Trademark Infringement and anti dissection Rule
Introduction:
This case revolves around a trademark dispute between DS Drinks and Beverages Private Limited and Hector Beverages Private Limited concerning the use of the mark "SWING" for beverages. Hector Beverages, the plaintiff, claimed infringement of its registered trademark "SWING" by DS Drinks, which intended to use the mark "CATCH SWING ENERGY INVIGORATES & MIND" for its energy drinks. The dispute led to an interim injunction passed by the learned Trial Court, which was later challenged by DS Drinks in the Delhi High Court.
Detailed Factual Background:
Hector Beverages Private Limited has been engaged in the food and beverage industry since 2009 and markets various products under brands such as TZINGA Energy Drink, PAPERBOAT, SWING, and SWING FIZZ. Initially launched as a sub-brand under the main brand PAPERBOAT, "SWING" eventually gained independent recognition and goodwill in the market since 2017. Hector Beverages registered the trademark under No. 3691925 for "PAPER BOAT SWING JUICIER DRINK" under Class 32, registered on December 1, 2017, and under No. 5280472 under Class 32, registered on January 11, 2022.
DS Drinks and Beverages Private Limited filed an application for registration of the mark "CATCH SWING ENERGY INVIGORATES & MIND" under Class 32 on a 'proposed to be used' basis. Hector Beverages filed a suit asserting that the defendant's mark was deceptively similar to its own, leading to the present proceedings.
Detailed Procedural Background:
Hector Beverages filed CS (Comm.) No. 350/2024 before the learned District Judge (Commercial Courts-06), Central District, Tis Hazari Courts, Delhi, seeking an injunction against DS Drinks from using the mark "SWING." The learned Trial Court, after hearing both parties, granted an interim injunction under Order XXXIX Rules 1 and 2 CPC restraining DS Drinks from using "SWING" for its energy drinks. DS Drinks appealed against this order by filing FAO (COMM) 61/2025 before the Delhi High Court.
Issues Involved in the Case:
Whether the mark "SWING" forms a dominant and distinctive part of Hector Beverages' trademark and whether DS Drinks' mark "CATCH SWING ENERGY INVIGORATES & MIND" is deceptively similar to it. Whether the learned Trial Court erred in granting the injunction by dissecting Hector Beverages’ composite mark "PAPERBOAT SWING." Whether the goods offered by the parties (juices and energy drinks) are allied products, giving rise to confusion among consumers.
Detailed Submission of Parties:
The appellant, DS Drinks, argued that its mark "CATCH SWING ENERGY INVIGORATES & MIND" is distinct from Hector Beverages’ mark "PAPERBOAT SWING." The products are different as Hector Beverages uses "SWING" for juices and "TZINGA" for energy drinks, while DS Drinks' product is an energy drink. The learned Trial Court erred in separating "SWING" from the composite mark "PAPERBOAT SWING" to grant exclusivity. The doctrine of anti-dissection applies, requiring the mark to be evaluated as a whole. They relied on Vasundhra Jewellers Pvt. Ltd. v. Kirat VinodBhai Jadvani & Anr., 2022 SCC OnLine Del 3370, and Phonepe Private Limited v. EZY Services and Another, 2021 SCC OnLine Del 2635.
The respondent, Hector Beverages, contended that "SWING" is the dominant part of both marks. The appellant’s mark has been applied for on a "proposed to be used" basis, and thus the respondent is the prior user and registered proprietor. Confusion is likely due to the visual and phonetic similarities. The appellate court should not substitute its discretion for that of the learned Trial Court unless grave errors are demonstrated. They cited Wander Ltd. and Ors. v. Antox India P. Ltd., 1990 SCC OnLine SC 490.
Detailed Discussion on Judgments Cited by Parties and Their Context: Wander Ltd. and Ors. v. Antox India P. Ltd., 1990 SCC OnLine SC 490 was referred to by the respondent to emphasize that appellate courts should interfere with discretionary orders of lower courts only when they are arbitrary or contrary to settled principles. Vasundhra Jewellers Pvt. Ltd. v. Kirat VinodBhai Jadvani & Anr., 2022 SCC OnLine Del 3370 was relied upon by DS Drinks to support the anti-dissection rule, arguing that composite marks like "PAPERBOAT SWING" must be evaluated as a whole. Phonepe Private Limited v. EZY Services and Another, 2021 SCC OnLine Del 2635 was cited by DS Drinks to assert that trademark infringement claims must relate to the entire mark unless a specific dominant portion has been exclusively copied. M/s South India Beverages Pvt. Ltd. vs. General Mills Marketing Inc. & Anr., 2014 SCC OnLine Del 1953 was relied upon by the Court to explain that while marks should be evaluated as a whole, the dominant portion may still be protected if confusion arises due to its similarity. M/s P.K. Overseas Pvt. Ltd. & Anr. v. M/s Bhagwati Lecto Vegetarians Exports Pvt. Ltd. & Anr., 2016 SCC OnLine Del 5420 was cited by the Court to reinforce the principle that even where products or marks appear composite, infringement can be based on the dominant feature.
Detailed Reasoning and Analysis of Judge:The Court emphasized its limited appellate jurisdiction, relying on Wander Ltd. It noted that no grave error in law or perversity existed in the Trial Court’s order. The Court held that the predominant part of both marks is the word "SWING", clearly visible on the product packaging. While acknowledging the anti-dissection rule, the Court clarified that the dominant feature test is an established exception when determining deceptive similarity.The Court opined that "PAPERBOAT" functions as a family mark, while "SWING" identifies the specific product variant. The presence of "CATCH SWING" in the appellant's mark creates a likelihood of confusion under the test of imperfect recollection.On the issue of whether juices and energy drinks are distinct, the Court found them to be allied products since both fall under the same trade channels and consumer groups. The Court rejected the argument that the respondent’s use of "TZINGA" for energy drinks precluded it from seeking protection for "SWING" in the same category.
Final Decision: The appeal was dismissed, and the injunction granted by the learned Trial Court was upheld, restraining DS Drinks from using the mark "SWING" for its energy drinks. However, it was clarified that the observations were prima facie and would not affect the final adjudication of the pending suit.
Law Settled in This Case:
The case reinforces that the dominant feature doctrine can apply alongside the anti-dissection rule when assessing trademark infringement involving composite marks. It also affirms that allied goods across similar trade channels can result in consumer confusion, justifying injunctive relief even when the competing products (juice vs. energy drink) differ slightly.
Case Title: DS Drinks and Beverages Private Limited Vs. Hector Beverages Private Limited
Date of Order: 03.03.2025
Case No.: FAO (COMM) 61/2025
Neutral Citation: DHC:2025:1391-DB
Name of Court: High Court of Delhi at New Delhi
Name of Judge: Hon’ble Mr. Justice Navin Chawla and Hon’ble Ms. Justice Shalinder Kaur
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Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi
