Plaintiff’s marks,Defendants’ impugned marks,,,,,
,,,,,,
3.2. The earliest application, which the plaintiff claims to have been filed, is dated 14.05.2009, in which the user is claimed from 01.01.2002. This",,,,,,
application is followed by six applications, out of which four applications are dated 02.07.2012, in which the date of the user is set forth as 01.12.2005.",,,,,,
Insofar as the other two applications are concerned, they are dated 13.07.2018 and the date of the user is indicated as 01.04.2016.",,,,,,
3.3. Besides this, the plaintiff has also asserted, in paragraph 12 of the plaint, that it has applied for registering its trade mark “am:pm†in all",,,,,,
classes including Class 42, in which the impugned mark is registered. In the said paragraph, there is a reference to other pending applications, as well.",,,,,,
3.4. The details concerning the revenue generated by the plaintiff and the expenses, include the following:",,,,,,
(i) The plaintiff claims that it generated a revenue of Rs. 2,70,15,654/- in 2009-2010, which stood enhanced to Rs. 28,73,05,481 in 2018-2019.",,,,,,
(ii) Likewise, insofar as expenditure incurred on the promotion of the trade marks is concerned, the plaintiff claims to have substantially increased its",,,,,,
expend, from Rs.10.86 lakhs to Rs.1.08 crores in 2018-19.",,,,,,
3.5. Besides this, the plaintiff, to demonstrate the visibility of its trade mark, has adverted to the fact that various celebrities are associated with the",,,,,,
AMPM brand, in myriad ways. There is also a reference in paragraph 18 of the plaint to shows/events, which the plaintiff claims to have held in",,,,,,
various parts of the country.,,,,,,
3.6. It is claimed that the plaintiff is the owner of the domain name www.ampm.in. It is asserted that this domain name was registered on 22.12.2008.,,,,,,
3.7. According to the plaintiff, its products/goods are sold under the AMPM mark, both through outlets, and e-commerce platforms, such as Amazon,",,,,,,
Myntra, Nykaa, AZA, Carma, Ogaan, amongst others.",,,,,,
3.8. It is also claimed by the plaintiff that, it has a presence on various social media platforms, including, but not limited to, Facebook, Twitter,",,,,,,
Instagram, Pinterest and YouTube.",,,,,,
3.9. Furthermore, it is claimed by the plaintiff that, it has won various awards, such as the Elle Style Awards.",,,,,,
4. It is the case of the plaintiff that, it became aware that the defendant was operating its business in breach of the impugned mark, in May 2020.",,,,,,
4.1. The plaintiff claims that the impugned mark, for the first time, was noticed in the form of a pop-up advertisement on Instagram. According to the",,,,,,
plaintiff, the pop-up advertisement was linked to https://www.instagram.com/ampm_designs/.",,,,,,
4.2. It is also the assertion of the plaintiff that, upon its representative checking the internet, it found a website under the domain nameâ€"",,,,,,
www.ampm-designs.com [hereafter referred to as ""impugned domain name""]. A perusal of the said website, according to the plaintiff, revealed that it",,,,,,
is a portal dealing and/or providing services, under the impugned mark.",,,,,,
4.3. According to the plaintiff, the Whois records revealed that the aforementioned impugned domain name was registered by the defendants on",,,,,,
25.10.2015. It is asserted by the plaintiff that, a perusal of the WayBackMachine portal revealed that, the impugned domain name had become",,,,,,
operational, as recently as 08.01.2018.",,,,,,
4.4. It is also the assertion of the plaintiff that, the defendants have wrongly used the symbol ®, along with the impugned mark “AMPMâ€.",,,,,,
4.5. It is, however, not disputed by the plaintiff [something which is mentioned in the plaint], that the defendants have obtained registration for the",,,,,,
impugned mark under Class 42.,,,,,,
4.6. What is sought to be highlighted is that, these applications were filed only on 03.05.2019, with an endorsement that the said marks were",,,,,,
“proposed to be usedâ€.,,,,,,
4.7. The plaintiff avers that, its registered marks, along with the formative marks are well-known, not only in India but throughout the world.",,,,,,
4.8. Likewise, it is claimed by the plaintiff, as noticed above, that, the clothes and accessories, in which it deals, are sold not only in India but also in",,,,,,
various parts of the world. The plaintiff claims to be a prior user of the mark i.e., AMPM. The plaintiff asserts that the impugned mark, not only",,,,,,
infringes its statutory rights but also violates its common law rights.,,,,,,
4.9. The plaintiff submits that, the use of the impugned mark has diluted, degraded, and tends to erode the goodwill, which the plaintiff has, assiduously,",,,,,,
built around its AMPM marks.,,,,,,
Defendants’ assertions:-,,,,,,
5. On the other hand, the defendants, as regards the creation of the ampm mark, have a somewhat similar story. It is claimed that they are in the",,,,,,
business of “interior design and lighting solutionsâ€.,,,,,,
5.1. The mark ampm, according to the defendants, is an acronym for the names of the owners of the mark i.e., Akash Anil Mehta and Poonam",,,,,,
Mehta. 5.2. It is claimed that they [i.e., the owners of the ampm mark] entered into wedlock, on 09.12.2012. It is also claimed that their business of",,,,,,
interior design and lighting solutions was carried out, to begin with, under the umbrella of a proprietorship concern, which morphed into a partnership",,,,,,
firm.,,,,,,
5.3. According to the defendants, they have been using the ampm mark, since 2014, which is, when the proprietorship concern was set up. It is the",,,,,,
