IN THE HIGH COURT OF DELHI AT NEW DELHI
Citation: CS (COMM) 565/2021 & I.A. 14673-14677/2021
Order dated 12.11.21
FACTS: The WALMART APOLLO LLC. is the world’s largest retailer and runs the chain of large discount department stores, e-commerce stores, and brick-and-mortar retail and wholesale stores all over the world, selling a variety of goods, including but not limited to, home decor items and operated in more than 24 countries under the corporate name and trading style of ‘WAL-MART’/’WALMART’.
The plaintiff, organized and existing under the laws of the State of Delaware, is a wholly-owned subsidiary of Walmart In. and subsequent proprietor of the trade mark WALMART/WAL-MART in India. All rights to the mark WALMART/WAL-MART were assigned to the plaintiff by virtue of a Deed of Assignment dated 31.01. 2018 between the plaintiff and CS(COMM) 565/2021 Page 2 of 5 Wal-Mart Stores, Inc.
It is alleged that the plaintiff is the registered proprietor of the trademarks in India. And is the world’s largest retailer and runs a chain of large discount department stores, e-commerce stores, and brick-and-mortar retail and wholesale stores all over the world, selling a variety of goods, including but not limited to, home decor items. In August 2007, the plaintiff entered the Indian market through a Joint Venture called ‘Bharti Wal-Mart Private Limited’, launching in April 2008 and the first Best Price Modern Wholesale store in May 2009.
The plaintiff’s trademark/ trade name WAL-MART/WALMART is registered in relation to retail and wholesale services in Class 35 in at least 90 jurisdictions of the world, including India. The plaintiff has been using the trademark WAL-MART/WALMART as its trademark and as part of its trading style since 2008 in India.
It is alleged the spark in yellow colour was first put into commercial use in June 2008 and represents innovation, creativity and diversity. The mark with or without the word mark WALMART, CS(COMM) 565/2021 Page 3 of 5 has become an integral part of the Plaintiff’s goodwill and is exclusively identified with the plaintiff, worldwide. Hence, the sales figure in USD of plaintiff is given in para No.13 of the application. 11. It is alleged that the plaintiff is the registered proprietor of the trademarks in India as mentioned in para No.15 of the application.
In 2020 the plaintiff became aware of the trademark application for the mark WMART under Application no.4411997 in Class 25 filed on 18.01.2020 about the use of the mark since 2019 and running a website at www.wmartretail.com created on January 24, 2020 where defendant are advertising and attracting the customers using the Impugned mark.
In remark a letter was sent to the defendant to stop the use of the impugned trademark and the defendants in the reply refused to stop the use stating that they had adopted the mark in good faith. Another letter was sent to the defendants stating WMART is deceptively similar to the Plaintiff’s registered and well-known mark WALMART/WAL-MART and both marks being identical shall create confusion in the minds of the customer.
The plaintiff has filed the opposition proceedings which are currently pending before the Registrar of Trademark.
The plaintiff’s case was Prima facie and they filed a suit for permanent injunction, infringement of trademark, infringement of copyright, passing off, declaration of a well-known mark, rendition of account of profits under the Trade Marks Act, 1999 and Copyright Act, 1957 in respect of its trademark WALMART/WAL-MART against the defendants.
ISSUES: 1. whether the plaintiff has a prima facie case under Trademark Protection?
2. Whether the application filed against the defendant is lawful?
3. Whether the case of a similar trademark falls under the category of trademark infringement under the act?
PRINCIPLEs: “Principle of Good faith” and “Bona Fide practice” is not considered under this case as it violated the rights of the plaintiff.
HELD: Considering the submissions made above, the comparison of the two marks would show the plaintiff has a prima facie case and in case the defendants are not restrained ex parte, to use the trademark, the plaintiffs will suffer irreparable loss and injury.
Compliance of Order 39 Rule 3 of the CPC was passed and The court orders and states that the defendants, their successors, servants, agents, licensees, franchisees, representatives, sister concerns, assignees, and anyone acting for and/or on their behalf are restrained using the trademarks WMART and/or any other mark deceptively similar/identical to the Plaintiff’s trademarks WAL-MART / WALMART, as a trademark/trade name/trading style/domain name with respect to their goods and/or services or in any manner whatsoever, which would amount to infringement of the registered trademark of the Plaintiff and passing off the goods/services of the defendants as the goods/services of the plaintiff.
Later, Plaintiff moved this application under Section 152 CPC for correction in para No.21 of the order dated 12.11.2021. 2. The defendants are yet to be served in the matter and considering the nature of prayer, no notice is being issued to them.
Relevant Judgements:
1. Yahoo!, Inc. v. Akash Arora & Anr. 2
The domain names owned by the Plaintiff and the Defendant, ‘Yahoo!’ and ‘Yahoo India!’ respectively, were almost identical and similar. The plaintiff argued that this similarity would confuse and deceive users and lead them to believe that the two domain names were connected. The Delhi High Court held that a domain name serves the same function as a trademark and is entitled to equal protection. The court held that internet users would be confused and deceived into believing that both the domain names have the same source. The defendant claimed that it had put a disclaimer on its website. However, it was observed that a mere disclaimer was not sufficient. The name acquired distinctiveness and uniqueness and was largely associated with the plaintiff. The Court ruled in favour of the Plaintiff.
2. H&M Hennes & Mauritz AB Anr. v. HM Megabrands Pvt. Ltd. & Ors. 3
The Plaintiff, a well-known fashion brand with thousands of outlets worldwide, had adopted the ‘H&M’ trademark in 1970 and it was registered in India in 2005. The Plaintiff alleged that Defendant had infringed their trademark by representing their ‘HM’ mark using the same colour combination of red and white as used by the Plaintiff. The Defendant contended that their usage and adoption of the mark was innocent and that the mark stood for the names of their directors and further argued that since the Plaintiff entered the Indian market much later, their mark had not acquired any reputation in India when they adopted their ‘HM’ mark in 2011. The Court ruled in favour of the Plaintiff and held that in case of a brand having trans-border reputation it is not necessary for it to set up shop in India for its trademark to be protected in India. Hence, the Defendant was restrained from using the ‘HM’ mark or any other deceptive variations of the same.
3. Pidilite Industries Limited v. Poma-Ex Products & Ors 4
In this case, the Defendant was alleged to have dishonestly used the mark ‘KWIK’, a part of Plaintiff’s trademark. The Defendant was using the trademark ‘KWIK HEAL’ and the packaging of the product was similar to Plaintiff’s ‘FEVIKWIK’ product. The High Court of Bombay held that the mark ‘KWIK’, being a dominant part of the trademark of the Plaintiff, cannot be adopted by the Defendant. The court further held that the phonetic similarity between the marks would easily mislead and deceive the consumers. ‘KWIK’ was held to be a dominant part of the Plaintiff’s trademark and an injunction was granted restricting the Defendant from using the same.
by
Shreya P
Intern
for court order: http://delhihighcourt.nic.in/dhcqrydisp_o.asp?pn=209390&yr=2021
[1] Order 39 Rule 3,Before granting injunction, Court to direct notice to opposite party.
[2] 1999 IIAD Delhi 229, 78 (1999) DLT 285
[3] 2018 (74) PTC 229 (Del)
[4] 2017 (72) PTC 1 (Bom)