The Delhi High Court has held that where Marc Enterprises (respondent) is the prior user and prior registered proprietor of an inherently distinctive mark, and Flipkart India (appellant) subsequently adopts a mark that is phonetically, structurally and visually similar for allied and cognate goods sold through identical trade channels, a prima facie case of deceptive similarity and likelihood of confusion is made out.
In such circumstances, the use of a house mark alongside the impugned mark does not by itself obviate infringement or passing off, and the appellate court will not interfere with an order granting interim injunction unless the Trial Court’s exercise of discretion is shown to be perverse or manifestly erroneous, added the Court while dismissing the appeal. The Court also vacated the stay and granted the appellant time till May 15, 2026 to comply with the interim injunction.
A Single Judge Bench of Justice Tejas Karia observed that in an appeal against an interim injunction, the appellate court is confined to examining whether the discretion exercised by the Trial Court is perverse or legally indefensible, and cannot substitute its own view merely because another view is possible. Interference is permissible only where the decision is one that no reasonable person, applying the relevant facts and law, could have reached.
The Bench observed that the respondent is the admitted prior user of the mark “MARC”, with user claim since 1981 and first registration in 1984, whereas the appellant adopted the impugned marks only in 2017 for large electronic items. The Bench further observed that the respondent had established that “MARC” is a uniquely coined term, inherently distinctive, and that the goods in question are covered by the respondent’s registrations.
The Bench found that “MARC” and “MARQ” are nearly identical and deceptively similar, and that an average consumer of average intelligence and imperfect recollection is likely to be confused between the competing marks. The marks were held to be phonetically, structurally and visually similar, and the fact that the appellant sold its goods exclusively through an e-commerce platform did not negate the relevance of phonetic similarity or the likelihood of confusion.
The Bench further held that, applying the anti-dissection rule, the rival marks when compared as a whole are deceptively similar. Mere addition of the house mark “Flipkart” was held insufficient to eliminate the likelihood of confusion, particularly when the house mark appeared in a miniscule manner and in some instances was not used at all with the impugned mark. The Bench also rejected the plea that “MARC”, “MARK” or “MAR” were common to trade, holding that common to register does not establish common to trade unless substantial usage by other persons is proved.
Lastly, the Bench pointed out that the respondent’s products were offered on the appellant’s platform, while the appellant’s products were sold exclusively through the same platform, showing identical trade channels, overlapping customer base, and allied and cognate goods. It also held that later registration obtained by the appellant for “Flipkart MarQ” in Class 7 and “MarQ by Flipkart” in Class 42 after the impugned order did not affect the injunction in the present case, especially as no such registration existed when the impugned order was passed and the Class 42 registration did not pertain to the products in question.
Briefly, an appeal under Order XLIII Rule 1(r) of the Code of Civil Procedure, 1908 was filed by Flipkart India Private Limited against the order dated October 27, 2018, read with order dated October 30, 2018, passed by the Additional District Judge, Patiala House Courts, New Delhi, whereby the Trial Court allowed the respondent’s application under Order XXXIX Rules 1 and 2 CPC and dismissed the appellant’s application under Order XXXIX Rule 4 CPC. The respondent had instituted a suit seeking permanent injunction for infringement of the mark “MARC”, passing off, dilution, delivery up and rendition of accounts.
The respondent is engaged in the business of selling and manufacturing electrical accessories and fittings, electrical equipment, electrical appliances, electrical apparatus and instruments, and holds registrations for the mark “MARC” in Classes 9 and 11, with registrations dating back to April 16, 1984 and later registrations in 2000 and 2003. The appellant is an e-commerce platform which also manufactures and sells its own products, and adopted the marks “MARQ” and device variants in July 2017 for goods allied and cognate to the respondent’s goods, including televisions, microwave ovens and washing machines, and also applied for registration of those marks in Classes 9 and 11 on July 12, 2017.
An ad-interim injunction was granted by the Trial Court on January 18, 2018 restraining the appellant from use of the impugned marks. In earlier proceedings before the High Court, limited extensions were granted to the appellant to clear existing stock till February 05, 2018, with liberty to seek further extension before the Trial Court. Thereafter, the Trial Court, by the impugned order, confirmed the injunction, and during pendency of the present appeal, operation of the impugned order was stayed on November 12, 2018.
Appearances:
Senior Advocate Sandeep Sethi and Rajshekhar Rao, along with Advocates Nitin Sharma, Shilpa Gupta, Ranjeet Singh Sidhu, Kuber Mahajan, Naman Tandon, Krisna Gambhir and Shreya Sethi, for the Appellant
Advocates Ajay Amitabh Suman, Shravan Kumar Bansal, Rishi Bansal, Deasha Mehta, Aviral Srivastava and Ayushi Arora, for the Respondent