stand of the defendants that, the use of the impugned mark continued, even after the formation of the partnership firmâ€"which occurred in 2017.",,,,,,
5.4. The advertisement spend and the revenue generated by the defendants is modest, as compared to the amounts spent by the plaintiff. According to",,,,,,
the defendants, between 2017 and 2020, they have spent towards advertisement (approximately) a little over Rs. 10 lakhs.",,,,,,
5.5. Insofar as the revenue that they have generated, it is claimed that it has increased from Rs.7,00,994/- in 2014-2015 to Rs.1,00,27,712/- in 2019-",,,,,,
2020.,,,,,,
5.6. The defendants also claim that they have received feedback and testimonials from their customers; a reference qua the same is made in,,,,,,
S. No.,Name,"Application
No.",Class,"Date of
Application",Logo,Status
1.,"AMPM
Proprietor: Atlantic
Richfield Co.",660630,25,27.03.1995,,"Rectification
filed
2.,"AMPM
Proprietor: Elder
Pharmaceutical
Ltd.",594210,3,08.04.1993,,Registered
3,"AMPM Herbal
Proprietor: Elder
Pharmaceutical
Ltd.","1040848
and 1040847","3
and 5",30.08.2001,,"Registered
(Both classes)
4.,"AMPM Gel
Proprietor: Elder
Pharmaceutical","1040857
and 1040858","3
and 5",30.08.2001,,"Registered
(Both classes)
5.,"AMPM
Proprietor: Sonam
Clock Pvt Ltd",2124946,14,04.04.2011,,Registered
6.,"AMPM Proprietor:
Atlantic Richfield Co.",1585992,35,31.07.2007,,Rectification
7.,"AMPM Proprietor:
AMPM Security
Services Pvt. Ltd.",2545838,45,Not on record,,Not on record
Order VI Rule 17 read with Section 151 of the CPC has been moved in the suit action, for including details, concerning additional registration(s).",,,,,,
(iii) The plaintiff’s AMPM marks have been in use, since 2002.",,,,,,
(iv) The plaintiff has expended monies in excess of Rs. 1 crore in 2018-2019, on promotional expenditure, and have garnered revenue amounting to",,,,,,
(approximately) Rs. 28 crores in the same year i.e., 2018-2019.",,,,,,
(v) The plaintiff's trade mark AMPM is a well-known trade mark and that it satisfies the ingredients of Section 11(6) of Trade Marks Act, 1999 [in",,,,,,
short “the 1999 Actâ€].,,,,,,
(vi) The alphabets i.e., AMPM, which are part of the plaintiff’s registered marks, stand completely incorporated in the impugned mark. The mere",,,,,,
fact that the word “designs†is used as a suffix in the impugned mark will not help the defendants, in avoiding an injunction. The Court needs to",,,,,,
compare the dominant parts of the rival images. The word ""designs"" in the impugned mark is an insignificant appendage, and hence, should be ignored.",,,,,,
[See The Himalaya Drug Company vs M/s S.B.L. Limited, 2013(53) PTC 1.]",,,,,,
(vii) The defence put up by the defendants, that, the plaintiff is only in the business of selling goods and not rendering services, is no longer tenable, as",,,,,,
the plaintiff has now secured registration under Class 35, which concerns services.",,,,,,
(viii) The Intellectual Property Appellate Board [as it then was] [hereafter referred as “IPABâ€], vide order dated 30.12.2020, had directed the",,,,,,
removal of the defendants’ registration of the mark “ampm designs†in Class 42. This decision has not been overturned, as yet, although, a",,,,,,
writ petition has been filed by the defendants, which is pending consideration before the Bombay High Court.",,,,,,
(ix) The fact that the rival marks are similar and are likely to cause confusion is demonstrable from the notice of opposition filed by the defendant, qua",,,,,,
plaintiff’s application bearing no. 3500631. In this notice, the defendants have admitted that the plaintiff’s application for interior design",,,,,,
services and fashion design services is likely to cause confusion. The defendant, now, cannot claim to the contrary. The defendant cannot approbate",,,,,,
and reprobate. [See Karam Kapahi and Ors. vs Lal Chand Public Charitable Trust and Anr., AIR 2010 SC 2077.]",,,,,,
(x) Interior designing is a natural expansion of the business, in which the plaintiff is presently involved in i.e., fashion designing. These two businesses",,,,,,
are allied and akin to each other, and therefore, according to the plaintiff, it is natural to progress from fashion designing to interior designing. [See",,,,,,
FDC Limited vs Docsuggest Healthcare Services Pvt. Ltd. & Anr., 2017 (69) PTC 2018.]",,,,,,
(xi) It is well-established that, the initial interest confusion is sufficient for triggering an infringement or passing off action. It is not unknown that, even",,,,,,
sophisticated customers are likely to get confused [See Baker Hughes Limited and Ors vs Hiroo Khushalani and Ors. 74 (1998) DLT 715].,,,,,,
(xii) The defence raised that, the defendants adopted AMPM as their mark because it was an acronym for the names of the owners of the mark i.e.,",,,,,,
Akash Anil Mehta and Poonam Mehta, is false, if one were to peruse the audited balance sheets filed by defendant no. 1 for the financial year (FY)",,,,,,
2014- 2015 and 2015-2016. The said balance sheet for the FY 2015-16, as on 31.03.2016, shows that commission amounting to Rs.6 lakhs has been",,,,,,
paid to Ms Poonam Mehta.,,,,,,
(xiii) In support of this plea, reliance is also placed on the partnership deed dated 25.01.2017, which refers to defendant no. 2 as ‘Miss Poonam",,,,,,
Suresh Kumar’. Likewise, reliance is also placed on the Goods & Services Tax Certificate, dated 02.08.2017, filed by the defendants, which",,,,,,
refers to defendant no.2, as ‘Poonam’.",,,,,,
(xiv) Infringement and/or passing off, which occurs through domain names is not goods/services-centric. The fact that defendants use the domain",,,,,,
name www.ampm-designs.com and www. ampmdesigns.in would show that it is likely to cause confusion.[See Satyam Infoway Ltd. vs. Sifynet,,,,,,
