As per the Hon’ble High Court of Delhi[1] and in view of Section 17(2) of the Act, the plaintiff shall not have any exclusive right in respect of the mark “super‟. The intent behind Section 17(2) is to prevent such an abuse by a person who gets a composite mark registered in its favour, which includes a non-distinctive component. Where there is similarity of non-descriptive/nonessential parts of a mark, injunction cannot be granted. The word “super‟, which is being used in a laudatory/descriptive manner cannot be said to be an essential/distinctive part of the trademark of the plaintiff. Therefore, the plaintiff cannot have an exclusive right or monopoly over the right to use the word “super‟.
Judgements cited:
In case of Ultratech Cement Limited Grasim Industries Limited vs. Dalmia Cement Bharat Limited and Ors, 2016 (67) PTC 314 (Bom). In the said case, the plaintiff was the proprietor of various trademarks containing the word “Ultra‟ such as “UltraTech Concrete”, etc and the defendant was using the mark “DALMIA ULTRA‟ etc. The plaintiff sought an injunction against the use of the word “Ultra‟ by the defendant on the ground that the use of the word “Ultra‟ established a false nexus of the goods of the defendant with the business of the plaintiff and in view of the fact that the plaintiff was a prior user of the word „Ultra‟, injunction should be granted. The court, while observing that “ultra‟ is a laudatory and descriptive word commonly used in English language, held that the word “ultra‟ cannot be descriptive of the plaintiff’s goods.
In Natures Essence Private Limited vs. Protogreen Retail Solutions Pvt. Ltd. & Ors. The plaintiff was the owner of the registered trademarks “NATURE’S INC.‟ and “NATURE’S ESSENCE‟ and injunction was sought against the trademark of the defendants “Nature’s Tattva‟. Injunction was granted in favour of the plaintiff as the mark of the defendant was visually, phonetically and deceptively similar to the plaintiff‟s marks and conveyed a deceptively similar idea to that conveyed by the plaintiffs mark “NATURE‟S ESSENCE” and therefore, the potential of confusing a customer of average intelligence and imperfect recollection.
In Moonshine Technology Private Limited vs. Tictok Skill Games Pvt. Ltd. & ors: Injunction was granted by the court in favour of the plaintiff, after coming to finding that the word “BAAZI‟ is not being used in a descriptive manner by the defendant
The Hon’ble Delhi High Court:
The Court also stated that the colour scheme of the packaging is also totally different. The colour scheme of the plaintiff is yellow and orange/blue and yellow, and the defendant is primarily green. From the description of the packaging of the defendant’s product, it is more than clear that there is enough added material therein to distinguish the defendant’s product from that of the plaintiff. Therefore, it cannot be said that there is a possibility of confusion or deception being caused among the customers of the two products.
The Court reached a conclusion that based on aforesaid the plaintiff has failed to establish a Prima Facie case and therefore IA filed by plaintiff under Order XXXIX Rules 1 and 2 of the CPC is dismissed.
Conclusion:
It can be concluded that the owner of a laudatory mark cannot have an exclusive right or monopoly over the right to use the laudatory word if such mark is being used in a laudatory/descriptive manner, since the mark does not remain distinctive. However, if a mark which is a laudatory word, but is not being used in a descriptive manner then exclusive protection is provided to such mark since such a mark is a distinctive mark.
[1] SOOTHE HEALTHCARE PRIVATE LIMITED v. DABUR INDIA LIMITED, CS(COMM) 18/2022
DUCTUS EDGE 