Facts
The case results from a trademark and passing-off action between Imagine Marketing Pvt. Ltd. (IMPL), owner of the much-loved “boAt” brand, and Exotic Mile (EM), who sells similar products under the “Boult” brand. IMPL, which owns registered trademarks to “boAt,” its logo, and “PLUG INTO NIRVANA,” claimed that EM was infringing its marks and passing off its products by using “BOULT,” similar logos, and “UNPLUG YOURSELF,” which created consumer confusion. IMPL contended, among other things, that Varun Gupta, an employee of EM was a former reseller of IMPL, and therefore knew of its branding.
IMPL sought a permanent injunction and sought urgent and/or interim relief, while EM sought to have an earlier ad interim injunction lifted. The Single Judge of the Delhi High Court, in allowing IMPL’s application, restrained EM from using the disputed logos and tagline. EM appealed the decision.
Issues
- Whether the order of the learned Single Judge, granting interim injunction to IMPL, in restraining EM from using the similar mark and tagline “UNPLUG YOURSELF,” was legally sustainable.
- Whether the learned Single Judge could have injuncted EM from using the “UNPLUG YOURSELF” tagline, when there was no formal prayer for such relief in the plaint or application.
- Whether the mark “GOBOULT,” sought to be used by EM, is the subject of the injunction order.
Legal Provisions Involved
- Section 29 of the Trade Marks Act, 1999 (Registered Mark Infringement).
- Common Law principles of passing off (goodwill, misrepresentation and detriment).
- Order XXXIX Rules 1 & 2, Code of Civil Procedure, 1908 (Interim injunctions in civil proceedings).
Arguments
Appellant (Exotic Mile – EM)
- The “Boult” marks it had claimed were original, derived from “Bolt,” and there are no chances of confusion with “boAt.”
- Dispute is confined to passing off, there is a difference between the get-up and logo used in the case.
- Contended the injunction on “UNPLUG YOURSELF” was not in the pleadings and challenged findings on mala fides and actual confusion.
- Admitted discontinuance on most of the impugned marks and sought some clarification regarding the rebranding to “GOBOULT.”
Respondent (Imagine Marketing Pvt Ltd – IMPL)
- Prior user of “boAt” and has goodwill with said mark; alleged EM attempted to utilize the respective markings to take advantage of the well-known brand.
- There are phonetically and visually similar aspects to the respective markings, logos, and taglines will likely confuse consumers; and the past association of Varun Gupta increases inference of a dishonest adoption of the sign.
- Supported the Single Judge’s preliminary injunction, being a correct finding.
- No issue for EM to use “UNPLUG YOURSELF” independently, only as a part of infringing markings.
Court’s Analysis
The Division Bench first explained that the injunction about the tagline “UNPLUG YOURSELF” was untenable because there was no specific plea for such relief. Relying on precedents of the Supreme Court, it stated that relief cannot be granted in the absence of pleadings, and therefore set aside injunction about the tagline. As to “GOBOULT,” the Bench observed that it was also not covered by the injunction of the Single Judge. Therefore, EM was allowed to use “GOBOULT,” and while IMPL could seek to prevent that usage in future proceedings on the same grounds, at this time the court denied injunctive relief.
On the underlying injunction involving the term “Boult,” the Bench concurred with the Single Judge’s findings and determined that the principles governing interlocutory injunctions were established correctly. The court made an express reference to Satyam Infoway Ltd. v. Siffynet Solutions Pvt Ltd. (2004) 6 SCC 145 to describe the elements of passing off in goodwill, misrepresentation and damages and for Wander Ltd v. Antox India Pvt Ltd. (1990) Supp SCC 727, to establish that interim injunctions are a discretionary remedy based on a prima facie case, balance of convenience and irreparability, commencing the law for interim relief.
The Court ruled that IMPL has established significant goodwill connected to its “boAt” marks and trade dress, as well as EM’s logos and taglines demonstrated too similar a state of affairs to possibly dissuade ‘consumer confusion.’ On phonetic-similarity, the Court relied on K.R. Chinna Krishna Chettiar v. Shri Ambal Co. (1969) 2 SCC 131, which pointed out that small phonetic-similarities can mislead even the average buyer, especially when coupled with visual-similarities.
The argument that online shopping would lessen confusion was also rejected, as online buyers also have imperfect recall. The Court also indicated that “minor similarities” in overall packaging or logos were also sufficient to be impactful. Finally, the Bench reiterated that appellate interference with interim orders should be limited, and he held that the Single Judge had sound discretion and stayed away from clarifying the reliefs beyond the pleadings.
Judgment
The Division Bench dismissed the appeal with the following directions:
- The injunction restraining EM from using similar mark is affirmed; the injunction will continue until the suit is finally disposed of.
- The injunction on the tagline “UNPLUG YOURSELF” is set aside as there was no prayer made in the application.
- EM is permitted to use “GOBOULT”; IMPL is allowed to challenge the use of “GOBOULT” if it wishes by way of separate proceedings.
- There will be no order as to costs.
Conclusion
In summary, Delhi High Court held that reliefs offered in a trademark action shall be confined to the plea made. While reaffirming the general interim protection afforded to IMPL’s marks in respect of passing off by EM but also setting parameters for an injunction and clarifying the position with regard to new trademarks like “GOBOULT”. The judgment confirms the principle of judicial restraint in interim orders and reinforces both the value of past (market) goodwill, and also the need for specificity in intellectual property pleadings.
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WRITTEN BY Stuti Vineet
For reading more please click here: Exotic Mile v. Imagine Marketing Pvt. Ltd.