Solutions Pvt. Ltd, AIR 2004 SC 3540.]",,,,,,
(xv) The search reports relied upon by the defendants cannot shore up their defence, as these reports cannot reveal the extent of market use of the",,,,,,
mark AMPM by third parties.[See Shri Pankaj Goel v. M/s. Dabur India Ltd. 2008 (38) PTC 49.],,,,,,
(xv)(a) It needs to be emphasized that, some of the applications mentioned by the defendants are, either placed under objection or have expired, or",,,,,,
have been opposed by the plaintiff. The defendants, having themselves sought registration of the mark AMPM, cannot take the plea that, the mark",,,,,,
AMPM is generic.,,,,,,
(xvi) The reliance placed by the defendants, concerning the stand taken by the plaintiff in respect of certain pending applications i.e., 3887492,",,,,,,
3887493, and 3887496 in Classes 03, 14, and 35, vis-Ã -vis third-party marks, is meritless, for the following reasons:",,,,,,
(a) There is no assertion made in the pleading filed by the defendants.,,,,,,
(b) The submissions filed in response to the examination report are not the plaintiff’s stance. The response was signed and filed by the,,,,,,
plaintiff’s erstwhile agent, and no sooner was the error pointed out, corrective measures were taken.",,,,,,
(c) The aforementioned applications are pending consideration before the Trade Marks Registry. The Trade Marks Registry will determine as to,",,,,,,
whether the marks referred therein are to be registered, after having regard to the amended response submitted by the plaintiff.",,,,,,
Submissions on behalf of the defendants:-,,,,,,
9. On the other hand, Mr Mehta has, broadly, made the following submissions:",,,,,,
(i) The impugned mark was registered in 2019, in Class 42.",,,,,,
(ii) The defendants are in the business of rendering services, whereas the plaintiff deals in goods.",,,,,,
(iii) There are several marks, which incorporate the alphabets AMPM, and these marks are active. The plaintiff has selectively targeted the",,,,,,
defendants, not by filing an opposition application, at the point in time, when the defendants had moved the Trade Marks Registry for having the",,,,,,
impugned mark registered, but at a much later point in time, by way of a rectification application filed before the IPAB.",,,,,,
(iv) Although, the IPAB, vide order dated 30.12.2020, has directed removal of the defendants’ mark, a writ petition has been preferred qua the",,,,,,
said order [i.e., Writ Petition bearing Stamp No.4339/2021], which is pending consideration before the Bombay High Court. The Bombay High Court,",,,,,,
via order dated 23.04.2021, has stayed the ""effect, implementation and operation of the order dated 30.12.2020"". Therefore, as of today, the",,,,,,
defendants' mark stands on the register maintained by the Trade Marks Registry.,,,,,,
(v) The rival trade marks are distinct and different. The plaintiff's mark is used for goods, whereas the defendants' mark is used for services. The",,,,,,
customers of both parties are discerning and highly educated.,,,,,,
(vi) The distinction between the two marks is evident, even on mere ocular examination. The impugned mark is in lowercase and written in italics, with",,,,,,
the word ""designs"" appended to it, as a suffix. The plaintiff's mark is in upper case i.e., capital letters and does not bear the word ""designs"", which is",,,,,,
an integral part of the defendants' mark. Additionally, the defendants’ mark, now, expressly bears the names of its owners i.e., Anil Mehta and",,,,,,
Poonam Mehta. [See S.M. Dyechem Ltd. v. Cadbury (India) Ltd. (2000) 5 SCC 573.],,,,,,
(vii) Contrary to the plaintiff's claim that the rival businesses are allied and/or cognate; the two businesses are distinct and incomparable. The plaintiff,,,,,,
has admitted that it has not delved into the business of interior designing.,,,,,,
(viii) To ascertain as to whether the goods and services are allied and/or cognate, the following is required to be considered [see Balkrishna",,,,,,
Hatcheries v Nandos International Ltd.&Ors., 2007 (35) PTC 295(Bom)]:",,,,,,
a) Respective uses of the goods/services.,,,,,,
b) Respective users of the goods/services.,,,,,,
c) Physical nature of the goods/services.,,,,,,
d) Trade channels through which the goods/services reach the market.,,,,,,
e) The extent to which the goods/services are competitive.,,,,,,
f) Whether the goods and services are traded/provided in the same business.,,,,,,
(viii)(a) If the aforesaid tests are applied, it would show that the two businesses are neither alike, nor akin. While the plaintiff deals in clothes and",,,,,,
accessories, the defendants are in the business of interior design and lighting solutions. Both businesses are unrelated and have different trade",,,,,,
channels. The plaintiff’s goods are found and sold through physical stores and e-commerce platforms, whereas the defendants render services by",,,,,,
taking direct and personal charge of their client’s project.,,,,,,
(ix) AM and PM are generic words, over which the plaintiff cannot claim exclusivity, by merely combining the two. ‘AM’ is an acronym for",,,,,,
ante meridiem, whereas 'PM' is an acronym for post meridiem. Such generic words cannot be appropriated by one person or entity, to the exclusion of",,,,,,
others. A combination of two generic words, namely AM and PM, cannot result in an arbitrary or non-generic mark. [See the judgment dated",,,,,,
12.10.2020 rendered by this Court in CS (COMM) No. 217 of 2020 in the case of Delhivery Pvt. Ltd. v. Treasure Vase Venture Pvt. Ltd.],,,,,,
(x) There are several third parties, which use AMPM as their trade mark. Some of these trade marks are registered in different classes, and some",,,,,,
