Background

The article summarises an Appeal filed by Wow Momo Foods Pvt. Ltd (WMFPL) against the judgement of the Single Judge of the Delhi High Court whereby it dismissed the injunction application of WMFPL, holding that “WOW” is a common, non-distinctive word. The appellant, WMFPL is the registered proprietor of several trademarks, including “WOW MOMO,” “WOW DIMSUMS,” and “WOW MOMO INSTANT,” as well as device marks prominently featuring “WOW!” The Respondent, Wow Burger, launched business activities in India under the marks “WOW BURGER” and associated logos. WMFPL alleged that Wow Burger’s use of “WOW BURGER” mark infringed its registered trademarks and sought an interlocutory injunction to restrain Wow Burger from using the marks.

1. Contentions of the Parties
   1. Appellant (WMFPL)
      1. Trademark Rights: claimed it holds 25 registrations of various WOW MOMO and WOW formative marks and exclusive rights over the “WOW!” family of marks. WMFPL argued that any use of “WOW” as a prominent feature in a food-related mark would be deceptively similar and infringing.
      2. Distinctiveness: WMFPL asserted that “WOW MOMO” and related marks had acquired distinctiveness through extensive use, business turnover, and brand promotion.
      3. Likelihood of Confusion: WMFPL argued that the use of “WOW BURGER” would likely cause confusion or association with Wow Momo’s marks among consumers.
   2. Respondent (Wow Burger)
      1. No Appearance: The respondents did not appear or contest the appeal, and their right to file a reply/written statement was closed.
2. Court’s Analysis
   1. Principles of Trademark Infringement
      1. Test for Infringement: The court emphasized that infringement is determined by comparing the marks as a whole, focusing on whether the defendant’s mark is deceptively similar to the registered mark, especially in the context of similar goods/services and the likelihood of confusion among consumers of average intelligence and imperfect recollection.
      2. Initial Interest Confusion: the court emphasised initial confusion or association is sufficient for infringement, even if the consumer later realizes there is no connection.
   2. Distinction Between Infringement and Passing Off
      1. Infringement vs. Passing Off: The court clarified that, unlike passing off, infringement does not depend on differences in get-up, color, or packaging; the focus is on the marks themselves. The court noted that the Single Judge considered factors such as visual differences in device marks, menu offerings, and whether the appellant sold vegetarian or non-vegetarian burgers. The Appellate Court clarified that these considerations are irrelevant for determining infringement, which is a mark-to-mark comparison
   3. Distinctiveness and the “WOW” Element
      1. Standalone “WOW”: The court agreed that “WOW” alone is a common exclamation and not distinctive. However, when combined with a food item (e.g., “WOW MOMO,” “WOW BURGER”), it becomes distinctive and capable of indicating origin
      2. Idea Infringement: The court found that the concept of combining “WOW” with a food item was distinctive and that Wow Burger’s use of the same idea amounted to “idea infringement”. The court noted that “respondent has, in coining and using the name WOW BURGER, borrowed the idea reflected in the appellant’s marks WOW MOMO and WOW DIMSUM. Such replication of the idea of the mark, as employed by the appellant, also results in likelihood of confusion”.
   4. Anti-Dissection and Dominant Feature Tests
      1. Composite Marks: The court reiterated that marks must be compared as a whole, however, the dominant feature (here, “WOW”) is crucial. The presence of “WOW” as the dominant prefix in both marks led to a likelihood of confusion. The court noted that the Single Judge relied on the anti-dissection rule to reject the injunction but then dissected the composite marks by focusing on “WOW” alone. The Appellate Court found this contradictory.
   5. Family of Marks Principle
      1. Family of Marks: The court recognized that Wow Momo had a “family” of marks with the common prefix “WOW,” which had acquired distinctiveness. Use of “WOW” with another food item by a third party would likely cause confusion. The court observed that consumers of average intelligence and imperfect recollection would be inclined to believe that “WOW BURGER” was another product from the same stable as “WOW MOMO” and “WOW DIMSUMS. Further, this confusion is exacerbated by the fact that the dominant feature (“WOW”) is identical and the goods/services are similar.
   6. Disclaimers and Registration
      1. Effect of Disclaimers: Disclaimers on some of the registrations owned by WMFPL did not affect Wow Momo’s rights over the composite marks as a whole. The Appellate court clarified that disclaimers only affect the right of exclusivity in respect of the mark to which they apply. Out of the 25 marks registered by Wow Momo, the disclaimer applied only to a few. The court stated that there is no principle by which the disclaimer can attach to any other marks beyond those specific registrations
      2. No Registration for “WOW” Alone: The absence of registration for “WOW” or “WOW!” alone only prevented exclusivity over those standalone marks, not over the composite marks. The Court opined that the relevant question is whether the respondent’s “WOW BURGER” mark, when viewed as a whole, is deceptively similar to Wow Momo’s registered composite marks (such as “WOW MOMO” or “WOW DIMSUMS”).
   7. Conclusion and Order
      1. Appeal Allowed: The appellate court set aside the Single Judge’s order, granted an injunction restraining Wow Burger from using “WOW BURGER” or any mark deceptively similar to Wow Momo’s “WOW!” formative trademarks, pending disposal of the suit.

Our comment

The judgement emphasises the protection of distinctive concept or “idea” behind a trademark, rather than its exact visual or textual elements. The court noted that the replication of the idea of the mark also results in likelihood of confusion and is, therefore, often referred to as ‘idea infringement’.