Dolphin Mart Private Limited Vs Avenue Supermarts Limited & Anr (Delhi High Court)
Conclusion: In present facts of the case, the Hon’ble High Court while considering the application under Trademarks Act have observed that it is well settled that a composite trademark is not to be dissected to determine whether there is any deceptive similarity with the impugned trademark and comparison has to be by taking the rival marks as a whole.
Facts: In present facts of the case, the Plaintiff Company have the trademark d’mart Exclusif which includes home décor and gifting solutions to connoisseurs ranging from silverware, handmade crystalware, bronzeware, hand crafted marble art pieces, limited edition pieces etc. Case of the Plaintiff is that it coined and adopted the name d’mart in 1992 where prefix ‘d’ represents Dolphin which is the name of Plaintiff Group and the Company and suffix ‘Mart’ was adopted to represent the size of the store which was about 10,000 Sq. ft.Plaintiff has obtained registrations of d’mart composite trademarks in Classes 14, 21 and 25.
Plaintiff states that on 02.03.2017 it came across an advertisement of Defendant No.1 for an Initial Public Offering (IPO) for its supermarket business under the brand DMART for 08.03.2017. On inquiry, Plaintiff learnt that Defendants are engaged in business of running supermarkets under the relevant trademark. Plaintiff also learnt that Defendant No. 1 applied for registration of the trademarks D MART/DMART device/D MART MINIMAX in Classes 14, 21 and 25, which are either objected to by the Registrar of Trade Marks and/or are under opposition. It is this advertisement in the news pertaining to Defendants’ IPO for DMART supermarket, which triggered the filing of this suit.
The Hon’ble High Court observed that for establishing infringement under Section 29(2) of the 1999 Act, Plaintiff would have to prima facie establish similarity/identity of rival marks, similarity/identity of goods such that there is likelihood of confusion amongst the members of the public and/or likelihood of association.
The rival marks are composite marks and their registration will not grant an exclusive right in the word ‘d mart’. Admittedly, Plaintiff does not have registration in the word ‘d mart’. It is well settled that a composite trademark is not to be dissected to determine whether there is any deceptive similarity with the impugned trademark and comparison has to be by taking the rival marks as a whole. This observation was made by the Division Bench in Vasundhra Jewellers Pvt. Ltd. v. Kirat Vinodbhai Jadvani and Another, 2022 SCC OnLine Del 3370, relying on an earlier judgment of the Division Bench in M/s. South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. & Anr., 2014 SCC OnLine Del 1953, wherein the Court while explaining the ‘anti-dissection rule’ reiterated that conflicting composite marks are to be compared by looking at them as a whole, rather than breaking the marks into their component parts for comparison. It was held that while a trademark is to be considered in entirety, yet it is impermissible to accord more or less importance or ‘dominance’ to a particular portion or element of a mark in cases of composite marks.
It was observed that under Section 17 of the 1999 Act, Plaintiff cannot claim exclusivity over the word d’mart in the absence of separate registration and therefore, the rival composite marks have to be compared as a whole without dissecting them into individual elements.
Further, it was observed that it can be easily gleaned from the rival marks that Plaintiff’s mark has the word ‘Dolphin’s’ with a distinct image over the word ‘d mart’, where ‘d’ is in a larger font compared to the word ‘mart’ and on a first impression test, the two words do not come across as a single word. The word ‘mart’ has two spiral lines underneath, depicting a wave, since Dolphin is really the takeaway of the trademarks. On the other hand, the impugned mark of the Defendants is a composite mark with a bright green background and the alphabet ‘D’ is separated from the word ‘Mart’ by a star placed over several horizontal lines in a triangular format. Therefore, prima facie view, the rival marks were not considered to be deceptively similar least of all identical and sans deceptive similarity, which is a sine quo non of infringement under Section 29, there is no likelihood or possibility of confusion on the part of the public and Plaintiff cannot assert infringement by the Defendants.
Further, reliance was placed over the Judgment of Britannia Industries Ltd. v. ITC Ltd. and Others, 2021 SCC OnLine Del 1489, wherein the Court has emphasised and ingeminated that while examining the aspect of deception or confusion, Court has to identify the precise consumer base. It is also observed that there is no doubt that confusion or deceptive similarity is a sine qua non of an action of passing off, but Court is not expected to ferret out points of dissimilarity between two marks and has to only generally assess whether there is a deceptive extent of similarity, irrespective of individual dissimilar features. It is equally undisputed that the test is of a person of average intelligence and imperfect recollection and applying the test, this Court at this stage, is unable to gloss over the differences that Defendants have brought forth between the two rival marks and hold that a case of passing off is made out by the Plaintiff.
On basis of the above, it was observed that the Plaintiff has failed to make out a prima facie case in its favour and balance of convenience also does not lie in favour of the Plaintiff. Rather, the balance of convenience tilts in favour of the Defendants at this stage and it is the Defendants who will suffer irreparable loss and injury if the injunction is granted in favour of the Plaintiff.
Accordingly, the applications were dismissed.