even predate the plaintiff’s registration. Furthermore, there are many registrants, who are active in business and use the trade mark AMPM.",,,,,,
(xi) The Registrar of Trade marks letter dated 07.07.2010 would show that an objection had been raised by the Trade Marks Registry qua the grant of,,,,,,
registration, on account of a pre-existing registration, in favour of an entity going by the name of Atlantic Richfield Co., based in California, United",,,,,,
States of America.,,,,,,
(xii) The recent applications filed by the plaintiff for obtaining registration in Classes 3, 14 and 35 have met with roadblocks, since the Trade Marks",,,,,,
Registry has brought to fore the fact that, there are third parties, which have registered their AMPM marks, in these classes. In response to the same,",,,,,,
the plaintiff has filed replies and taken the stand that, the said mark is different from the cited mark, as it is based on the names of its co-founders i.e.,",,,,,,
Ankur Modi and Priyanka Modi.,,,,,,
(xiii) The fact, that the plaintiff has filed a revised response, shows that it has changed its stance to suit its purposes. Additional registrations of the",,,,,,
word mark AMPM obtained by the plaintiff in Classes 18, 24, 25 and 35 will not strengthen its case, for the reason, that, none of the new registrations",,,,,,
relate to services falling in class 42, which is, the class, qua which, the defendants’ mark is registered.",,,,,,
(xiv) The plaintiff has not cited even a single instance of actual confusion caused in the minds of the customers.[See Carew Phipson Ltd. v. Deejay,,,,,,
Distilleries Pvt. Ltd. AIR 1994 Bom 231.],,,,,,
(xv) The defendants, to show their bona fides, have filed an additional affidavit dated 18.01.2021, whereby they disclosed that they have taken the",,,,,,
following steps:,,,,,,
a) Changed the branding of their trade mark on their website. Consequently, the website of ampm designs bears the following sub-title:-",,,,,,
“Interior design by Akash Mehta & Poonam Mehtaâ€.,,,,,,
b) The defendants have also taken steps to ensure that, while advertising or marketing their trade mark “ampm designsâ€, the aforementioned sub-",,,,,,
title is appended thereto.,,,,,,
c) The defendants have purchased a new domain name i.e., “ampmdesigns-interiors.comâ€. Thus, a conscious effort has been made to include the",,,,,,
word ‘interiors’.,,,,,,
d) Furthermore, care has been taken to ensure that, whoever visits the defendants’ existing website, is redirected to the website bearing the new",,,,,,
domain name.,,,,,,
e) Finally, the defendants’ have undertaken not to manufacture or venture into or carry out any business, concerning fashion designing or clothing",,,,,,
in future, under the name AMPM.",,,,,,
Analysis and Reasons:-,,,,,,
10. Having heard the learned counsel for the parties, and perused the record, the following facts have emerged:",,,,,,
10.1. The plaintiff is in the business of dealing in high-fashion clothing and wearable accessories, such as footwear, belts, bags, and on the other hand,",,,,,,
the defendants are in the business of interior design and lighting solutions.,,,,,,
10.2. The earliest registration, which the plaintiff obtained concerning its trade mark, was, on 14.05.2009, with a claim that it was being used, since",,,,,,
01.01.2002. This registration was obtained qua goods falling in Class 25.,,,,,,
10.3. The other set of registrations were obtained by the plaintiff, on 02.07.2012. The plaintiff claimed usage of these marks, since 01.12.2005. These",,,,,,
registrations were obtained under Class 23, 24, 25 and 26. Besides this, there were two other registrations obtained by the plaintiff, on 13.07.2018,",,,,,,
under Class 18 and 25. The plaintiff claimed usage of these marks, since 01.04.2016.",,,,,,
10.4. Although, the plaintiff claims that, its predecessor-in-interest has been using the trade mark, which was registered on 14.05.2009, since",,,,,,
01.01.2002, admittedly, it does not have any invoices in its possession, concerning the period, which predates 2006. This admission has been made in",,,,,,
an affidavit dated 31.12.2016, filed on behalf of the plaintiff by one of its directors i.e., Mr Ankur Modi, with the Trade Marks Registry. The plea",,,,,,
taken in the said affidavit is that the record is old, and therefore, not available. It is claimed in the very same affidavit that, after the incorporation of",,,,,,
the plaintiff, it has been using the trade mark “am:pm†since 2005.",,,,,,
10.5. The defendants’, on the other hand, have claimed that the impugned mark has been in use, since 2014. The defendants’ had filed their",,,,,,
application for registration of the impugned mark, on 03.05.2019, bearing no. 4165858. This application sought registration of the impugned mark in",,,,,,
Class 42.,,,,,,
[CLASS 42],,,,,,
Services in respect of Interior Design, Lighting Design for individuals to design their residence, office, retail, hotel included in class 42.",,,,,,
10.6. Although, the defendants had, initially, made an endorsement in the application for registration of the impugned mark, to the effect, that, they",,,,,,
proposed to use the mark in future, a rectification application was filed with the Trade Marks Registry on 08.08.2020, wherein it is claimed that they",,,,,,
have been using the impugned mark, since 10.01.2014. In support of this plea, the defendants have relied upon the following documents:",,,,,,
a) An e-mail dated 30.01.2014 sent by Kotak Mahindra Bank to defendant no.1, which adverts to the proprietorship concern “Ampm Designsâ€.",,,,,,
b) Certificate dated 18.06.2014, issued by the Central Board of Excise and Customs, in recognition of the registration of the defendants’",,,,,,
