A Single Bench of the Delhi High Court in Zed Lifestyle Pvt Ltd v. Hardik Mukeshbhai Pansheriya[1] dealt with the issue to restrain the defendant company for infringing the registered marks of the plaintiff.
The Hon’ble Delhi High Court granted an extension in a previously granted interim injunction in favour of the plaintiff in a case concerning the infringement of the trademark ‘Beardo’ vide order dated August 16, 2021.
Facts:
In an Order dated May 04, 2021, the judge injuncted Defendant Nos. 1 and 2 from using the impugned “BEARDO” mark on goods with respect to which they did not hold valid and subsisting registrations and in respect of which, on the other hand, valid registrations were held by the plaintiff. The plaintiff holds valid registrations of the word mark Signature Not Verified SINGH NEGI (Signing Date:18.08.2021 15:46:14) “BEARDO” as well as the device mark, in conjunction with the picture of a bearded gentleman who bears an uncanny resemblance to Herge’s Captain Haddock. The plaintiff holds 18 registrations for the said device mark and wordmark in as many as eight Classes, which have been enlisted in a tabular fashion in para 8 of the plaint. Among these is the registration of the wordmark “BEARDO”, in Class 3 in respect of “Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, beard wash, beard balm, beard and hair pomade, beard & hair colour, moustache, beard & hair wax & cream, oils, shampoos and conditioners, face scrubs, mask & clay hair scrubs, mask & clay, beard & hair & face spa oils, scrubs, cream, lotions, SPF creams, skincare and body care items, aftershave and pre-shave lotions and preparations, body gel and shower gels, beard oil, face wash, shampoo, soaps, perfumery, essential oils, cosmetics preferably hair oil, lotion, cream, gel for beard, and dentifrices”.
Plaintiff pressed for extending the interim relief granted to Plaintiff also to cover goods in respect of which Defendant Nos. 1 and 2 hold valid registrations.
CONTENTIONS ON BEHALF OF PLAINTIFFS:
The contentions made on behalf of the plaintiffs are as follows:
- That the registration granted to Defendant No. 1 in respect of mark “BEARDO”, even in respect of Classes 7 and 11, is invalid and that rectification application, preferred Signature Not Verified SINGH NEGI Signing Date:18.08.2021 15:46:14 by the plaintiff to strike off the said marks from the register of trademarks, are presently pending before the Registry of Trademarks. In such circumstances, he submits, relying on the judgment of a Division Bench of this Court in Raj Kumar Prasad v. Abbott Healthcare Pvt. Ltd., that an action for infringement can lie even against such registered trademark.
OBSERVATIONS:
The Hon’ble Court after referring to all the contentions presented made the following observations in the case:
The Single Judge Bench found that the plaintiff holds a valid registration even for the word mark “BEARDO”, the very use of the word “BEARDO” as a mark by the defendants, satisfies the first of the aforesaid criteria, of the two marks being identical or similar. The fact that the plaintiff’s mark has a reputation in India is also vouchsafed by the pleadings in the plaint and stands recognized by this Court in its order dated May 04, 2021. The plaint specifically avers that there is no legitimate cause forthcoming for the defendants to be using the “BEARDO” mark which, it may be noted, has no etymological meaning and is clearly in the nature of an invented word – and, in the absence of any response by the defendants, has to be treated, on demurrer, as correct.
CONCLUSION:
The Delhi High Court after considering all the key factors while dealing with the contentions made by the plaintiff passed an order stating, the adoption of the trademark BEARDO by the Defendant Nos. 1 and 2 is dishonest and with the sole intention of trading upon and benefit from the Plaintiff’s goodwill in its BEARDO formative marks and the appropriation of which being without due cause, takes unfair advantage of and is detrimental to the distinctive character and reputation of Plaintiff’s registered trademark BEARDO formative marks. This is also likely to lead to dilution of the Plaintiff’s mark BEARDO by way tarnish and causing adverse damage to the Plaintiff.” Defendant Nos. 1 and 2 are restrained from using the mark “BEARDO” by itself or in conjunction with any other figure, whether of a bearded man or otherwise, in respect of any Class or goods, including goods falling in Classes 7 and 11, till further orders. Defendant No. 3, who is also represented by Ms Neha Jain, is also directed to remove, from its website, all pages which relate to the sale of goods by Defendant Nos. 1 and 2, using the “BEARDO” mark, irrespective of the Class, category or nature of goods in respect of which the mark is being used. Inter alia, Defendant No. 3 would be required to take down, from its website, the listings at pages 31 to 136 of the documents with the present plaint.
AUTHORS COMMENTS:
Hon’ble Justice C. Hari Shankar has held in this order correctly as by extending the previous order as the impugned mark was affecting the plaintiffs which may cause losses to them due to this infringing activity of the defendants and also damaging the work of the plaintiffs’ mark.
[1] CS(COMM) 207/2021
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