The Madras High Court has issued a permanent injunction restraining Matrimony.com (respondent) from infringing FreeElective Network (appellant’s) registered trademark ‘Jodi365’ by using the deceptively similar mark ‘Jodii’ or any other deceptively similar mark. The Court also directed the respondent to surrender to the appellant for destruction all materials, brochures, screen prints, packing materials, advertising materials and other materials including on the Internet bearing the trademark ‘Jodii’ or any mark deceptively similar to ‘Jodi365’. However, the relief of damages of Rs. 1 crore was declined, as the appellant had not led any oral evidence to prove the extent of damages suffered.
Where the appellant was the registered proprietor and prior user since 2009 of the composite device mark ‘Jodi365’ for matchmaking and matrimonial services, and the respondent, owner of the well-known ‘BHARATMATRIMONY’ house mark, launched the mobile application ‘Jodii’ in 2021 for identical services after having itself filed applications for registration of ‘Jodii’ as both a label and a word, the Court held that the respondent’s adoption was dishonest and deceptively similar to the appellant’s mark, and that the issue of validity of the appellant’s registration could not be canvassed in a civil suit absent a rectification proceeding.
The Division Bench comprising Justice P. Velmurugan and Justice K. Govindarajan Thilakavadi observed that the single Judge committed a fundamental error by splitting the composite trademark ‘Jodi365’ and holding that the sub-element ‘Jodi’ had not acquired distinctiveness, when the settled principles of trademark law mandate that trademarks must be compared as a whole and cannot be dissected. The Court noted that the respondent had not only failed to challenge the registration of the appellant’s mark but had itself applied for the phonetically identical mark ‘Jodii’ both as a label and as a word, claiming exclusive right over it, and had even placed paid online advertisements targeting the appellant’s registered trademark ‘Jodi365’ as a keyword on YouTube and Google Play Store.
The Court further observed that the respondent’s defence under Section 17 of the Trade Marks Act, 1999, ought to have been raised only in a rectification proceeding and not in a civil suit, and since the respondent had not initiated any rectification, it was deemed to have abandoned such right. The Court also noted that the mere visual comparison of the marks, without adverting to phonetic similarity, was contrary to the binding precedent of the Supreme Court. The Court allowed the petition, taking on record additional evidence consisting of communications and transcripts of 11 sample conversations between the appellant and consumers who had confused ‘Jodi365’ with ‘Jodii’.
The Court further observed that the respondent’s plea of common to trade or publici juris could not be sustained in the absence of qualitative evidence showing the volume, extent and reputation of business of the other entities allegedly using the word ‘Jodi’.
Briefly, the appellant, M/s FreeElective Network Private Limited, is the registered proprietor of the trademark ‘Jodi365’ under Registration No.1971072 in Class 99, filed as a single multi-class application covering Classes 35, 38 and 41. The appellant has been continuously and openly using the mark ‘Jodi365’ since the year 2009, with its website Jodi365.com and a complementary mobile application, both catering to matchmaking and matrimonial services. Over 3,25,000 users have visited the website, and the appellant has spent approximately USD Forty Thousand on Facebook advertising alone, with the brand being noticed about 2.9 crore times by around 55 lakh targeted users. The mark has acquired substantial reputation and goodwill in the market.
In or about October 2021, the respondent, M/s Matrimony.com Limited, which is the registered proprietor of the well-known mark ‘BHARATMATRIMONY’ and allied marks used since 1999, launched a mobile application called ‘Jodii’ for identical matchmaking services. The appellant issued a cease-and-desist notice dated 2nd November 2021, calling upon the respondent to stop using the mark ‘Jodii’, to which the respondent replied on 17th November 2021, refusing to comply and contending that the appellant had no right over the individual word ‘Jodi’ as its registration was only for the composite label ‘Jodi365’.
The appellant then filed a suit under the Trade Marks Act, 1999 seeking permanent injunction against infringement and passing off, destruction of infringing materials, and damages of Rs. 1 crore. The single Judge dismissed the suit holding that the constituent element ‘Jodi’ was descriptive and non-distinctive, and that the respondent’s use of ‘Jodii’ did not amount to infringement or passing off.
