Friction of Headphones; Infringement dispute of “Boat” vs “Boult”

Imagine Marketing Pvt Ltd v. Exotic Mile (CS (COMM): 519 OF 2019)

In this case, the plaintiff filed a suit for trademark infringement, passing off, and copyright infringement against the defendant in 2019. The Hon’ble Delhi High Court Judge ‘Justice Mukta Gupta’ on 21st January, 2020, granted a decree of an interim injunction in favour of the plaintiff and against the defendant as prayed by the plaintiff in the suit. The Court ordered the defendant not to use the trademark ‘BOULT’ and tagline ‘UNPLUG YOURSELF’ in their goods and/or services till the disposal of the present suit.

Facts:

1. The plaintiff, i.e., Imagine Marketing Pvt. Ltd. is a registered company incorporated under the Companies Act in the year 2013. The plaintiff is the registered proprietor of the trademark ‘boAt’ in many classes of the trademark including, class-9, 11 and 35.

2. The plaintiff’s company is a well-known for manufacturing and selling electronics gadgets. The plaintiff invested a huge amount in advertisement of their goods as the plaintiff entered into contracts with many celebrities for advertising their goods. Now, the plaintiff’s company has become popular in the field of electronic gadgets as the annual turnover of the company has increased from 5 crores to 330 crores in just a span of five years.

3. The plaintiff filed a suit for trademark infringement, passing off, copyright infringement, and seeks a decree of permanent injunction restraining the defendant, its agents, subsidiaries, officers from selling, importing, exporting, offering for sale, distributing, advertising or in any manner dealing in goods and/or services under the mark ‘BOULT’ or any other mark which is deceptively similar to the plaintiff’s mark, i.e., ‘BOAT/boAt’. 

4. The plaintiff submitted that, the tagline used by the defendant in their goods i.e., ‘UNPLUG YOURSELF’ is deceptively similar to the plaintiff’s tagline i.e., ‘PLUG INTO NIRVANA’. Also, the defendant has also copied the product name of the plaintiff which is deceptively similar to that of the plaintiff’s. 

5. The plaintiff submitted that, the plaintiff has been selling their products on e-commerce platforms and the defendant has also been selling on the same platform, which creates confusion in the minds of people that the defendant’s products belongs to plaintiff’s company as the defendant mark ‘BOULT’ is phonetically similar and identical to that of plaintiff’s mark ‘boAt/BOAT’.  

6. On 25th September, 2019 the Court granted an ad-interim ex-parte order in favor of the plaintiff and against the defendant.

7. Thereafter, the defendant filed an application stating that the defendant is a company incorporated in the year 2017 and has applied for trademark registration of ‘BOULT’ & ‘BOULT AUDIO’ in the year 2017 and the same has been registered in favour of the defendant in class-9. The defendant invested a considerable amount for promoting its products as the defendant also entered into contracts with various Bollywood celebrities for advertising its products. The defendant’s annual turnover has increased from 2.9 crores to 66 crores in two years.

8. The defendant’s counsel argued that, the mark ‘BOULT’ has been registered since 2017 and the defendant has been selling its products under the name of ‘BOULT’ since the year 2017. So, the plaintiff is not entitled for any injunction in view of the delay. It is well settled trademark law that, the mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. In the case of, K.R. Chinna Krishna Chettiar Vs. Shri Ambal and Co, the Supreme Court held that the resemblance between the two marks must be considered with reference to the ear as well as the eye, and in the present case the mark is not similar with reference to both i.e., ears and eyes.

Judgment:

On 21st January, 2020 a single bench Judge, Hon’ble Justice Mukta Gupta, of Delhi High Court passed an order in favour of the plaintiff and against the defendant. The Court has passed an order of an interim injunction, which restrains the defendants its agents, distributors and officers from selling, using, exporting, importing, manufacturing, offering for sale, or in any manner dealing with goods and/or services under the name ‘BOULT’ and the tagline ‘UNPLUG YOURSELF’ till the disposal of the present suit. The Court considered that the defendant’s mark ‘BOULT’ is phonetically similar to that the plaintiff’s mark ‘BOAT/boAt’, and it would create confusion in the minds of the consumers when they buy from the same platforms because of the first two and the last alphabets in the mark reflects similarity.