Name of the Case-M/s. Three-N-Products Pvt. Ltd. v/s M/s. Kairali Exports & Another

CS(OS) No. 709 of 2011 Decided On, 03 January 2018 At, High Court of Delhi

By, THE HONOURABLE MR. JUSTICE SANJEEV SACHDEVA For the Appellant: Sharab Sriastava, Advocate. For the Respondents: R1, Manu T. Ramchandran, R2, Poonam Atey with Birendra Mishra, Advocates.

ISSUE-

Whether the plaintiff, being a registered proprietor of the trademark “AYUR”, is prima facie entitled to an injunction against the defendants, Kairali Exports and another, for adopting the mark “AYURVASTRA” on the Foundation of trademark infringement and passing off.

RULE-

According to Sec. 17 of the Trademarks Act, 1999, a solely registered proprietor of a trademark is given the right to use the whole  registered trademark and not just part of it. Section 17(2) of the Act categorically states that where the trademark includes a non-distinctive or generic element such as a descriptive word or usual expression, the proprietor cannot assert exclusive rights in that part alone. In addition, the protection of the trademark under the law is also based on its nature—whether it is fanciful, arbitrary, suggestive, descriptive, or generic. Weaker protection is given to descriptive and generic marks, unless the proprietor can establish that the mark has developed a secondary meaning, that is, that the public has come to identify that descriptive term particularly with the proprietor’s goods as a result of widespread and persistent use. Courts look to the foreseeability of consumer confusion and whether the putative infringing use was made in bad faith or with intent to deceive.

ANALYSIS-

Here, the plaintiff asserted sole rights to the word “AYUR” by stating that it was a coined and distinctive trademark employed since 1984. Yet, the Court observed that “AYUR” is an ancient Sanskrit word, which means “life” or “vital power,” and is intimately associated with Ayurveda, the well-known system. Therefore, the word is neither invented nor arbitrary but descriptive and commonly used in the Ayurvedic and wellness industries. The plaintiff was unable to present compelling evidence to prove that the term “AYUR” had developed a secondary meaning uniquely related to their trademark. Conversely, the defendants employed the mark “AYURVASTRA” to identify a line of Ayurvedic clothing colored with herbs, which was a descriptive and bona fide usage of the term. The defendants had not also replicated the plaintiff’s packaging, trade dress, or style nor passed off their goods as those of the plaintiff. The Court held the adoption of “AYURVASTRA” to be in good faith and directly related to the character of the goods, and not with a view to take advantage of the plaintiff’s goodwill. In contrast to earlier precedents where offending marks closely replicated the overall presentation and design of the initial brand, in this case, the defendant’s act did not warrant a case of deception or passing off.  

CONCLUSION –

The Court held that the term “AYUR” is a descriptive and a generic word and hence cannot be Exclusively controlled by the plaintiff. The plaintiff, having failed to establish that the mark had acquired a secondary meaning, could not assert exclusivity of the term. There was no risk of confusion between the two marks, and the convenience lay in favor of the defendants, who were applying the mark in good faith to represent their Ayurvedic wear. Accordingly, the Court refused to grant the Interim  injunction desired by the plaintiff and set aside the earlier granted interim order, thus rejecting the plaintiff’s application and permitting the defendants to persist in using the term “AYURVASTRA.”