partnership firm with the Central Excise Department.,,,,,,
c) The balance sheets which appear to have been filed with the income tax returns filed by defendant no.1, concerning assessment years 2014-15 and",,,,,,
2015-16, in his capacity as the proprietor of ""AMPM DESIGNS"".",,,,,,
10.7. The defendants formed a partnership firm only, on 25.01.2017, under the name and style ""M/S AMPM DESIGNS"". Clause (4) of the said",,,,,,
partnership deed reads as follows:,,,,,,
“NATURE OF BUSINESS:,,,,,,
The partnership firm shall carry on business as making Interior and Lighting Design and sale of that design. The firm may also carry on,,,,,,
any other business with the mutual consent of all the parties hereto from time to time.â€,,,,,,
10.8. The defendants have also placed on record, the Permanent Account Number (PAN) card, concerning ""AMPM DESIGNS"", dated 13.02.2017,",,,,,,
which adverts to the fact that the said entity i.e., the partnership firm was incorporated on 25.01.2017.",,,,,,
11. Besides this, the defendants have also placed on record, the GST certificate dated 02.08.2017, and Micro, Small & Medium Enterprises certificate",,,,,,
dated 02.05.2019, both under the name ""AMPM DESIGNS"".",,,,,,
11.1. The advertising spend of the plaintiff is far more than what the defendants’ spent on the promotion of the impugned mark. The plaintiff has,,,,,,
spent close to Rs.1.08 crores in 2018-2019 alone, whereas the defendants’ over three years i.e., between 2017-18 and 2019-20 have spent one-",,,,,,
tenth of the plaintiff’s spend i.e., little over Rs.10 lakhs.",,,,,,
11.2. Likewise, the sales turnover of the plaintiff is more than what has been achieved by the defendants. The plaintiff claimed that it has achieved a",,,,,,
turnover of Rs. 28,73,05,481/- in 2018-2019, whereas the defendants in 2018-2019 have achieved a turnover of Rs.1,04,70,447/-.",,,,,,
11.3. There are several AMPM marks on the Register of the Trade Marks Registry, falling in various classes, which predate the registration of the",,,,,,
plaintiff’s marks.,,,,,,
12. Therefore, what emerges from the record is that, undoubtedly, as between the plaintiff and the defendants’, the plaintiff is the prior user of the",,,,,,
mark AMPM, although, there is nothing on record, as yet, which would prima facie establish that the plaintiff has been in using its mark, since",,,,,,
01.01.2002. As noted above, the material placed on record by the plaintiff, relates to the period, commencing from 2006.",,,,,,
12.1. That being said, the plaintiff’s marks stand registered qua a class other than Class 42. Concededly, the plaintiff has not obtained any",,,,,,
registration in Class 42.,,,,,,
12.2. The plaintiff is a purveyor of designer clothes and accessories. It has not yet ventured into interior design and lighting solutions, which is the",,,,,,
business carried on by the defendants. Clearly, the trade channels through which the businesses are conducted by the plaintiff and the defendants, are",,,,,,
distinct and different.,,,,,,
12.3. The plaintiff deals in goods, which are bought off the shelf or sold through e-commerce platforms, whereas the defendants’ are in the",,,,,,
business of providing services, which are personal and customized. The skills that one needs for designing clothes and/or accessories are not",,,,,,
necessarily the same, like those required to design physical spaces.",,,,,,
12.4. The pivotal issue which arises for consideration is there a likelihood of confusion as to the origin of the services offered by the defendants,,,,,,
Likelihood of confusion:-,,,,,,
13. Given the fact that the registration obtained by the plaintiff [as against a mere application filed by it] falls in a class different from that of the,,,,,,
defendants, the applicable test, as noticed above, undoubtedly is : whether there is a likelihood of confusion as to the origin of the services offered by",,,,,,
the defendants, insofar as the relevant denomination amongst the public at large is concerned.",,,,,,
13.1 When applying the test, one has to make a “global appreciationâ€. The “global appreciation†test requires one to examine, inter alia, the",,,,,,
following facets, albeit, holistically as they are inter-dependent:",,,,,,
(i) The degree of visual, aural and/or conceptual similarity between the marks.",,,,,,
(ii) The overall impression created by the marks.,,,,,,
(iii) The impact that the impugned marks have on the relevant public i.e., the matter should be considered through the eyes of an average consumer,",,,,,,
who would buy or receive the goods or services.,,,,,,
(iv) The distinctive character that the infringed mark has acquired i.e. either because of the mark per se or on account of reputation that it has enjoyed,,,,,,
in the public space.,,,,,,
(v) That the average consumer has an imperfect recollection.,,,,,,
(vi) The degree of similarity between the goods or services, which are purveyed under the rival marks.",,,,,,
[See SABEL BV vs. Puma AG, Rudolf Dassler Sport [1998] R.P.C. 199 [In short ""SABEL BV case""] & Kerly's Law of Trade Marks & Trade",,,,,,
Names, 4th edition at page 247-248]",,,,,,
13.2. It needs to be emphasized that, while evaluating the aforesaid facets, one has to bear in mind the global/composite appreciation test, which",,,,,,
enjoins that each of them is inter-connected and explicable, as a whole. In other words, an integrated rather than a compartmentalized approach is",,,,,,
required to be adopted. The proclivity of giving weight to one facet as against the other facet(s) is to be abjured. It is only an overall evaluation of all,,,,,,
