Recently, the Hon’ble Delhi High Court in the case of Vivo Mobile Communication Co. Ltd vs. Jitendra Kumar Tiwari trading as Maa Vaishnavi Chemicals held ‘VIVO’ as a ‘well-known’ trade mark in India under The Trade Marks Act, 1999. This recognition given by the Hon’ble Delhi High Court has bolstered the prominence and popularity which the brand ‘VIVO’ enjoys in India.
BACKGROUND OF THE CASE
The Plaintiff, Vivo Mobile Communication Co. Ltd, has been conducting and operating its mobile phone business globally under its distinctive trade mark ‘VIVO’ and various VIVO formative marks. The Plaintiff holds various registrations for the trade mark ‘VIVO’ in India and has generated enormous revenues in relation to its products and/or services, which is evidenced from the fact that VIVO India’s revenue crossed Rupees Ten Thousand Crores in just four years of its incorporation in India. The Plaintiff has invested significant amount of time, money and resources in promoting and advertising its ‘VIVO’ marks and operates more than 550 stores all over India. The Plaintiff has also been regularly sponsoring various national and international sports, games and events, including the famous sporting event in India ‘Indian Premiere League’. The Plaintiff, thus, has been enjoying enormous goodwill and reputation and the trade and public solely associate the trade mark ‘VIVO’ with the Plaintiff. The Plaintiff has also been successfully preventing third parties from misusing the mark ‘VIVO’ in any manner.
In the instant case, the Defendant had filed an application for ‘VIVO PLUS ADHESIVE’ in Class 1. The Plaintiff had sent a cease and desist notice to the Defendant, however soon thereafter, it was informed about the availability of the Defendant’s products in the markets. The Defendant had not only copied the identical word element ‘VIVO’ but also the identical and/or deceptively similar font, colour, manner of writing, stylization and get up.
The Plaintiff, thus filed the instant suit for declaration, permanent injunction restraining infringement of trade marks and copyright as well as passing off, delivery up, damages and rendition of accounts.
OBSERVATION OF THE COURT
The Hon’ble Delhi Court, after detailed consideration of the matter, ruled in favour of the Plaintiff, whereby the Court observed that the adoption and use of the impugned marks by the Defendant in respect of its goods constitute infringement, passing off, dilution of the Plaintiff’s marks, and also amount to unfair trade practice. The impugned marks are identical and/or so deceptively similar and that the use of such marks represents an intended misrepresentation of its products, as those of the Plaintiff and are in clear violation of the Plaintiff’s rights in its registered ‘VIVO’ trade marks. The Court also noted that being the owner of the copyright, the Plaintiff has the exclusive right to prevent its misuse in any manner and that it is evident that the Defendant has brazenly copied the ‘VIVO’ mark of the Plaintiff.
The Court further observed that the adoption and use of the identical and/or deceptively similar impugned marks by the Defendant is clearly dishonest and mischievous. Such adoption of a prior mark by the defendant cannot be said to be bonafide, especially, in view of the dominant presence of the Plaintiff’s products under the said trade mark in the market.
Therefore, the Court upheld the rights of the Plaintiff in the trade mark ‘VIVO’ and passed a decree of permanent injunction against the Defendant as prayed for by the Plaintiff.
RECOGNITION AS A WELL-KNOWN TRADE MARK
Besides, granting the relief of a permanent injunction against the Defendant, the Hon’ble Delhi High Court observed that the trade mark ‘VIVO’ enjoys enormous goodwill and reputation in India and that it has created a niche for itself in the Indian market. Owing to the outspread and extensive advertisements and promotions made by the Plaintiff for the trade mark ‘VIVO’ including sponsoring of numerous events, the said trade mark enjoys immense fame and popularity. The Court also took into account the enormous revenue which the Plaintiff has generated in India owing to the use of the trade mark ‘VIVO’. The fact that the Plaintiff has been vigilant in enforcing its rights against third parties who have tried to misuse the mark ‘VIVO’ was also taken note of by the Court. Therefore, it was held that any mark which contains the term ‘VIVO’ or any similar term thereof, would be solely associated with the Plaintiff.
Taking into consideration, the aforesaid factors, the Court held that the Plaintiff’s trademark ‘VIVO’ is entitled to a declaration as a well-known mark and accordingly passed a decree declaring the plaintiff’s ‘VIVO’ marks as a ‘well-known’ trademark in India, within the meaning of Section 2(z)(b) of The Trademarks Act, 1999.
- Aayush Sinha, IP Lawyer, S Majumdar & Co.
- Devanshi Bang, Penultimate Year, Maharashtra National Law University, Nagpur
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