WHO IS “SUPER”: AN ATTEMPT TO CLAIM PROTECTION OVER LAUDATORY WORD

SOOTHE HEALTHCARE PVT. LTD.   V.   DABUR INDIA LTD

BRIEF FACTS

In this case, Plaintiff is a private limited company manufacturing, marketing and trading in goods relating to personal hygiene, sanitary preparations etc. since 2012 and, in 2020 it started manufacturing and dealing in baby diapers, for this the plaintiff got various trademarks like “Super Cutes” ,  “Super Cutez” and “Super Cutesters” registered. The plaintiff was using these marks publically and gained popularity and reputation in the market. In 2021, the defendant ventured in the business of baby diapers with the trademark “Super Pants” which according to the plaintiff was deceptively similar to their trademarks “Super Cutes”, “Super Cutesters” and “Super Cutez” for which the plaintiff was seeking interim injunction from court and alleged infringement and passing off their goods.

PLAINTIFF’S CONTENTIONS

1. The plaintiff contended that the trademark used the defendant “Super Pants” is deceptively similar to the registered trademarks of the plaintiff “Super Cutes”, “Super Cutesters” and “Super Cutez” in respect of identical goods that is, baby diapers and hence seeks interim injunction in terms of Sections 28, 29 read with Section 31 of the Trade Marks Act, 1999 (the Act).
2. The learned council of the plaintiff contends that the plaintiff has been using the trademark since 2020 and hence is a prior user of the aforesaid trademarks with regard to baby diapers.
3. According to the plaintiff, the intention of the defendant is not bona fide since the defendant has not provided the plaintiff with a justification to use a similar trademark.
4. It has been contended by the plaintiff that essential elements of the plaintiff’s trademark has been copied by the defendant.

DEFENDANT’S CONTENTIONS

1. According to the defendant, the word ‘Super’ is a laudatory word and has been used in a descriptive manner by the plaintiff as it has used ‘Super Soft Feel’, ‘Super Thinz’, ‘Super Bubble Technology’, and ‘Super Absorbent’ to describe their product. Hence, the word ‘Super’ is laudatory and descriptive in nature.
2. The word ‘Super’ has been in common use by other manufacturers of baby diapers. Hence, it is common to trade. The word ‘Super’ is descriptive in nature and indicates the quality of the product of the defendant hence, no case of infringement can be made in accordance with section 30(2)(a).
3. The defendant claimed that it only seeks registration of the device mark which includes “Super Pants” along with the registered trademark of the defendant ‘Dabur’ and does not seek registration of the word “Super Pants”.
4. The defendant submitted that the registration granted to the plaintiff is only in regard to the composite mark “Super Cutes” “Super Cutesters” and “Super Cutez” and not wordmark ‘Super’. In terms of Section 17 of the Act, registration of a composite mark will not confer any exclusive right to the plaintiff in respect of a part of the said composite mark, i.e. „super‟ in the present case.
5. Defendant contended that on comparing the packaging of the defendant’s product with that of the plaintiff’s, no similarity can be made out and hence there is no case of passing off.

LEGAL APPLICATION

1. A comparison has been drawn out in between the packaging of the defendant’s and plaintiff’s product, accordingly that no similarity can be seen in the packaging of both products except the word ‘Super’.
2. The trademark of the defendant ‘Dabur’ is included in the packaging of the product and prominently displayed along with the word ‘baby’ which is not there on the plaintiff’s product packaging.
3. The color combination of both the marks is different as the plaintiff’s product packaging is a combination of yellow with orange or blue and defendant’s product packaging is primarily green.
4. On reading the description it can be clearly made out that the defendant has added enough material to distinguish it from the plaintiff’s product.
5. As mentioned by the court, the word ‘Super’ is a laudatory word according to the Oxford’s and Cambridge dictionary.
6. According to the court, the word ‘Super’ is devoid of any distinctive character and not capable of distinguishing the plaintiff’s goods. Registration of mark “Super Cutes” “Super Cutesters” and “Super Cutez” does not give plaintiff an exclusive right over the word ‘Super ‘according to section 17(2) of the trademark act,1999

CONCLUSION

According to the court, plaintiff failed to establish a prima facie case against the defendant as no case of passing off can be made as the mark of the plaintiff is not deceptively similar to the defendant’s mark since no similarity can be seen in the trade dress of the two along with different product description so no confusion can be made in the minds of the consumers regarding them. The word ‘super’ was also proved to be laudatory or descriptive in nature and it indicates the quality of the product of the defendant hence, no case of infringement could be proved as well. Hence, the court did not grant interim injunction.

CS(COMM) 18/2022 (HC OF DELHI)