Trade Mark Nos.,Class,Trade Mark
293541,03,
2279279,03,
1559819,03,
2819475,03,
2819476,03,
679326,16,
679327,14,BLUE HEAVEN
679329,21,BLUE HEAVEN
679336,26,BLUE HEAVEN
679333,10,BLUE HEAVEN
4632214,03,
2161277,35,
2180613,02,
3945655,44,
4583915,35,
4583928,03,
4583930,03,
4583933,35,
4583935,35,
4583936,03,
TM Application No.,4111088,
Class,3,
Date of Application,08-03-2019,
Appropriate Office,DELHI,
TM Applied For,MARC HEAVEN (DEVICE),
Trade Mark Type,DEVICE,
User Detail,Proposed to be used,
Proprietor name,"(1) DEEPAK ARORA, single firm",
Proprietor Address,"BA-229/2 Tagore Garden, New Delhi, INDIA",
Goods & Service Details,[Class:3] Cosmetics included in class 3.,
prescribed manner who shall upon receipt of such notice rectify the register accordingly.â€,,
20. As per the above provision, upon an application being filed by any person aggrieved, the High Court may pass orders cancelling or varying the",,
registration if:,,
i. There is any contravention or failure to observe a condition entered on the register in relation thereto.,,
ii. Any entry is made in the register without sufficient cause.,,
iii. Any entry is wrongly remaining in the register.,,
iv. There is any error or defect in any entry in the register.,,
21. The competing marks in the present case are “BLUE HEAVEN†and “MARC HEAVENâ€. They are both registered in class 3 for,,
cosmetics. It is clear from the record that the Petitioner is the prior user of the mark “BLUE HEAVEN†as the Respondent No.1’s,,
application for the registration of the mark “MARC HEAVEN†was filed on “proposed to be used†basis in the year 2019. On the other,,
hand, the mark of the Petitioner “BLUE HEAVEN†has been used since the year 1972. It is surprising that the Petitioner’s mark was not",,
cited in the examination report and Respondent No.1’s mark simply proceeded for registration.,,
22. The prominent and dominant feature of the Petitioner’s mark is the word ‘Heaven’ which is used in a prominent and distinctive manner.,,
The use of the word ‘Heaven’ and blue colour in the Respondent’s mark for identical goods shows that there is dishonesty in Respondent,,
No.1’s adoption of the mark “MARC HEAVEN†itself. Moreover, Respondent No.1 has filed an application for the removal of trademark",,
no. 4802221 granted in favour of the Petitioner, wherein Respondent No.1 has made a categorical statement to the following effect:",,
“14. That the registered proprietor is not the rightful proprietor of the trademark ‘Blue Heaven GET Bold EYELINER’,,
’. The trademark ‘Blue Heaven GET Bold EYELINER ‘ ’ is identical with,,
and deceptively similar to the Applicant for rectification’s Trade Mark ‘MARC HEAVEN ’. The,,
resemblances between the rival trademarks are so close that it can hardly occur except by deliberate imitation. The registered proprietor’s,,
impugned adoption and user thereof are tainted at the inception and are pirate use of the applicant for rectification’s said trademark.,,
15. That the registered proprietor has obtained the registration of the trademark ‘Blue Heaven GET Bold EYELINER,,
, by fraud. That the trademark ‘Blue Heaven GET Bold EYELINER , adopted and",,
being used by the registered proprietor in relation to the goods and business are identical with and deceptively similar to the applicant for,,
rectification’s trademark ‘MARC HEAVEN phonetically, Visually and structurally, in its basic idea and its",,
essential features. A bare look at the specimen of the trademark ‘MARC HEAVEN ’ of the applicant for,,
rectification and the trademark ‘Blue Heaven GET Bold EYELINER ’ of the registered proprietor show the,,
identity between the competing trademark/label. The registered proprietor’s impugned adoption and user thereof are tainted at the inception and,,
are pirate use of the applicant for rectification’s said trade mark.â€,,
23. A perusal of the above two paragraphs clearly shows that Respondent No.1’s own stand, while seeking rectification/cancellation of the",,
Petitioner’s mark, is that the two marks are identical/deceptively similar. Thus, this is a clear admission on behalf of Respondent No.1 as to the",,
identity/similarity of the marks in question. Thus, what remains to be seen is only the user of the mark. The Petitioner has placed on record several",,
invoices starting from the year 2017 to establish their prior use of the mark. Various orders protecting the Petitioner’s mark are set out below:,,
i. Order dated 16th April, 2013 in CS(OS) 694/2013 titled Gurnam Singh v. M/s Apex Cosmetics.",,
ii. Order dated 25th April, 2016 in CS (COMM) 388/2016 titled Gurnam Singh v. M/s Little Profit Trading Company.",,
iii. Order dated 27th April, 2018 in CS(COMM) 827/2018 titled Gurnam Singh v. M/s GI Cosmetics.",,
iv. Order dated 10th December, 2020 in CS(COMM) 545/2020 titled M/s Blue Heaven Cosmetics Pvt. Ltd. v. M/s Vermillion Cosmetics Pvt. Ltd.",,
v. Order dated 8th January, 2021 in CS(COMM) 11/2021 titled M/s Blue Heaven Cosmetics Private Limited v BH Cosmetics LLC.",,
24. Moreover, the Petitioner’s trademark registration also claims user since 1972 as is clear from trademark registration no.293541. The",,
Petitioner’s marks have been registered way back in 1970’s and the use of the series of the marks “BLUE HEAVENâ€, “",,
†as well as formative marks leave no doubt in the mind of the Court that the Petitioner is the prior user, prior",,
adopter, prior registered proprietor of the mark “BLUE HEAVEN†in respect of cosmetics in class 3.",,
25. Respondent No.1 in the present case has appropriated the word ‘Heaven’ and the blue logo colour from the mark of the Petitioner. The test,,