facets which helps in ascertaining, whether or not there is a likelihood of confusion. Likelihood of confusion would arise, if there is a risk of the",,,,,,
relevant consumers/public believing that the goods or services offered by the defendants originate from the plaintiff or in some way, are economically",,,,,,
or commercially linked to the plaintiff.,,,,,,
13.3. The point in issue can be elaborated by referring to the ratio of the decision rendered in Sabel BV case. This was a matter in which Sabel BV, a",,,,,,
Dutch company sought registration of its mark in Germany, which was opposed by Puma AG, a German company. The rival marks, which depicted a",,,,,,
feline, had an analogous semantic content i.e., a ""bounding felineâ€.",,,,,,
13.3(a). In this context, the point which arose for consideration before the court was, whether mere association which the public might make between",,,,,,
the two marks, through the idea of a ""bounding feline"", would justify refusing protection to the SABEL mark in Germany for products similar to those",,,,,,
on the list of articles covered by Puma’s priority mark.,,,,,,
13.3(b). Significantly, the court ruled that the concept, likelihood of association is not an alternative to that of likelihood of confusion but serves to",,,,,,
define its scope. Furthermore, it went on to state that “the mere association which the public might make between the two trademarks as a result",,,,,,
of their analogous semantic content is not itself a sufficient ground for concluding that there is likelihood of confusion.……..â€,,,,,,
13.4. The chances of the customers being confused as to, who is the originator of the services rendered by the defendants i.e., interior design and",,,,,,
lighting solutions, seems remote, at this juncture. The principal purpose and/or the function of the trade mark is to guarantee to the customers that the",,,,,,
origin of the goods and/or services; infringement by a defendant should affect this principal function, apart from other functions, such as quality,",,,,,,
communication, investment or advertisement of goods and/or services on offer. [See paragraph 58 in L'Oreal SA vs. Bellure NV [2010] R.P.C. 1]",,,,,,
13.5. The plaintiff has not placed any material on record, in the form of an affidavit, of any customer, which would persuade me to hold that, there",,,,,,
was a scope for confusion being created in the minds of customers, as to the source of the services rendered by the defendants.",,,,,,
14. Insofar as the plaintiff's assertion is concerned, that the defendants by using the impugned mark are passing off their services as if they originate",,,,,,
from the plaintiffâ€"the same would have to meet the tests, which are ingrained in a passing off action.",,,,,,
14.1. Passing off action is a tort that veers around deceit. For such an action to succeed, it must, at the very least, have the following three indicia,",,,,,,
commonly known as the “classical trinityâ€. The said markers are articulated in, what is commonly known as, the Jiff Lemon case [Reckitt &",,,,,,
Colman Products Ltd. vs. Borden Inc., [1990] 1 All E.R. 873] and can, broadly, be paraphrased in the manner set forth hereafter.",,,,,,
i. First, the plaintiff must be able to establish that it has the necessary goodwill and reputation in the goods sold or services offered to the consumers at",,,,,,
large which in turn should be interlinked with the get-up in which they are proffered.,,,,,,
ii. Second, the plaintiff must be able to demonstrate that the defendants’ misrepresentation, made qua the goods or services offered by him, have",,,,,,
led consumers to believe that they originate from the plaintiff.,,,,,,
iii. Third, that the action of the defendant has resulted in damage or is likely to result in damage on account of the misrepresentation of the defendant",,,,,,
concerning the origin of the goods and service.,,,,,,
iv. To establish misrepresentation, the plaintiff must be able to demonstrate that the public has made a connection of the kind, whereby they hold the",,,,,,
plaintiff accountable for the quality of the defendants’ goods or services. The belief that the plaintiff has sponsored or may have given financial,,,,,,
support to defendants would not ordinarily give the public that impression.,,,,,,
v. There is no requirement for the plaintiff to show that the defendant is carrying on a business which competed with that of the plaintiff or which,,,,,,
would compete with any natural extension of the plaintiff’s business.,,,,,,
However, absence of common field of activity is a significant and relevant consideration in deciding whether there was a likelihood of confusion.",,,,,,
[See judgement dated 27.11.2020, passed by this Court in I.A.No.6865/2020 in CS(COMM) 319/2020, titled RB Health (US) LLC and Anr. vs. Dabur",,,,,,
India Ltd.; Consorzio Del Prosciutto Di Parma vs. Asda Stores Limited and Others, [2001] UKHL 7; and Harrods Limited vs. Harrodian School",,,,,,
Limited, 1996 RPC 697.]",,,,,,
14.2. In the instant case, the plaintiff could not have placed anything on record to establish that it has the necessary goodwill/reputation in the services",,,,,,
offered by the defendant [i.e., interior design and lighting solutions], as it has, admittedly, not embarked on that business, as yet. Thus, at present, the",,,,,,
field of activity of plaintiff and defendant remain starkly different and distinct.,,,,,,
14.3. Furthermore, there is something to be said about confusion on account of the similarity between the rival marks. Confusionâ€"it is well-",,,,,,
established, is not the same, as deception or misrepresentation. The plaintiff, clearly, cannot show, at least at this stage, that the use of the impugned",,,,,,
