NAJMI WAZIRI, J (Oral) C.M. APPL. 802/2018
Allowed, subject to all just exceptions. The application is disposed off.
FAO 13/2018 & C.M. 803/2018
This petition impugns an order dated 9.11.2017 of the ADJ-01 (North), Rohini Court, Delhi which dismissed the appellant's application under Order 39 Rules 1 & 2 CPC seeking an injunction against the respondents from using the mark "GLAM X". The appellant claimed that "GLAM X" was similar to its registered trademark "Glambirds". The reasons for dismissal of the application are that: (i) the trademark is a combination of two well known words, i.e. "Glam" and "Bird" which are generic words over which the
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plaintiff cannot lay any proprietary claim; these two words "Glam"
and "Birds" were neither innovated nor coined by the plaintiff; the word "Glam" is well established and long been used to denote glamour or glamorous. For absolute ownership, by way of coining or innovation, it is necessary in either of the two words which were joined together to make the trademark; (ii) that the use of the said trademark has not been for a long period so as to create an exclusive distinctiveness in favour of the appellant; (iii) nor has the use of the words been over a long period of time exclusively by the appellant only.
The impugned order referred to a number of other users, of the word "Glam" with another word. It was persuaded by the contention of the respondent/defendant that the word "Glam" was used along with the other generic word as was found on the internet at various websites:
https:// www.glamstudios.com
https:// www.glam.com
https:// www.theglamapD.com
https:// www.glampresents.com
https:// www.glammodel.com
https:// www, glamtalents. com
https:// www.glamhunt.com
The order also referred to various judgements cited by the petitioner such as "Living Media India Ltd. & Anr. Vs. Alfa Dealcom Pvt. Ltd. & Ors." (FAQ (OS) 110/2014, C.M. No. APPL. 3742/2014 decided on 29.01.2016 wherein the defendant was not
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injuncted from using the word. The petitioner had also relied upon the judgment of this Court in Walter Bushnell Pvt. Ltd. & Ors. Vs. Miracle Life Sciences & Anr. (CS (OS) No. 220/2013 dated 26.05.2014) in which an injunction was granted from using the word
"Drotin". The reason being the first four letters "DROT" used by the defendant were deceptively similar to the trademark of the plaintiff in the case. This mark was being used for a long time and it had acquired distinctiveness with respect to the medicines manufactured by the plaintiff.
The respondents have relied upon "Living Media India Ltd."
(supra) in which the Court declined injunction to the petitioner against a publication by the name of "Nation Today" vis a vis the petitioner's trademark "Nation Today" on the ground that the word
"Today" had not acquired such distinctiveness for the plaintiff, so as to make out a strong case for grant of an interim injunction; the word
"Today" was not coined and there could be no claim to such generic term. The Court concluded that the word "Today" has not acquired such distinctiveness to be associated only with the plaintiff. In the same vein, the impugned order relied upon the dictum in "Jain Rice Land Pvt. Ltd. Vs. Sagar Overseas (CS (Comm.) 796 of 2016 apropos the use of the trademark "Swadisht", which held that the word "Swadi" is not a coined word. In the case of "Marico Ltd. Vs. Agrotech Foods Ltd., 174 (2010) DLT 279 the Court was of the view that unless the descriptive trademark has been in use for such a long time so as to create an exclusive identification with the plaintiff only, the protection cannot be granted. At this point, a reference was made
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to the decision of the Hon'ble Supreme Court in M/s Heinz Italia & Anr. v. M/s Dabur India Ltd (2007) 6SCC1 wherein the trademark
"Glucon D" was registered in favour of the petitioner. However, in the present case, the court noted that the two words, "Glam" &
"Birds" could not be associated exclusively with the petitioner as they had formed no secondary meaning purely with respect to the plaintiff alone.
The appellant submits that the impugned order has erred in not fully appreciating the dicta of Walter Bushnell Pvt. Ltd. (supra) insofar as it relied upon the case of Rolex Sa v. Alex Jewellery Pvt Ltd. 2009 (41) PTC 284 (Del.) because it was not necessary that the plaintiff ought to have taken steps against all the infringers of the trademark; and that since such action against them had not been taken, it could not be said that the plaintiff's trademark had lost its distinctiveness only for the said reason. In this regard, the court is of the view that Walter Bushnell Pvt. Ltd. is of no assistance to the plaintiff because it is not the case of the plaintiff that the allegedly offending trademark, "GLAM X" has been used by it too. The two marks, "GLAM X" and "Glambirds" are different and the latter cannot be said to have exclusivity only to the plaintiff. The learned counsel has then relied upon the judgment in
Indian Shaving Products Ltd. Vs. Gift Pack & Anr. 2008(38) PTC 49 (Del.), which held that it is not necessary that the trademark ought to have used for a long time. The court was of the view that what is to be seen by the Court is whether the plaintiff has acquired good-will and reputation for his products. In the present case, the trademark
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itself is not in consideration but another coined word, therefore credibility or the standing user of the petitioner's trademark would not be necessary.
Lastly, the appellant relied upon the judgment in Automatic Electric Limited vs. R.K. Dgawan & Anr. 77 (1999) DLT 292 to contend that the coined word will also have to be considered in order to gauge its impact on the general public. The alleged infringing word in the present case is "GLAM". However, it would be seen that
"GLAM" was only half of the registered trademark and by itself,
"GLAM" has been in use for a long time by the general public, to denote glamorous or glamour.
The appellant's, trademark "Glambird" has been in use only from 2010, which cannot qualify to be a very long time. Furthermore,
"Glam X" and "Glambirds" are not at all distinctively similar either visually or phonetically. In the circumstances, the Court finds no reason to interfere with the impugned order. The petition is without merit. Accordingly it is dismissed.
NAJMI WAZIRI, J
JANUARY 09, 2018/acm
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