The post discusses an interesting decision by the Delhi High Court on similarity of marks BOAT and BOULT used for consumer electronic devices such as earphones, headphones, speakers, and other accessories. Imagine marketing Pvt. Ltd (“Plaintiff”), owner of the mark BOAT has brought this action against Exotic Mile (“Defendant”), owner of the mark BOULT alleging trademark infringement, copyright infringement and passing off.

The Plaintiff’s main contentions were:

• The trademark / boAt was coined and adopted in the year 2014.
• It is the registered proprietor of the trademarks boAt, , and in Classes 9, 11 and 35.
• It is also the owner of the copyright in the mark/logo displaying a boat within the letter ‘A’ i.e., .
• It has been receiving complaints from various customers and distributors regarding sub-standard quality of Defendant’s products mistaking them as Plaintiff’s products.
• The Defendant is selling cheap and low quality products under the brand BOULT on the same online platforms i.e., Amazon and Myntra.
• The Defendant has dishonestly adopted the mark BOULT which is phonetically and deceptively similar to its mark BOAT with the same opening and closing syllables, and covers identical products.
• The Defendant has also adopted the logo/mark which is deceptively similar to its registered logo/mark .
• While clicking its product on e-commerce platforms, the Defendant’s product is also shown which leads to further confusion in the minds of the general public at large.
• The Defendant has also adopted the tagline “UNPLUG YOURSELF” which is deceptively similar to its tagline “PLUG INTO NIRVANA”.
• Moreover, the Defendant has copied the names of its product e.g., their product named as ‘Boult BassBuds’ is deceptively similar to its product ‘boAt BassHeads’.

The Defendant defended its case as follows:

• It had coined and adopted its trademarks , BOULT and BOULT AUDIO in the year 2017, and is the registered owner of the mark/logo in Class 9.
• It also designed and created its logo with the mention of its trade name ‘BOULT AUDIO’, which is presently pending registration before the Registrar of Trade Marks.
• Its products feature in the top 10 audio gadgets on various e-commerce platforms with a very high rating from over 1,00,000 customers.
• It has also invested considerable amount of money on advertising and promotion of its brand BOULT.
• There is no similarity between the marks BOAT and BOULT.
• The Plaintiff does not use the logo as a standalone and it is only used as a part of its trademark . The Plaintiff’s trademark, if any, used in a standalone manner is actually , which is completely different from the Defendant’s logo .
• The taglines of the Plaintiff and Defendant are also not similar, the only common word being ‘PLUG’ which is common to trade.

The Single Judge after considering the pleadings and oral submissions of both parties granted an interim injunction in favour of the Plaintiff till disposal of the suit, based on the following main observations:

• The Plaintiff is the prior user of the trademark BOAT for the same category of goods with similar descriptions.
• The similarity between the two marks has not to be adjudicated by way of a precision but the manner in which the senses perceive a fact and retain it in the memory.
• BOAT and BOULT being quite phonetically similar, a consumer would not have a correct and complete reflection when he goes to buy the product whether the product is of BOAT or BOULT because of the first two and the last alphabet of the two words being the same.
• Further, the logos of the two products are also similar in the form of a triangle. The tagline also uses the word ‘PLUG’ in both so as to cause a deception.
• The Defendant is also using deceptively similar name for its product i.e. “Boult BassBuds”, and has also adopted a similar get up and colour scheme for its products and packaging.
• Once the Court comes to the conclusion that the Defendant’s adoption is dishonest, merely because it is using its mark since 2017 or has invested huge amounts in promotion and advertising would not tilt the balance of convenience in its favour.

The court thus proceeded to restraint the Defendant from using the marks BOULT/bOULT, , and .

Appeal by Exotic Mile

The Defendant appealed the order before the Division Bench (two judges bench) of the Delhi High Court challenging the above injunction order, which is pending adjudication. However, the Appellate Court at the time of admission of the Appeal took an opposite view on similarity of marks holding that “Prima facie we are of the view that there is no similarity, visually or phonetically between the marks of original plaintiff and the original defendant, therefore, as an ad interim relief, we hereby stay operation, implementation and execution of the order dated 21.01.2020 passed by the learned Single Judge in IA No. 14039/2019 and IA No. 13041/2019 in CS(COMM) 519/2019 till the next date of hearing”.  While the operation and implementation of the order has been stayed for the time being, it would be interesting to watch whether the Division Bench after hearing arguments will take a different view. The matter is listed for hearing in November 2020.