mark for interior design and lighting solutions by the defendants has led to or is likely to result in damages on account of misrepresentation made by,,,,,,
defendants, concerning the origin of services offered by them.",,,,,,
15. Pertinently, the test of likelihood of confusion applies to both an infringement action as well as an action for passing off. [See McCarthy on",,,,,,
Trademarks and Unfair Competition, 4th Edition, cited with approval in Shree Nath Heritage Liquor Pvt. Ltd. vs. Allied Blender & Distillers Pvt. Ltd.,",,,,,,
2015 SCC OnLine Del 10164.],,,,,,
16. The other argument, which is advanced on behalf of the plaintiff, is that confusion is caused on account of initial interest being triggered in a",,,,,,
purchaser, due to semantic similarity of rival marks. The doctrine of ""initial interest confusion"" is a subset of the likelihood of confusion test, which",,,,,,
applies, at a stage, prior to the purchase of goods or receipt of services. This doctrine needs to be applied with extreme care and caution, as it dilutes",,,,,,
the “global appreciation testâ€, adverted to hereinabove.",,,,,,
16.1. Having said that, in this case, in my opinion [apart from the lack of material on record, to even suggest that, there have been instances of initial",,,,,,
interest confusion], the fact that the plaintiff and defendant are in different trade channels, catering to consumers who have different expectations and",,,,,,
demands makes the submission completely untenable. The plaintiff is, to reiterate, in the business of fashion designing and, thus, deals in wearables",,,,,,
(i.e., goods and jewellery) whereas the defendant is in the business of interior design and lighting solutions.",,,,,,
16.2. The fact that some fashion designers have graduated into interior designing is neither here nor there. Undeniably, the plaintiff has not, as yet,",,,,,,
ventured into interior designing.,,,,,,
17. Therefore, merely because the plaintiff claims to be the prior user of the trade mark AMPM, would not, to my mind, be enough, at least, at this",,,,,,
stage, to injunct the defendants from using the impugned mark.",,,,,,
Well-known mark:-,,,,,,
18. The plaintiff’s mark, contrary to its claim, has not, as yet, attained the ubiquity of a well-known mark. Even if I were to accept the assertions",,,,,,
made in the plaint, concerning the advertising spend, the turnover generated and the claim of the sales made in and outside the country- it does not add",,,,,,
up to demonstrate that the AMPM mark can only be associated with the plaintiff.,,,,,,
18.1. The term well-known trade mark has its genesis in Article 6bis of the Paris Convention (1967) and Article 16 of the Trade-Related Aspects of,,,,,,
Intellectual Property Rights (TRIPS) Agreement, formulated by the World Trade Organization (WTO). The essential ingredients of Article 16 stand",,,,,,
incorporated in the 1999 Act. The definition of a well-known trade mark is provided in Section 2(1)(zg) of the 1999 Act. The other provisions in the,,,,,,
1999 Act exemplify the special position that a well-known trade mark enjoys under the 1999 Act.,,,,,,
Article 16 Rights Conferred,,,,,,
1. The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the,,,,,,
course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered,,,,,,
where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion",,,,,,
shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making",,,,,,
rights available on the basis of use.,,,,,,
2. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members",,,,,,
shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has",,,,,,
been obtained as a result of the promotion of the trademark.,,,,,,
3. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a",,,,,,
trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or",,,,,,
services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged,,,,,,
by such use.,,,,,,
18.2. Section 9 of the 1999 Act, which provides for absolute grounds for refusal of registration makes an exception for a well-known trade mark in the",,,,,,
proviso appended to sub-section (1) of the very same section. Likewise, Section 11 of the 1999 Act, which adverts to relative grounds for refusal of",,,,,,
registration carves out an exception qua trade marks which are well-known in India under sub-section (2) of Section 11. The aspects which the,,,,,,
Registrar of trade marks should take into account in determining whether a trade mark is a well-known trade mark are adverted to in sub-sections (6),,,,,,
and (7) of Section 11 of the 1999 Act. Sub-section (8) of Section 11 mandates that where a trade mark has been determined to be a well-known trade,,,,,,
mark in at least one relevant section of the public in India by any court or Registrar, the Registrar shall, then, consider such trade mark as a well-",,,,,,
known trade mark for the purposes of registration.,,,,,,
18.3. Pertinently, sub-section (9) of Section 11 provides as to what the Registrar shall not seek for determining, whether a trade mark is a well-known",,,,,,
trade mark. Furthermore, sub-section (10) of Section 11 requires the Registrar to protect a well-known trade mark against identical or similar trade",,,,,,
marks while considering the application for its registration and the opposition filed in connection with the same. In doing so, the Registrar is also",,,,,,
required to consider whether or not any bad faith is involved either of the applicant or the opponent affecting the right relating to the trade mark.,,,,,,
However, sub-section (11) of Section 11 makes it clear that in case, where the trade mark has been registered in good faith, after disclosing material",,,,,,
