THE APPLE HASN’T FALLEN FAR: DELHI HIGH COURT’S INTERPRETATON OF SYNONYMITY IN TRADE MARKS

Premise of the suit:

Ms. Vinita Gupta (hereinafter referred to as the “Plaintiff” as applicable) brought an action of permanent injunction against Mr. Amit Arora before the Hon’ble Justice Jyoti Singh of the Delhi High Court, for restraining Mr. Arora (hereinafter referred to as the “Defendant” as applicable) and others acting on his behalf, from passing off any products under the mark APPLEPLANT or any other mark similar to Ms. Gupta’s trade mark APPLESTREE, by selling, offering for sale, advertising or promoting such products. It was argued by the Plaintiff that use of the mark APPLEPLANT by the Defendant would cause confusion and deception in the marketplace and would amount to infringement of the copyright persisting in the artistic work that forms the Plaintiff’s label for the trade mark APPLESTREE.

Rival marks in question:

Plaintiff’s mark	Defendant’s mark

Background of the matter:

It was claimed by Ms. Gupta that her deceased husband, the Late Shri Yogesh Gupta had come up with the trade mark APPLESTREE as well as its accompanying artistic work and trade dress, in 2008. Late Shri Gupta was the proprietor of the firm Palm Abrasives, that was engaged in the sale of various products such as abrasive strips, abrasive rolls, abrasive paste, silicon carbide waterproof abrasive paper, velcro disc, sandpaper and other allied and cognate goods. When he sadly passed away in 2021 during the Covid-19 pandemic, Ms. Gupta took over the operations of the firm.

APPLESTREE is a popular trade mark of the firm Palm Abrasives. Ms. Gupta also claimed that her firm had experienced substantial turnover from the sale of products under the trade mark APPLESTREE, and that she had spent substantial sums of money to advertise and promote such trade mark.

In November 2021, Ms. Gupta became aware of Mr. Arora’s nearly identical trade mark APPLEPLANT and its variants, and proceeded to initiate trade mark cancellation and opposition actions against such contentious marks. It came to light that Mr. Arora had claimed to be using his marks only since 2019. In an attempt to resolve the matter without approaching the court, Ms. Gupta sent a legal notice to Mr. Arora, directing him to stop using the mark APPLEPLANT, but he paid no heed to the notice and continued using the contentious mark, which forced Ms. Gupta to approach the Delhi High Court.

Ratio of the Hon’ble Justice Jyoti Singh

Hon’ble Justice Jyoti Singh observed that even though the Plaintiff had claimed that her firm had been using the mark APPLESTREE since the year 2008, she had failed to produce substantiating document evincing such use for 14 years. The earliest document that she could produce reflecting sale of goods under her trade mark APPLESTREE was an invoice dated January 1, 2018. Having said that, such invoice was of an earlier date, and prior to the date of filing of the Defendant’s trade mark APPLEPLANT on February 7, 2019, that was filed on a ‘proposed to be used’ basis. Therefore, there is not an iota of doubt that the Plaintiff is the prior adopter and user of the trade mark APPLESTREE in respect of Abrasive Paper, Abrasive Rolls, Abrasive Paste, Polishing, Scouring and Abrasive Preparations and other allied and cognate products, as opposed to the Defendant’s mark APPLEPLANT.

Hon’ble Justice Jyoti Singh then went on to ruminate on passing off as a common law remedy and stated that such remedy was founded with the purpose of preventing commercially immoral and dishonest behaviour by traders, by falsely representing their goods or services as originating from someone else. She stated that upon reviewing the rival marks, she found them to not only be visually similar, but semantically similar as well. The Defendant had copied the prominent parts of the Plaintiff’s trade mark and such malafide was more clearly evident considering that the Plaintiff and the Defendant were both engaged in the sale of identical products.

Coming to the question of semantic similarity, Justice Singh referred to the study of semantic theory by the founder of common linguistics W. Humboldt, and stated that words in the English language are so related that they form complete lexical systems and groupings; for instance, purple, pink, white and brown would fall under the genus ‘colours’ and knives, spoons and forks would have a semantic relationship with the genus ‘cutlery’. In the same vein, PLANT and TREE were classic examples of synonymity, where reading one word would automatically bring the other to the mind of the purchaser. Such confusion would be enhanced particularly if the semantically similar marks are used for the sale of identical products, directed towards the same class of customers, through the same trade channels. According to Justice Singh, it appeared that the Defendant had carefully and consciously chosen to adopt the mark APPLEPLANT to trade on the goodwill and reputation of the Plaintiff’s trade mark APPLESTREE, especially when considering that the word ‘Apple’ had no association with the products that the rival parties deal in.

Accordingly, the Hon’ble Justice Jyoti Singh proceeded to pass an order of injunction against the Defendant, as prayed for by the Plaintiff.

Key takeaways

• The concept of semantic similarity was explored by the Hon’ble Justice Jyoti Singh.
• When a contentious mark contains elements that are semantically similar to the trade mark in which a superior right is being claimed, there is a presumption of malafide adoption of the contentious mark, especially when the underlying goods are identical or similar.
• Even if a Plaintiff is unable to prove the user date of a trade mark as claimed in a suit, as long as the substantiable user date is prior to the user date of the contentious mark, the balance of convenience will lie in favour of the Plaintiff.

Soumik Chakraborty

Having worked in capital market with one of the leading Corporate Law firms in India for a while, Soumik decided to switch and pursue a career in IP laws about 6 years back. He is currently a part of the trademarks where he advises clients in areas of fast moving consumer goods, food and beverages, healthcare, clothing and footwear, among others. He is also involved in trademark oppositions and rectification proceedings and also design cancellation actions. Additionally, he assists the litigation team on various matters relating to trademarks and designs.

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