of confusion in case of composite marks is well settled in the case of M/s. South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. & Anr.,,
(2015) 61 PTC 231 where, while holding that ‘DAZS’ is an essential and dominant feature of the Plaintiff’s mark, the Court was of the",,
opinion that the mark ‘D’DAAZS’ was deceptively similar to Plaintiff’s mark ‘HAAGEN-DAZS’. The relevant observation of,,
the Court is as under:,,
“23. It is also settled that while a trademark is supposed to be looked at in entirety, yet the consideration of a trademark as a whole does",,
not condone infringement where less than the entire trademark is appropriated. It is therefore not improper to identify elements or features,,
of the marks that are more or less important for purpose of analysis in cases of composite marks.,,
24. In this regard we may fortify our conclusion by take note of the decision reported as 405 F. Supp. 530 (1975) Eaton Allen Corp. v.,,
Paco Impressions Corp. The facts of the said case reveal that the plaintiff manufactured coated paper under the registered trademark,,
‘Super-Ko-Rec-Type’. The defendant manufactured and advertised a similar product under the mark ‘Super Type’ and,,
‘Super Type-7’. The defendant contended that the only similarity between the said marks was use of the words ‘Super’ and,,
‘Type’, terms which were neither significant parts of the plaintiff's registered trademark nor protectable as a matter of law. The court",,
held that the consideration of a trademark as a whole does not preclude infringement where less than the entire trademark is appropriated.,,
25. Therefore, the submission of the appellant-defendant predicated upon the principle of ‘anti-dissection’ that action for",,
infringement would not lie since use of the word ‘D'DAAZS’ does not result in complete appropriation of the respondent-plaintiff's,,
mark ‘HAAGEN DAZS’, which is to be viewed as an indivisible whole, is liable to be rejected.",,
26. Dominant features are significant because they attract attention and consumers are more likely to remember and rely on them for,,
purposes of identification of the product. Usually, the dominant portion of a mark is that which has the greater strength or carries more",,
weight. Descriptive or generic components, having little or no source identifying significance, are generally less significant in the analysis.",,
However, words that are arbitrary and distinct possess greater strength and are thus accorded greater protection.[174 F. Supp. 2d 718,",,
725 (M.D. Tenn. 2001) Autozone, Inc. v. Tandy Corporation]â€",,
26. On the issue of likelihood of confusion, J. Thomas McCarthy in McCarthy on Trademarks and Unfair Competition [4th edition, Vol. 3, page 23-",,
128] opines that the ordinary rule is that marks must be compared in their entirety, however, more weightage can be given to the dominant feature of",,
the mark in reaching a conclusion on the issue of confusion. The relevant observation is as follows-,,
“While the basic rule is that marks must be compared in their entireties and not dissected, in articulating reasons for reaching a",,
conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a",,
particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Although it is not",,
proper to dissect a 'mark,' one feature of a mark may be more significant and it is proper to give greater force and effect to that dominant",,
feature. Thus, as a preliminary to comparing marks in their entireties, it is not improper to downplay the similarity of very descriptive parts",,
of conflicting marks.â€,,
27. Thus, as per the settled law, even the appropriation of the word ‘Heaven’ by Respondent No.1, which is the dominant and prominent",,
feature of the Petitioner’s mark, can constitute infringement of Petitioner’s rights in the mark “BLUE HEAVENâ€. Though the words",,
`Blue’ and `Heaven’ are dictionary words, the adoption of both the words in combination and otherwise is a completely arbitrary adoption in",,
respect of cosmetics. The mark `BLUE HEAVEN’ is thus an inherently distinctive mark. Moreover, the said issue is no longer needed to be",,
adjudicated separately in the present case as there is a clear admission by the Respondent No.1, in the application for rectification of the",,
Petitioner’s mark, as to the deceptive similarity of the marks.",,
28. In this Court’s opinion, registration of the mark “MARC HEAVEN†would be violative of Section 9(1)(a) of the Act, as the same would",,
be devoid of distinctive character inasmuch as it would not distinguish Respondent No.1’s products from the Petitioner’s products.,,
Furthermore, as per Section 9(2) of the Act, a mark is not liable to be registered if it is of such a nature so as to deceive the public or causes",,
confusion. Section 11(2) of the Act makes it clear that, if a trademark is identical with or similar to an earlier trademark, the same does not deserve to",,
be registered. In view of these grounds of refusal, which are both absolute grounds and relative grounds under Sections 9 and 11 of the Act, this Court",,
has no hesitation in holding that Respondent No.1’s mark is wrongly entered in the register and wrongly remains in the register.,,
29. The trademark “ †bearing no.4111088 is accordingly directed to be cancelled/removed and the register is liable to be,,
rectified by the removing/ expunging of the said mark.,,
30. The Registrar of Trademark shall take proper steps for cancelling/expunging the Registration No. 4111088 from the register within six weeks.,,
31. The Petition, along with all the applications, is disposed of in the above terms.",,
32. Mr. Harish V. Shankar, ld. CGSC shall communicate this order to the Registrar for compliance.",,