information to the Registrar or where the right to a trade mark has been acquired to use the same, albeit, in good faith, before the commencement of",,,,,,
1999 Act, then, nothing contained in the said Act will prejudice the validity of registration of that mark or right to use that mark on the ground that the",,,,,,
said trade mark is identical with or similar to a well-known trade mark. In other words, in such a situation, the rival mark can cohabit with a well-",,,,,,
known trade mark.,,,,,,
18.4. Thus, the registered trade mark which has a reputation in India can sue for infringement under sub-section (4) of Section 29, if the affected party",,,,,,
can establish that the use of the infringing mark without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of,,,,,,
the registered mark. However, where the proprietor of an earlier trade mark, which could be a well-known trade mark in India, has acquiesced for a",,,,,,
continuous period of five years in the use of its registered mark, the fact that the concerned party is aware of its use shall disentitle such affected",,,,,,
party to seek declaration that the registration of the latter mark is invalid or to oppose the use of the latter trade mark in relation to the goods and,,,,,,
services qua which it is used. However, this handicap will not operate where registration of the latter trade mark was not applied in good faith [see",,,,,,
sub-section (1) of Section 33 of the 1999 Act].,,,,,,
18.5. Furthermore, the proprietor of the latter mark [where the provisions of sub-section (1) of Section 33 apply] would not be entitled to oppose the",,,,,,
use of the earlier mark [in this case ‘well-known mark’] or its exploitation notwithstanding that the earlier trade mark can no longer be invoked,,,,,,
against the latter trade mark.,,,,,,
18.6. In sum, as indicated above, for exercising rights qua a trade mark which is a well-known or reputed in India, it is not necessary that it should be",,,,,,
used or registered in India. That being said, before a mark can be categorized as a well-known mark, it should, inter alia, gain recognition or be in the",,,,,,
know of, in the relevant section of the public in India.",,,,,,
18.7. As alluded to above, there is nothing on record which would show that the plaintiff’s mark AMPM has acquired the status of well-known or",,,,,,
a reputed mark. There are no survey reports of relevant sections of public placed on record which would, at least, prima facie have me believe that,",,,,,,
the plaintiff’s mark has attained a status of well-known and/or reputed mark. The material on record, concerning period the mark has been in use",,,,,,
[i.e., since 2006], the advertising and promotion spend, the ""presence"" on e-commerce platformsâ€"only fortifies my view that the plaintiff's mark does",,,,,,
not qualify, at this juncture, as a well-known mark. Therefore, this submission of the plaintiff, which can be categorized as a leap of faith, is rejected.",,,,,,
18.8. In this case, it is quite clear that the plaintiff's registered marks have not met the threshold prescribed for a well-known mark. The plaintiff''s",,,,,,
case is that it has physical outlets, although it claims it has a presence on e-commerce platforms. There is no material on record that would",,,,,,
demonstrate as to the number of actual and potential consumers of its goods, the number of persons who are involved in the distribution channel set up",,,,,,
for selling its goods and/or the knowledge or recognition in the relevant section The promotion material and the advertising spend is not so large or,,,,,,
expansive which would have me conclude, at this stage, that the plaintiff's mark is a well-known mark. A mark may have a reputation and maybe well",,,,,,
known but it still falls short of a well-known mark.,,,,,,
19. There is no denial by the plaintiff of the fact that, on the register of the Trade Marks Registry, several marks are found, which bear the alphabets",,,,,,
AMPM and are, perhaps, active. Although the mere fact that a mark sits on the Register maintained by the Trade Marks Registry gives no tangible",,,,,,
rights; at the interlocutory stage, it could turn the balance when examined alongside other material on record.",,,,,,
19.1. Given this situation, what is not fathomable is as to, why the plaintiff has not moved against such entities/persons to protect its interests, if it",,,,,,
claims that, it is the owner of the mark, which is well-known not only in India but outside the country.",,,,,,
19.2. The defendants have set up a plausible defence, at least, at this stage, that, the mark AMPM is used by several entities/persons carrying on",,,,,,
myriad businesses.,,,,,,
Conclusion:-,,,,,,
20. Therefore, for the foregoing reasons, I am not inclined to grant an injunction, as claimed by the plaintiff.",,,,,,
20.1. However, since the defendants have on their own volition filed an additional affidavit dated 18.01.2021, whereby they have agreed to add the",,,,,,
subtitle “Interior design by Akash Mehta and Poonam Mehtaâ€, to the impugned mark, they will continue to be bound by the same and other",,,,,,
averments made therein.,,,,,,
20.2. The aforesaid sub-title will be, prominently, displayed, alongside the impugned mark. Furthermore, the defendants’ will keep an account, and",,,,,,
also submit a quarterly account statement to the Registry of this Court, concerning the turnover generated hereon, under the impugned mark.",,,,,,
21. The above-captioned application is disposed of in the aforesaid terms.,,,,,,
CS(COMM)No.272/2020,,,,,,
22. List the matter before the roster bench on the date fixed i.e., 07.12.2021.",,,,,,
