Use of deceptively similar packaging, fonts, and colors constitutes not only infringement but also passing off.
Introduction:
Trademark conflicts in the consumer appliances sector have seen a surge with increasing brand consciousness and aggressive marketing tactics. The case of Maya Appliances Private Limited vs Vibrant Concepts And Designs is a classic example that draws attention to the nuances of prior use, deceptive similarity, and goodwill associated with trademarks. It reflects how courts interpret statutory provisions in light of facts, commercial honesty, and the intention behind adopting certain marks.
Detailed Factual Background:
Maya Appliances Private Limited, a well-established company known for manufacturing and selling kitchen appliances including mixer grinders, operates under the trademark "BUTTERFLY" and related marks like “BUTTERFLY PREMIUM”, “BUTTERFLY RAPID”, “BUTTERFLY SMART”, etc. The trademark “BUTTERFLY” was registered as early as 1972, and the company claims consistent and continuous use of the mark for over five decades.
The plaintiff alleged that Vibrant Concepts And Designs (defendant), a relatively newer entrant in the market, began manufacturing and selling similar appliances under the impugned mark “Butterfly India”, incorporating it prominently on their packaging and product materials. This adoption, according to Maya Appliances, was dishonest and intended to ride on the goodwill and reputation associated with their mark. The usage of identical and confusingly similar marks on identical products like mixer grinders was causing deception among consumers and amounting to infringement and passing off.
Detailed Procedural Background
Maya Appliances filed a civil suit seeking a permanent injunction against the defendant from using the marks “Butterfly India” or any other mark deceptively similar to “BUTTERFLY” in relation to goods falling under class 7 and class 11, particularly kitchen appliances like mixer grinders. An interlocutory application under Order XXXIX Rules 1 and 2 of the Civil Procedure Code, 1908 was also moved seeking temporary restraint against the defendant during the pendency of the suit.
Issues Involved in the Case
The case primarily revolved around the following legal issues:
Whether the defendant’s use of the mark “Butterfly India” amounts to infringement of the plaintiff’s registered trademark “BUTTERFLY”?
Detailed Submission of Parties:
The plaintiff submitted that the trademark “BUTTERFLY” was inherently distinctive and had acquired immense reputation through extensive and continuous use since 1972. It held numerous registrations for variations of the mark in classes 7 and 11, including “BUTTERFLY PREMIUM” (Reg. No. 3638185), “BUTTERFLY SMART” (Reg. No. 2874284), and others. Counsel argued that the mark had acquired the status of a well-known trademark under Section 11(6) of the Trade Marks Act, 1999.
It was further submitted that the packaging, get-up, and trade dress used by the defendant were a colorable imitation of the plaintiff’s packaging, creating confusion among consumers. Multiple grievances and instances of actual confusion were highlighted.
On the other hand, the defendant claimed that it was using the mark “Butterfly India” as part of its company’s brand strategy and denied any intention to deceive. The defendant also attempted to distinguish its products based on market segment and consumer base.
Detailed Discussion on Judgments and Case Laws Cited
The plaintiff relied on several landmark decisions, including:
Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 – where the Hon’ble Supreme Court held that in determining deceptive similarity, factors such as nature of marks, nature of goods, similarity in nature, and class of consumers must be considered.
Satyam Infoway Ltd. v. Sifynet Solutions (P) Ltd., (2004) 6 SCC 145 – which emphasized that domain names, like trademarks, can be protected from passing off.
K.R. Chinna Krishna Chettiar v. Sri Ambal & Co., AIR 1970 SC 146 – reinforcing that even phonetically similar marks can cause confusion and hence be injuncted.
Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd., (2018) 9 SCC 183 – highlighting how prior use and registration confer a statutory right to seek injunctions in cases of deceptive similarity.
These judgments were cited in the context of reinforcing the distinctiveness of the plaintiff’s mark and the likelihood of confusion created by the defendant’s use.
Detailed Reasoning and Analysis of Judge:
The Hon’ble Judge analyzed the competing marks, packaging, and goods, noting that the defendant had adopted not only the mark “Butterfly India” but had also used packaging deceptively similar to that of the plaintiff, including identical font styles and color schemes. The Court emphasized that such mimicry went beyond mere coincidence and appeared to be a deliberate attempt to trade upon the plaintiff’s reputation.
It was held that the plaintiff had made out a prima facie case of infringement as well as passing off. The balance of convenience was found to be in favor of the plaintiff, and irreparable harm would be caused if the defendant was not restrained. The Judge further stated that merely adding the word “India” to “Butterfly” did not create sufficient distinction to avoid confusion.
Referring to Section 29 of the Trade Marks Act, 1999, the Court observed that use of a mark identical or deceptively similar to a registered mark for identical goods amounts to infringement, especially when it causes likelihood of confusion or association.
Final Decision
The Hon’ble High Court granted an ad interim injunction restraining the defendant, its agents, servants, and representatives from using the mark “Butterfly India” or any other deceptively similar mark in relation to mixer grinders or any other kitchen appliances during the pendency of the suit.
Law Settled in this Case:
The case reiterates that:
A registered trademark holder has the exclusive statutory right to protect its mark from misuse, even if a competitor tries to distinguish the impugned mark by suffixing generic country names.
Deceptive similarity is determined not just by visual or phonetic comparison but also by the overall impression, packaging, and intention of use.
Use of deceptively similar packaging, fonts, and colors constitutes not only infringement but also passing off.Well-known trademarks deserve broader protection against attempts to ride on their reputation.
Case Title: Maya Appliances Private Limited Vs Vibrant Concepts And Designs
Date of Order: 2 April 2024
Case No.: CS(COMM) 744/2023
Neutral Citation: 2024:DHC:2445
Name of Court: High Court of Delhi
Name of Judge: Hon’ble Mr. Justice Anish Dayal
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
