A Division Bench (DB, Two Judge bench) of the Delhi High Court recently set aside an injunction granted by the District Commercial Court, Tis Hazari, in a trademark dispute between the Plaintiff, Jiva Ayurvedic Pharmacy Limited and the Defendants, Anuradha Sharma and Ors, using the mark “Shatam Jeeva.” This note discusses the contentions raised by the parties and the order passed by the DB in appeal.

Factual Background

The Plaintiffs, part of the “JIVA Group,” claimed continuous use of the mark “JIVA” since 1992 in relation to Ayurvedic products and wellness services. They asserted substantial goodwill, multiple trademark registrations, and a strong online presence.

In April 2022, the Plaintiffs discovered the Defendants’ use of the mark “Shatam Jeeva” for a wellness retreat and related domain names. Alleging deceptive similarity and passing off, they issued a legal notice and subsequently filed a suit seeking injunction.

The Defendants, in response, contended that:

1. “Shatam Jeeva by Baidyanath” was independently conceived to commemorate 100 years of the Baidyanath brand.
2. The mark has roots in Vedic concepts and must be considered as a whole.
3. The addition of “By Baidyanath” clearly distinguishes their mark.
4. “Jiva/Jeeva” is a common Sanskrit term widely used in trade.
5. There was no likelihood of confusion, and the adoption was bona fide.

Findings of the District Court

The District Court ruled in favour of the Plaintiffs and granted an injunction, holding that:

1. “Jiva” was not a common term in the relevant trade.
2. The Defendants had prior knowledge of the Plaintiffs’ mark.
3. The Plaintiffs were prior users with established goodwill.
4. The Defendants’ adoption lacked bona fides.

Accordingly, the Defendants were restrained from using the impugned mark or any deceptively similar variant.

Appeal before the Division Bench

Aggrieved by the order passed by the District Court, the Defendants filed appeal before the DB of the Delhi High Court arguing that:

1. The marks were distinct when viewed holistically.
2. “Jiva” is a generic Sanskrit term incapable of exclusivity.
3. Their mark targeted a different consumer segment.
4. No case of passing off or infringement was made out.

The Plaintiffs countered by emphasizing the distinctiveness of “Jiva,” its status as a dominant element, and alleging dishonest adoption by the Defendants.

• High Court’s Analysis

Lack of clarity in the District Court’s order

The High Court noted that the injunction was granted without clearly specifying whether it was based on infringement, passing off, or both. Further, no clear finding on goodwill, an essential element of passing off was recorded.

• No deceptive similarity

On comparing the marks as a whole, the Court found no phonetic, visual, or conceptual similarity. Key differences included:

1. Spelling: “Jiva” vs. “Jeeva”
2. Devices: Lotus (Plaintiffs) vs. circular “S” with herbal imagery (Defendants)
3. Additional elements: “Shatam” and “By Baidyanath”

The Court held that these differences eliminate any likelihood of confusion for an average consumer.

• Importance of composite marks

The Court emphasized that both marks are composite device marks and must be assessed holistically. The word “Jiva” cannot be isolated from the overall mark. Both visual and textual elements must be considered together.

Distinguishing elements matter

The Court rejected the argument that “Shatam” or “By Baidyanath” suggested a connection with the Plaintiffs.

1. “Shatam,” meaning “hundred,” has no association with the Plaintiffs’ mark.
2. “By Baidyanath” acts as a clear source identifier, reducing confusion.

• Passing Off not established

The Court reiterated that passing off requires misrepresentation and likelihood of damage. It found:

1. No deceptive similarity
2. No misrepresentation
3. No evidence of actual or probable damage

Thus, the essential ingredients of passing off were not satisfied.

Decision

In light of these findings, the Division Bench set aside the District Court’s injunction order and allowed the appeal.

Key Takeaways

1. Holistic comparison prevails: Marks must be compared in their entirety, especially in the case of composite device marks.
2. Dominant element not decisive: Even if a component is dominant, it cannot be viewed in isolation.
3. Added elements can distinguish: Prefixes, suffixes, and brand identifiers can significantly reduce confusion.
4. Passing Off requires misrepresentation: Absence of misrepresentation is fatal to such claims.
5. Clarity in Judicial Orders is crucial: Courts must clearly specify the basis of injunctions and record findings on all essential elements.

Comment

This decision reiterates the settled principle that trademark disputes must be assessed from the standpoint of the overall commercial impression created by the rival marks, particularly in the case of composite device marks. The judgment underscores that the mere presence of a common word or allegedly dominant element is insufficient to establish infringement or passing off in the absence of deceptive similarity, misrepresentation, or likelihood of confusion.