The Court finds trademark ‘GK WELLNESS’ in contradiction to law & infringing ‘GK HAIR’

by mehtaip, posted in #India, Abhilasha Niroola, Infringement, Intellectual Property, Trade Dress, Trademark

The Delhi High Court, on 26 December 26 2023, in Van Tibolli & Anr. (‘Plaintiff(s)’) v. K. Srinivas Rao & Anr. (‘Defendant(s)’) [CS(COMM) 339/2021 & I.A. 8970/20;21] restrained the Defendants, pending disposal of the present suit, from using the mark “GK WELLNESS” in any form, including the logos,

any domain name of which “gkwellness” is a part, or any other mark which is confusingly or deceptively similar to the plaintiffs’ registered trade mark “GK HAIR”, or for any goods or services dealing with hair care or hair treatment, or any other goods or services which are allied or cognate therewith.

In the present matter, the Plaintiffs alleged that the Defendant’s mark “GK WELLNESS” and Defendants logos infringe the Plaintiff’s registered trade mark “GK HAIR” and logo (‘Plaintiff’s logo’).

The Plaintiffs further alleged, that as the Defendants were also manufacturing and selling haircare products, similar to the Plaintiff, under the impugned marks “GK WELLNESS”, and the manner in which the Defendants use their logo, and the trade dress that they adopt, are bound to result in confusion. Besides, on e-commerce websites, the Plaintiffs and Defendants products figure side-by-side, enhancing the possibility of confusion.

The Defendant’s primary contention was that the mark and logo “GK WELLNESS” was registered in favour of Defendant 1 and therefore no action for infringement can lie against the said mark. In the regards, the Court observed that the registration of the mark in favour of Defendant was granted in a manner contrary to law as the Registry had failed to take into consideration the extension of deadlines to file oppositions till 28 February 2022, in light of the COVID-19 pandemic and rejected the Plaintiff’s opposition to the Defendant’s application. The Court further observed that the decision was clearly illegal, as the period of limitation stood extended till 28 February 2022 by the Supreme Court. The mark and logo “GK WELLNESS” was granted registration, therefore, without considering the opposition of the plaintiff, which was filed within time. The grant of registration was itself, therefore, prima facie invalid ab initio.”

The Court further observed that “Given the fact that the marks “GK HAIR” and “GK WELLNESS” are both used for hair care solutions, there is, prima facie, every likelihood of a consumer being confused, or at least presuming an association between the two marks. This possibility is exacerbated by the likeness in the logos of the defendants and the plaintiffs, which emphasise the “GK” and relegate the words “HAIR” and “WELLNESS” to tiny letters, towards the base of the logo.”

The Court accordingly concluded that (i) the marks “GK HAIR” and “GK WELLNESS” are similar to each other, (ii) they are used for identical products, catering to the same consumers and available at the same outlets and (iii) there is prima facie likelihood of confusion in the mind of the consumer, or of the consumer believing an association between the marks as a result of these factors, the three ingredients which are required to cumulatively be satisfied for infringement, within the meaning of Section 29(2)(b) of the Trade Marks Act to be found to exist, are satisfied in the present case.

While granting the interlocutory injunction in the present case, the Court observed that “The considerations of balance of convenience and irreparable loss would also justify grant of interlocutory injunction in the present case. The balance of convenience is clearly in favour of the plaintiffs, as the defendants are using an infringing mark, and, while grant of injunction would only require the defendants not to use a mark of which “GK” is a part, refusal of injunction would result in the plaintiff having to tolerate continued infringement. Refusal of injunction would also be contrary to public interest, as there would be likelihood of further confusion, in the public, between the products of the defendants and the plaintiffs as a consequence of similarity of the marks used by them.”

Contributor(s)

The contributor to the present post is Abhilasha.

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