Section 11 of the Trademarks Act, 1999 entails refusal of registration of trademark if it is found to be identical with or similar to an earlier registered trademark. The law prohibits the registration of an identical or phonetically similar mark, even though the same may have been registered in respect of goods or services, that are dissimilar. In such a scenario, the aggrieved party may move to Court and seek an order of interim injunction under Order 39 Rules 1 & 2 of the Civil Procedure Code, 1908 to restrain the use of the mark in question during the pendency of his case . The recent case of Aveda Corporation v. Dabur India Ltd. {2010 (42) PTC 315 (Del.)} revisits the considerations to be taken into account while pronouncing an interim injunction in a trademark dispute.

"Aveda" and "Uveda" the two marks in contention were held by Aveda Corporation and Dabur India Ltd. respectively. Aveda had acquired registration for the mark in 1986 in respect of hair care, skin care and other beauty products. Dabur had adopted "Uveda", also for the purposes of skin care and beauty products in August 2009. In this pursuance, Aveda contended that the marks were phonetically similar and accused Dabur of making an attempt to take advantage of the reputation earned by Aveda . They stated that the prominent use of the word "Uveda" on its products caused confusion in the mind of an ordinary consumer with an imperfect recollection and thus resulting in a passing off offence being committed. Dabur submitted that Aveda was 'admittedly' supplying its beauty products in India to only one Spa in Rishikesh and that its products were not available in the market. Dabur also argued that Aveda catered to a very high end limited market since they sold 50 ml of a product at a price of over Rs. 300, as against Dabur's pricing of Rs. 95 for 30 ml. Dabur also contended the packaging to be dissimilar – Aveda's packaging being small in size and blue in colour, whereas, Dabur packaged its products in red and orange/ saffron colour and the same being bigger in size. The style of writing of the two marks was also asserted to be different, with "Dabur" prominently written over the word "Uveda".

In addition, Dabur contended that since the word "Veda" was in public domain and indicative of the product implying vedic/ ayurvedic knowledge, Aveda Corp. could not claim monopoly on it. Dabur India was also entitled to use the word "Veda" with variation sufficient to distinguish the product of Dabur from Aveda and hence no cause of action would arise.. In this respect a reference to the ruling in Three- N- Products Private Ltd. v. Emami Limited, 2008 (4) CHN 608. Further to this, Dabur submitted that the general rule entailed examining the composite word as a whole rather than examining it in isolation while determining the genericity of a composite word. Thus, both words "Aveda" and "Uveda" were contended to be mere distortions of the generic word "Veda

Dabur also submitted that the court should consider the miniscule presence of Aveda before granting an interim injunction so as to preclude any irreparable loss to Dabur, in view of the fact that the sale of Dabur's "Uveda" was already Rs. 75 lacs and products of Rs. 1 crore were in pipeline. To fortify this assertion, reliance was placed upon Wander Ltd. & Anr. v. Antox India (P) Ltd., 1990 (2) Arb.L.R. 399. Additionally, Dabur argued that mere registration of the trademark without its use in India would not entitle Aveda to stop others from using a mark that was different from that of Aveda 's. "Dabur" vouching it to be a well-known brand was a well-known brand and no body could buy their product confusing it to be as that of Aveda Corp.'s,

Aveda Corp. reverted to these stating that merely because the sale of its product was confined to one customer i.e. the spa, the same could not be a ground for refusing protection to their trademark - the quantum of sale not being a measure of protection of the trademark. Aveda also stated that reputation had been acquired throughout India with the help of internet, tv and other media and that, the word "Veda" being in the common domain was insufficient to prevent exclusive protection of their mark.

The court after examining the aforesaid arguments agreed that the question of confusion among the common customers did not arise as the product of Aveda Corp. was not available in the market and was supplied only to one spa at Rishikesh. Considering that Dabur's product clearly represented itself to be a Dabur product, the court rejected the contention. that Dabur India had attempted to pass off its products as that of Aveda's.

In this view, the court denied the grant of an interim injunction, on the count that Aveda having no market in India could not have claimed to be suffering irreparable loss. The Court opined that in a situation where Dabur India is restrained from marketing its product, a loss of around Rs. 1 crore in respect of the pipeline products would accrue to them. The Court reiterated that establishment of a mere prima facie case is insufficient to grant an interim injunction, but due consideration to balance of convenience and irreparable injury was also to be given. The court, in furtherance of the ends of justice, directed Dabur India to use the word "Dabur" in a font as large as "Uveda".

© Lex Orbis 2009

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