Sunil Mittal & Anr. v. Darzi on Call

Sunil Mittal & Anr. v. Darzi on Call

CS(Comm) No. 1381/2016

19th April, 2017

In October, 2016, Plaintiff, Mr Sunil Mittal and Darzi (India) LLP, registered proprietor of the trademark “THE DARZI, THE SUIT PEOPLE 1981” (Label Mark), instituted a suit against the Defendant, M/s Darzi on Call, for injunction restraining the Defendant from using the word DARZI or any word or label mark identical or deceptively similar to DARZI resulting in infringement of Plaintiff’s trademark and passing off.

darzi

This Decision is on the application for interim relief that was moved by the Plaintiff against the Defendant as well as Defendant’s application for vacation of ex-parte injunction granted in favour of the Plaintiff’s.

1-17-685x400

Plaintiff’s Case:

  • Plaintiff is the registered proprietors of the trademark for textile goods in Class 24.
  • The word “DARZI” is an integral and essential part of Plaintiff’s and Defendant’s mark.
  • Plaintiff and the Defendant are engaged in the same nature of goods and services.
  • Defendant intentionally adopted identical and/or deceptively similar trademark “DARZI ON CALL” in a manner which cannot be differentiated and distinguished from Plaintiff’s trademark

Defendant’s Case:

  • Plaintiff’s registered trademark is a composite logo mark and the Plaintiff does not use the word “DARZI” independently.
  • The word “DARZI” is common to trade and are generic and descriptive of textile and tailoring
  • Section 2(m) and Section 17 of the Trademarks Act, 1999 clearly state that the registration of a trademark does not confer any right in parts of the trademark and registration of a logo or label mark confers rights over the mark as a whole and not over independent constituents
  • The respective marks of the parties have a different stylised font and tag line, get up, trade dress and colour combination are different
  • Several third parties have registered the marks containing the word “DARZI” for tailoring services thus rendering the said word common to trade.
  • Services of tailoring do not fall in Class 24 but in Class 40 and Defendant has applied for registration of its mark in Class 40.

Issue:

Whether Defendant’s mark “DARZI ON CALL” is deceptively similar to Plaintiff’s mark “THE DARZI”?

Court’s Observations:

While adjudicating upon the issue of the word DARZI being generic in nature, the key test applied is that of the territorial nature of the business for which the trade mark is being used. Parties are using the marks in the territory of Delhi and the genericity of the word DARZI has to be interpreted after taking into consideration the nature of business, place where the business is carried on, the word generally used at that place to designate the service of tailoring. The word DARZI is not used in Delhi as to designate the service of tailoring provided under trademark but is used in spoken language as descriptive of vocation/profession of a person individually and not as a service which is designated as “TAILOR”. The Plaintiff here has adopted an Urdu/Hindi word with English Script, which word prior to adoption by the Plaintiff was not generally used by those providing tailoring services as descriptive or designating their service. Protection afforded to trademark/ trade name is protection of a novel idea/concept/thought. If no one had till date thought of adopting a word as a trademark which till then has been used as descriptive of services, then the person who has this novel thought/idea deserves protection. Moreover, the Defendant itself having applied for registration of its label is estopped from taking the plea of the word DARZI being generic.

Essential feature of both the marks is DARZI and that is the recall value of the mark and thus, there is likelihood of confusion amongst the trademarks.

Colour scheme, etc. of a trademark is relevant in relation to trademarks qua other products, the same has no relevance to trademarks in the context of tailoring services.

On the contention of different classes of goods and services, the Court observed that in the absence of a specific class for tailoring, the Plaintiff cannot be deprived protection on account of their registration being in Class 24 as textile and textile goods are not usable articles without being tailored. Therefore, the registration by the Plaintiff in Class 24 does not disentitle the Plaintiff to prevent others from using its mark for similar businesses.

Defendant did not disputed Plaintiff’s prior use of the mark “DARZI”.

There is dishonesty and an attempt on part of the Defendant to ride upon Plaintiff’s goodwill and reputation.

Interim injunction was granted in favour of the Plaintiff.

Author: Devyani Nath

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