The Division Bench (DB – two Judge Bench) of the Delhi High Court in an appeal against the order of the Commercial Court, Delhi holds use of a sky-blue background and white font in their label is not sufficient for trademark protection as blue is commonly associated with water.

The representation of the parties’ marks (Ganesh Gouri and R.C. Plasto Tanks and Pipes Pvt. Ltd) are reproduced below

Previous Suit: Plasto had earlier filed a suit before the District Judge, Nagpur, alleging that Ganesh Gouri’s trademark/label was deceptively similar and sought injunction and damages. The case was settled, and a compromise decree was issued in November 2018, and as part of the settlement, Ganesh Gouri agreed not to use the ‘PLASTO’ mark, Plasto’s tagline ‘PLASTO HAI TOH GUARANTEE HAI,’ or any similar marks on products similar to those of Plasto.

Current Dispute: Plasto filed a new suit in Delhi, claiming that Ganesh Gouri’s use of ‘AQUA PLAST’ was deceptively similar to ‘PLASTO’. In this Suit the Commercial Court while passing the injunction order held:

1. The previous suit filed by Plasto in Nagpur was separate from the instant suit and had no bearing on it. The claims in both suits were different and the current case arose from a fresh cause of action.
2. Plasto was not required to file an execution or contempt petition in the Nagpur Court that considered the earlier case. It was not necessary for all subsequent cases between the parties to be filed in the same Court.
3. Ganesh Gouri’s claim of forum shopping was rejected, as the Court found that there was a new cause of action for the current suit, meaning it was not a continuation of the earlier one.
4. It was established that there was sufficient evidence of Plasto’s activities within the Court’s jurisdiction and the sale of Ganesh Gouri’s products via e-commerce website India Mart.
5. The Court also noted inconsistencies in the dates provided by Ganesh Gouri regarding the use of the disputed mark in various affidavits, including those filed to set aside the injunction order.

Appeal Before the DB

Ganesh Gouri filed an Appeal against the injunction order restraining them from selling, advertising, or dealing with the impugned label/trade dress and colour scheme similar to Plasto’s trademarks.

Ganesh Gouri in the appeal contends:

1. They had obtained a ‘No Objection Certificate’ (NOC) from the Trademark Registry for their artistic work on labels prior to Plasto.
2. The Commercial Court erred in dismissing the application to vacate the injunction and failed to properly consider the facts when issuing the impugned order.
3. The instant suit is an act of forum shopping as it was closely linked to the prior suit in Nagpur District Court. Moreover, the earlier suit has been amicably settled between the parties.
4. The Commercial Court has wrongly usurped jurisdiction to entertain the present suit.
5. The ex-parte ad-interim injunction led to the sealing of the factory halting production and causing significant losses.
6. The rival labels compared as a whole are not similar. Plasto had suppressed the fact that Ganesh Gouri had already received a ‘No Objection Certificate’ (NOC) from the Copyright Board and there was no prima facie case for trademark infringement.

Plasto contested the appeal raising the following grounds:

1. The claim of forum shopping is unfounded, as Plasto had disclosed the earlier Nagpur suit, moreover the current suit has arisen from a fresh cause of action involving a different mark/label.
2. The contention regarding jurisdiction has no basis and ought to not to be considered.
3. Plasto is the prior adopter, user, and registered proprietor of the label/copyright evidenced by documents.
4. Ganesh Gouri has also made contradictory claims regarding adoption and use of the disputed label/trade dress/colour combination.

Findings of the DB

1. The contention that the Commercial Court has no jurisdiction ought to fail. A new suit is maintainable when there is a fresh cause of action. Admittedly the earlier Nagpur suit involved a different cause of action and had already been settled with a compromise decree in the year 2018.
2. The Commercial Court, in its impugned order, observed that while Plasto did not successfully establish a case for passing off, it has made out a case for the grant of an interim injunction regarding the infringement of its copyright in the artistic work related to its registered trademark, device, label, trade dress, and colour scheme.
3. In the instant case admittedly both parties use their competing marks on similar products, namely water tanks and plumbing-related goods. However, merely because the marks are used on similar goods will not suffice to assume there will be confusion, unless the marks themselves are identical or similar.
4. It is relevant to assess the dominant part of a trademark when comparing it with a conflicting mark to determine if the competing marks are deceptively similar overall. However, it is not permissible to declare two marks deceptively similar by comparing only portions of each mark if, when viewed as a whole, the composite marks are dissimilar.
5. The injunction against the use of Ganesh Gouri’s labels and , claiming they were similar to Plasto’s label is incorrect and misplaced.
6. The rival labels, when compared as whole, can be said to be distinctive except for the background colour being blue and the font colour being white and the appearance of the word ‘PLAST’ and ‘PLASTO’ in the labels.
7. The only common element in the rival marks is the word ‘PLAST’ which is derived from ‘Plastic.’ Ganesh Gouri uses the prefix ‘AQUA’ with ‘PLAST’ and incorporates distinctive features such as a stylized ‘G’ in a hand gesture and a tagline in Hindi. This cannot be considered a colourable imitation or substantial reproduction of Plasto’s mark.
8. Moreover, Plasto had also agreed, in a prior settlement, not to object to Ganesh Gouri’s use or registration of marks that include the word ‘PLAST’ or the mark ‘AQUA PLAST.’
9. As Plasto had previously agreed not to object to Ganesh Gouri’s use of the words ‘PLAST’ or ‘AQUA PLAST’, no interim injunction can be sought alleging infringement when the said words are used in conjunction with other features.
10. Plasto’s objection to Ganesh Gouri’s use of a sky-blue background and white font in their label will not suffice for trademark protection as blue is commonly associated with water and used for water tanks. Moreover, there is no evidence to show that consumers have been confused by Ganesh Gouri’s label. Overall, Ganesh Gouri’s pictorial device is not prima facie similar to Plasto’s, and thus there is no infringement.
11. It is well settled that Appellate Court generally refrains from interfering with the trial court’s prima facie view unless it finds that the said court acted arbitrarily or disregarded established legal principles.

In the instant case the DB found that the Commercial Court erred in ruling that Ganesh Gouri’s label was deceptively similar to Plasto’s and therefore set aside the impugned judgment.

Comment

The findings of the DB emphasizes that a comprehensive evaluation of the marks as a whole is essential, rather than focusing on isolated elements. It further highlights that no monopoly can be claimed on use of a colour unless, the same is used in a particular configuration with attended features. It has to be shown that the mark has acquired secondary meaning and serves as a source identifier for the purpose of protection and registration.