The Battle of Composite Labels: ‘d mart’ vs. D MART – Unravelling the Trademark Conflict

Introduction

In a judgment titled “Dolphin Mart Private Limited Vs. Avenue Supermarts Limited & Anr.” the Hon’ble Delhi High Court while denying interim injunction to the Plaintiff held that ‘d mart’ is a generic/common word and observed that a composite trademark should not be dissected for determining deceptive similarity with the impugned mark. Therefore, Plaintiff’s suit for an injunction based on its composite registered trademark “d mart” across various classes, including 14, 21, and 25 does not confer exclusive rights to the individual elements against the defendant’s use of the “DMART” composite label in relation to their Supermart business.

Setting the Background

The Plaintiff coined and adopted the name “d’mart Exclusif” in 1992 for home décor and gifting solutions. The Plaintiff’s has obtained registrations of d’mart composite trademarks in Classes 14, 21 and 25. The Defendants on the other hand were engaged in the business of supermarkets and have applied for registration of the trademark D MART in Classes 14, 21 and 25. Ahead of the defendant’s IPO in 2017 for its supermarket business under the brand DMART the plaintiffs filed suit on the alleged namesake for trademark infringement.

Issue- The point of determination before the Hon’ble Court is whether individual elements of a composite registered trademark can be dissected for analyzing deceptive similarity.

Plaintiff’s contentions:

The Plaintiff’s content that Defendants use of ‘D MART’ trademark amounts to infringement of Plaintiff’s statutory rights in the mart’ Trademarks. The Plaintiff claims this infringement is in violation of Section 29(1) and (2)(c) of the 1999 Act, especially since the plaintiff’s ‘d’mart’ trademarks are registered in Classes 14, 21, and 25.

Defendants Assertion:

The defendant asserted their status as the registered owner of the composite label “DMART”. Both parties possessed registered trademarks within the same classes. As a result, Defendant contended that pursuing an infringement action was not permissible in accordance with Section 28(3) in conjunction with Section 30(2)(e) of the 1999 Act and for the purposes of assessing deceptive similarity, to decide a claim of infringement under Section 29, rival marks have to be compared as a whole.

Comparison of rival marks:

Delving into the court’s analysis:

The court while rejecting the Plaintiff’s contention noted that since both the parties are registered proprietors of their respective trademarks in Classes 14 and 21, an action for infringement would not be maintainable in view of Section 28(3) read with Section 30(2) and only an action for passing off would lie. Thus, action for infringement analysis is confined to the Defendant’s impugned trademark in Class 25.

• Plaintiff’s entitlement to claim infringement under Class 25

1.  Deceptive similarity analysis:

The court after conducting a detailed comparison of the competing trademarks observed that Plaintiff’s mark has the word Dolphin with its distinct image with the word d’mart. The Defendant’s mark, on the other hand, displayed D separated from ‘mart’ by a star and lines. Despite these distinctions, the court reached the conclusion that when examining the marks as a whole, there was no deceptive similarity between them. Thus, prima facie it was held that no infringement lies, there is no likelihood or possibility of confusion on the part of the public.

• Descriptive/ generic nature of the Trademark:

The court clarified that, based on the ‘dominant part’ criterion established by the Hon’ble Division Bench in the case of M/s. South India Beverages Pvt. Ltd, when this precedent is applied to the current case, it is evident that ‘d mart,’ whether considered as a whole or when the letter ‘d’ is analyzed separately, does not qualify for distinctive or dominant part protection within the trademark. Furthermore, the term ‘mart’ is deemed generic and commonly used in trade, making it ineligible for protection. Thus, the court further noted that even if Plaintiff had sought registration of the wordmark it would not have succeeded as the word ‘d mart’ have generic/ descriptive components which can only be granted registration if secondary evidence is produced.

• Overall Comparison:

The court explained the ‘anti-dissection rule’ and reiterated that conflicting composite marks are to be compared by looking at them as a whole, rather than breaking the marks into their component parts for comparison. The Court observed this while relying on Vasundhara Jewellers (P) Ltd. v. Kirat Vinodbhai Jadvani, 2022  and opined that “a composite trade mark was not to be dissected to determine whether there was any deceptive similarity with the impugned trade mark and comparison has to be by taking the rival marks as a whole”. In light of these observations, the court held that Plaintiff cannot claim exclusivity over the word d’mart in the absence of separate registration. Therefore, the rival composite marks have to be compared as a whole without dissecting them into individual elements.

• Plaintiff’s entitlement to claim passing off under Class 14 & 21

1. Deceptive similarity analysis:

In claiming the relief of passing off the law is settled in the case of Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories has held that, unlike in the case of infringement, the Defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the Plaintiff. The court in the present case noted that on perusal of the ‘composite logo’ and comparison of the rival marks taken as a whole, there is no deceptive similarity for making out a case of Passing off too. A bare perusal of rival marks would show that color scheme, stylized manner of writing the word ‘d’mart ‘, distinct image of dolphin with or without the word ‘Exclusif’ in blue/red color in the plaintiff’s marks, and star with horizontal lines separating the word ‘D’ from the word ‘Mart’ in the impugned marks” concluded that there could be no confusion.

• No Damage to the goodwill or reputation of the Plaintiff:

On this aspect, the court noted that Sales figures of both parties would show that Defendants were far ahead of Plaintiff even when the suit was filed and have a different class of customers, primarily engaged in supermarkets. Therefore, Defendants have no reason to take undue advantage of Plaintiff’s reputation or goodwill and with a wide gap in the class of customers and nature of business as well as dissimilarity of marks, there is no question of likelihood of confusion. Thus, Plaintiff has failed in making out a prima facie case of passing off.

Court’s concluding verdict:

The court held that the Plaintiff has failed to make out a prima facie case in its favour and balance of convenience also does not lie in favour of the Plaintiff and denied the injunction, affirming that the defendant, Avenue Supermarts Ltd., using the trademark ‘DMART,’ did not create deceptive similarity or identity with the plaintiff’s mark. It was deemed improbable to cause confusion among a reasonable person.

Conclusion/ To sum up:

This judgment reiterates and solidifies the legal principle that a composite trademark should be compared as a whole without dissecting them into individual elements and the significance of holistic trademark registration. Thus, a composite label does not consist of each particular part of it but consists of a combination of them all.