In the present case, a Taiwan-based company, M/s Four Pillars Enterprise Co. Ltd, sought an interlocutory injunction restraining the Defendants from using the marks ‘REINDEER BRAND’ 
and ‘REINDEER WONDER’ 
, which are deceptively similar to the Plaintiff’s mark ‘DEER’ 
. The Plaintiff manufactures adhesive tapes and labels and became aware of the Defendants’ PVC insulation pipes bearing the mark ‘REINDEER’ through an e-commerce website. Additionally, the Plaintiff discovered the Defendants’ trademark registrations and issued a cease and desist letter, urging the Defendants to withdraw its applications filed before the Trade Marks Registry. However, the Defendants denied any similarity between the marks in response to the letter.
The Plaintiff further alleged that the Defendants also adopted a trade dress identical to the Plaintiff’s mark and quoted ‘MADE BY TAIWAN TECHNOLOGY’ on the packaging with an intent to associate with the Plaintiff.
The Defendants refuted these contentions, arguing that ‘DEER’ and ‘REINDEER’ are different animals. The main point of defence was the contention that the plaintiff’s mark has become “dead on account of disuse”, as the Plaintiff has not used the marks since 2011.
After analysing the facts, the Court rejected the Defendants’ argument regarding ‘DEER’ and ‘REINDEER’ being different animals and stated that the matter needed to be examined from the perspective of a consumer with average intelligence. The Court also assessed the Defendants’ intent and concluded that there was a deliberate attempt to imitate the Plaintiff as there was similarity in trade dress and the misrepresentation of ‘Made in Taiwan’ on the goods.
For the Defendant’s contention on disuse of the marks by the Plaintiff, the Court appreciated the impact of the decision of the Division Bench in Veerumal Praveen Kumar v. Needle Industries (India) Ltd, stating that an injunction in case of disuse of Plaintiff’s mark can be granted only if there is simultaneous satisfaction of the three established criteria of existence of a prima facie case, balance of convenience being in favour of grant of the injunction, and the likelihood of irreparable loss to the Plaintiff. Further, the Court found the marks of the Defendants similar to the Plaintiffs, and as the marks are used for identical goods, there is a likelihood of confusion in the minds of consumers with average intelligence and imperfect recollection between the goods of the Defendants and the Plaintiff.
In view of these circumstances, the Court restrained the use of the mark ‘REINDEER’ and it’s variants by the Defendants. The Court also dismissed the plea of the Defendants plea of disuse of the mark by the Plaintiff, as it devoid of any merit as per the Trademark Act of 1999.
Citation: Four Pillars Enterprise Co. Ltd vs Mahipal Jain & Ors., Delhi High Court, 07th March, 2024, CS(COMM) 472/2023, I.A. 12686/2023, I.A. 18655/2023
Authored by Ms. Ilana Baruah, Consulting & Strategy Team
Reviewed and Confirmed by Ms. Naika Salaria, Trademark and Copyright Team
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