The Delhi High Court has clarified that the addition of a prefix, ‘DIVINE’, to the plaintiffs’ well-known and registered trademark ‘MISS INDIA’ is insufficient to distinguish the defendants’ mark, especially when used for identical services like beauty pageants. The Court explained that the test for deceptive similarity is that of an unwary purchaser with average intelligence and imperfect recollection, who would likely be confused into believing the defendants’ pageant is associated with the plaintiffs.
The Court applied the concept of “initial interest confusion”, holding that if a customer, upon viewing the defendants’ mark, feels a sense of association with the plaintiffs’ mark, even momentarily, it is sufficient to constitute infringement under Section 29 of the Trade Marks Act, 1999. Hence, the dishonest adoption of a similar mark to misrepresent an association and encash on the plaintiffs’ goodwill constitutes the tort of passing off.
The Court therefore held that the defendants had infringed the plaintiffs’ registered trademark “MISS INDIA” and its formative marks, thereby violating their statutory rights. It also held that the defendants attempted to pass off their pageant as being associated with the plaintiffs, thus violating their common law rights. Consequently, the suit was decreed in favour of the plaintiffs, and a permanent injunction was granted against the Defendants.
The Court also held the plaintiffs were entitled to the actual costs of the proceedings, to be recovered jointly from Defendants No. 1 and 2, and directed the matter to be listed before the Taxing Officer for computation of costs.
A Single Judge Bench of Justice Jyoti Singh observed that the defendants chose to stay away from the proceedings and did not contest the suit after their application to set aside the ex-parte order was dismissed. The Bench found that the plaintiffs’ witness proved their statutory rights through trademark registration certificates and common law rights through extensive evidence of use, media coverage, and prior court orders protecting the “MISS INDIA” mark.
As a comparative analysis of the rival marks showed them to be phonetically, structurally, visually, and conceptually similar, the Bench noted that the defendants’ attempts to seek registration for the impugned marks were either refused or abandoned. The Bench further observed that the defendants dishonestly adopted the plaintiffs’ trademark to ride on their formidable goodwill and reputation, with the intent to cause confusion and show an association with the plaintiffs.
Briefly, the plaintiffs, Bennett, Coleman & Company Limited and its subsidiary, part of the Times Group, have been using the trademark ‘MISS INDIA’ since 1964 for their iconic beauty pageant and hold multiple trademark registrations for the mark and its variations. They have invested considerable resources in building the brand’s reputation, as evidenced by their revenue and promotional expenditure from 2001 to 2019.
The cause of action arose in May 2019 when the plaintiffs discovered the defendants promoting a beauty pageant named ‘DIVINE MISS INDIA’ on Facebook and through the website ‘www.divinemissindia.com’. The plaintiffs exhibited numerous documents, including trademark registrations, promotional materials, and evidence of the defendants’ infringing activities, and filed a suit for a permanent injunction against the defendants, Seraphic Divine Beauty Private Limited.
Appearances:
Advocates Mamta R. Jha, Akhil Saxena, and Palak Batra, for the Plaintiff
Defendants are ex parte
