In the suit filed by Vivo Mobile Communication Co Ltd. (“Vivo Mobile”) against Mr. Jitendra Kumar Tiwari Trading as Maa Vaishnavi Chemicals (“Defendant”), the Delhi High Court issued a permanent injunction in favour of Vivo Mobile and the mark ‘VIVO’ was declared as a well-known trademark.
Vivo Mobile has been the prior adopter and registrant of the ‘VIVO’ and formative trademarks such as,
and
in respect of mobile phones since 2011. In April 2021, Vivo Mobile learned of a trademark application filed by the Defendant for the impugned mark,
/ VIVO +PLUS ADHESIVE’ on a proposed to be used basis, bearing no. 4755554 in Class – 01. In August 2021, Vivo Mobile discovered that the Defendant was selling adhesives in Delhi under the name VIVO +Plus Adhesive. Despite multiple opportunities to settle, the Defendant did not respond, leading to the suit before the Delhi High Court.The Court found that Vivo Mobile had established a case of infringement and passing off, thereby issuing an ad-interim ex-parte injunction. Despite being served, the Defendant did not appear in the Court, thus the Defendant was proceeded ex-parte. The Court held that due to the extensive use of Vivo Mobile’s mark, the adoption and use of the Defendant’s products bearing the identical mark, would lead to confusion and deception. Consequently, a permanent injunction was issued, restraining the Defendant from using the impugned mark, and Vivo Mobile was awarded costs.
Additionally, the Court reviewed submissions for declaring ‘VIVO’ as a well-known trademark in India. Considering various factors such as prior registrations, revenue, promotional and advertisement activities, internet presence, sponsorships and litigation history, ‘VIVO’ was declared a well-known trademark by the Court.
Relevant Paragraphs:
- Holding that while deciding the question of infringement, it is not mere comparison of dissimilarities in the two marks, but the consideration of the overall impression of the mark in the minds of general public that has to be seen, the Division Bench of this Court in the case of Himalaya Drug Company Versus S.B.L. Limited, 2012 SCC OnLine Del 5701, has held as follows:
“xxx xxx xxx
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- 44. The courts have propounded the doctrine of prominent and essential feature of the trade mark for the purposes of adjudication of the disputes relating to infringement of trade mark. While deciding the question of infringement, the court has to see the prominent or the dominant feature of the trade mark. Even the learned single judge agrees to this proposition when the learned judge quotes McCarthy on Trade Marks that all composite marks are to be compared as whole. However, it is dependent on case to case to basis as a matter of jury question as to what can be the possible broad and essential feature of the trade mark in question.
- It is settled law that where the defendant’s mark contains the essential feature of the plaintiff’s mark combined with other matter, the correct approach for the court is to identify an essential feature depending particularly “on the court’s own judgment and burden of the evidence that is placed before the Court”. In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are differences, rather overall similarity has to be judged. While judging the question as to whether the defendant has infringed the trade mark or not, the court has to consider the overall impression of the mark in the minds of general public and not by merely comparing the dissimilarities in the two marks.
- The ascertainment of an essential feature is not to be by ocular test alone but if a word forming part of the mark has come in trade to be used to identify the goods of the owner of the trade mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader for which confusion is likely to result. The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”. In the decision reported as (1951) 68 RPC 103 at page 105, De Cordova v. Vick Chemical Co., the plaintiffs were the proprietors of a label containing the words “Vick’s VapoRub” as the essential feature, registered in Jamaica, and the defendants used a similar label with the words “Karsote Vapour Rub” as the essential feature, and it was shown that the expression “VapoRub” had become distinctive of the plaintiff’s goods in Jamaica, an action for infringement was successful. (See De Cordova v. Vick Chemical Co. (supra), (1941) 58 RPC 147, Saville Perfumery Ld. v. June Perfect Ld., (1972) 1 SCC 618 : AIR 1972 SC 1359 at 1362, National Chemicals and Colour Co. v. Reckitt and Colman of India Limited and AIR 1991 Bom 76, National Chemicals and Colour Co. v. Reckitt and Colman of India Limited).
xxx xxx xxx”
(Emphasis Supplied)
- As regards factors in determining whether a mark is a well known mark, this Court in the case of Tata Sons Ltd. Versus Manoj Dodia and Others, 2011 SCC OnLine Del 1520, has held as follows:
“xxx xxx xxx
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- Trademarks Act, 1999 does not specify the factors which the Court needs to consider while determining whether a mark is a well known mark or not, though it does contain factors which the Registrar has to consider whether a trademark is a well known mark or not. In determining whether a trademark is a well known mark or not, the Court needs to consider a number of factors including (i) the extent of knowledge of the mark to, and its recognition by the relevant public; (ii) the duration of the use of the mark; (iii) the extent of the products and services in relation to which the mark is being used; (iv) the method, frequency, extent and duration of advertising and promotion of the mark; (v) the geographical extent of the trading area in which the mark is used; (vi) the state of registration of the mark; (vii) the volume of business of the goods or services sold under that mark; (viii) the nature and extent of the use of same or similar mark by other parties; (ix) the extent to which the rights claimed in the mark have been successfully enforced, particularly before the Courts of law and trademark registry and (x) actual or potential number of persons consuming goods or availing services being sold under that brand. A trademark being well known in one country is not necessarily determinative of its being well known and famous in other countries, the controlling requirement being the reputation in the local jurisdiction.
xxx xxx xxx”
(Emphasis Supplied)
Citation: Vivo Mobile Communication Co Ltd. vs Mr Jitendra Kumar Tiwari Trading As Maa Vaishnavi Chemicals, High Court of Delhi, 29th August, 2024, [CS(COMM) 510/2021] Available at: https://indiankanoon.org/doc/28452375/
Authored by Benita Alphonsa Basil, Associate, Trademark and Copyrights
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