark.

Comment:

The Court relied on the natural scope of expansion doctrine to justify the Plaintiffs’ case in this matter. The Court in this case touched upon section 29 and the test for deceptive similarity. However, the question of the likelihood of confusion was not really considered in this decision as the second stem of the section. So far, to conclude, this is an interesting decision where the Delhi High Court found that irrespective of the use of a mark, a suit for trademark infringement may still be maintainable in court. Finally, this case also touches on an important trademark principle of fully incorporated marks.

For any queries, please reach out to Ms. Vrinda Sehgal at vrinda@iprattorneys.com.