No glee for ‘ASTRALGLEE’- Delhi High Court holds it similar to ASTRAL
The similarity of marks ‘ASTRAL’ and ‘ASTRALGLEE’ are the subject of dispute between Astral Poly Technik Limited and Astralglee. Astral objected to the use of the mark ‘ASTRALGLEE’ in respect of essential oils and has sought an injunction based on their use and registration of the mark ‘ASTRAL’ in several classes, including class 3.
Astral Poly Technik (Plaintiff) contended:
- They were incorporated in 1996, and are engaged in diversified business activities with a focus on manufacturing, distributing, and selling high-quality pipes, parts, and fittings for use in plumbing, sewage and drainage, surface and glass cleaners, sanitizers, stain removers, and surface protectants, etc,.
- They adopted the mark ‘ASTRAL’ in 1996 and obtained registrations of the said mark in word form and label/device marks. The mark is also registered in class 3, which covers ‘essential oils.’
- They have built substantial brand equity through technological innovations, consistent, high-quality products, and aggressive marketing.
- They came across the Defendants’ adoption, and use of the mark ‘ASTRALGLEE’ in July 2019 when the latter applied for registration in Class 35. The mark was subsequently abandoned for non-prosecution. Plaintiff has opposed Defendant’s application for the mark ‘ASTRALGLEE’ in Class 3 and the proceedings are ongoing before the Trademark Registry.
- The Defendants’ mark fully incorporates the Plaintiffs’ mark and therefore amounts to trademark infringement.
- Plaintiff filed the suit as the Defendants failed to comply with Plaintiff’s requisitions.
Astralglee (Defendant) contended:
- In January 2018, they started the process of research and development and entered into the essential oils business.
- They have been using the trademark ‘ASTRALGLEE’ since May 2018. In November 2018, they engaged a third-party manufacturer to manufacture their products, and the first delivery of the goods using the impugned trademark was made in March 2019. They have also obtained domain name registration in www.astralglee.com, www.astralglee.in, and www.astralglee.co.uk. The Plaintiffs are engaged in the business of manufacturing pipes, fittings, sewerage drainage pipe fittings, etc., and their products do not in any manner conflict with those of the Defendants, essential oils.
- Plaintiffs are falsely claiming the use of the mark ‘ASTRAL’ for the goods covered under Class 3. The invoices filed by the Plaintiffs are of the year 2016 and thereafter of the year 2020, which shows a lack of intent to use the mark ‘ASTRAL’ or to come in the field of products under Class 3 especially essential oils.
- Adoption of the mark ‘ASTRALGLEE’ is bona fide as it has been conceptualized by merging two words Astral, which means ‘relating to stars or outer space’, and ‘Glee’, which means ‘blissfulness’.
- Plaintiff cannot claim a monopoly in the word Astral as it is a common word in the English Dictionary.
- Admittedly, Plaintiff is the registered proprietor of the mark ‘ASTRAL’ under Class 3, which includes ‘essential oils.’ Once the mark is registered, the registered proprietor gets an exclusive right to its use. It is relevant to note that the Plaintiff’s registered mark ‘ASTRAL’ is contained in its entirety in the Defendants’ mark ‘ASTRALGLEE.’
- In the instant case, Plaintiff is the prior adopter of the mark, including for the goods under Class 3. Merely for the reason that Plaintiff marketed the goods under Class 3 under different brands, it cannot be said that it lost the right in its trademark ‘Astral’ by such use. The brochures and photographs filed on record evidence that the Plaintiff also used the mark ‘ASTRAL’ for such goods to identify the source of the goods.
- Though non-use of a registered trademark may be a ground for cancellation of such registration, in the instant case, to date, the Defendants have not initiated any such action. Moreover, the scope of expansion of business for Plaintiff by using its house mark ‘ASTRAL’ cannot be curtailed, especially where it is the registered proprietor of the trademark with respect to ‘essential oils’.
- With regard to the balance of convenience, Plaintiff has objected to the applications seeking registration of the trademark filed by the Defendants, and the first application was abandoned. Thus, the Defendants have entered the market with full knowledge of the Plaintiff’s rights and the fact that the latter assert their right over the said mark and claim that the Defendants’ mark is deceptively similar to its registered mark.
- The justification given by the Defendants for the adoption of the mark is, in fact, not relevant to the case of infringement or passing off. Even assuming that the adoption is honest, its user with knowledge of the rights of the Plaintiff was at its peril.
- The argument that ‘Astral’ is a dictionary word and the Plaintiff cannot claim a monopoly ought to fail. The said word has no meaning or reference to the goods in question, and as the registration is valid and has not been challenged till date, the Plaintiffs are entitled to seek the protection of their rights in the mark.
In light of the above, the Court granted an injunction in favour of the Plaintiff and restrained the Defendants’ from using the mark ‘ASTRALGLEE’ or any other mark deceptively similar to ‘ASTRAL’ in relation to their business till the disposal of the suit.
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