IN CS (COMM) 36 OF 2021 - DEL HC - Affidavits and documents filed by defendant to vouchsafe user of the impugned mark ‘Zenith’ were afterthoughts, hurriedly created to embellish the case with some documentary support, thus no prima facie worth could be attached: Delhi High Court while granting relief to dance institute under Trademarks Act
Justice  C. Hari Shankar [18.07.2023]

Read More: Zenith Dance Institute Private Limited v Zenith Dancing and Music

Simran Singh

New Delhi, July 19, 2023: In a trademark infringement lawsuit filed by Zenith Dance Institute Private Limited against Zenith Dancing and Music, the Delhi High Court has ruled in favour of the plaintiff within the meaning of Section 29(2)(b) of the Trade Marks Act, 1999  and made the interim injunction granted in its favour absolute. The Court further dismissed the application filed by the defendant seeking vacation of the interim injunction.

The Single Judge Bench of Justice  C. Hari Shankar stated that most damagingly, all the affidavits relied upon by the defendant, had been prepared after the suit was filed and instituted before this Court by the plaintiff. Their evidentiary value stood, prima facie, considerably denuded even on this sole ground. The Court was constrained, in these circumstances, to express a prima facie view that the affidavits and accompanying documents filed by the defendant to vouchsafe user of the impugned marks were afterthoughts, hurriedly created and put together, merely to embellish the case of the defendant with some documentary support, thus no prima facie worth or value could be attached to them.

In the matter at hand, the plaintiff claimed that the defendant was infringing its registered trademarks containing the word 'Zenith' by running dance institutes under the same name and was also passing off the services rendered by it as those rendered by the plaintiff.

The Court noted that Zenith Dance Institute had been using the 'Zenith' mark since 1997 and had a registered trademark containing 'Zenith' since 2007. However, Zenith Dance Institute did not have evidence of using the mark before 1999.

On the other hand, the defendant claimed that it had been using the 'Zenith' mark since 1999. However, the Court found that the evidence provided by the defendant was unreliable and self-serving.

The Court stated that in as much as the plaintiff‘s registered trade marks were not identical to the impugned marks of the defendant, and, as the plaintiff did not have any registration for the word mark ZENITH per se, a case of infringement could be made out by the plaintiff against the defendant only if the plaintiff could bring its case under Section 29(2)(b) of the Trade Marks Act. Under this provision, the defendant’s mark would infringe the plaintiff’s registered marks if, owing to their similarity, in conjunction with the identity or similarity of the goods or services covered by the said marks, the public was likely to be confused or believe an association between the defendant‘s mark and the plaintiff‘s registered marks.

The Court stated that “The words ―because of in Section 29(2) are significant. It is only if the likelihood of confusion or association is because of the similarity between the plaintiff’s and defendant’s marks, and the identity or similarity of the goods or services covered by such marks, that the defendant‘s marks can be said to infringe the plaintiff‘s registered marks. In the absence of a causal link between the similarity between the rival marks and the identity or similarity of the goods or services provided under the rival marks, and the likelihood of confusion, deception or association, no case of infringement can be said to have been made out. The causal link has necessarily to be shown to exist. ”

The Bench stated that if the impugned mark of the defendant was cited against the mark asserted in the plaint, at the time when the plaintiff applied for registration thereof, and the plaintiff, in order to obtain registration, pleaded that the two marks were not so similar as to result in likelihood of confusion or deception, then the plaintiff could not, in infringement proceedings, seek to injunct the very same cited mark of the defendant by pleading that it was confusingly or deceptively similar to the plaintiff's mark. Reason being, registration was a sine qua non in any infringement action. Absent registration, no plaintiff could bring an action for infringement against the mark of another. “If, therefore, the plaintiff has secured registration on the basis of a representation that the impugned mark of the defendant is dissimilar to the plaintiff‘s mark, the plaintiff cannot, thereafter, use the very same registration as a ground to injunct the very same cited mark of the defendant as infringing, by pleading that it is confusingly or deceptively similar to the plaintiff‘s mark. Allowing the plaintiff to do so would be permitting approbate and reprobate, which the law proscribes.”

The Bench thus stated that the plaintiff could not, having obtained secured registration of the asserted mark by pleading dissimilarity with the impugned mark of the defendant, execute a volte face and bring an infringement action against the very same mark of the defendant, pleading deceptive similarity for the said purpose. The plea of confusing or deceptive similarity of the Zenith mark  of the defendant, and the ZENITH ARTS word mark of the plaintiff was, therefore, rejected.

The Bench however stated that ‘Zenith' was the prominent and defining feature of the plaintiff’s marks as well as the defendant’s marks, which stood out in sharp relief and imprinted itself on the psyche of the customer of average intelligence and imperfect recollection, the mere fact that the overall design and layout of the two marks may be different, could not efface the possibility of confusion. “The Court has, moreover, to be conscious of the fact that, in this day and age, changing of logos and pictorial representations of marks is standard commercial practice, and is often used as part of market strategy, to impart novelty to the mark. Marks which have continued for long periods of time and which may, therefore, have created, in the average viewer, a sense of ennui, are often altered or made more attractive so as to replace the feeling of ennui with interest in what appears to be something novel. The pictorial characteristics of a device mark or logo can, therefore, in the present case, matter only so much and no more. If the principle defining feature of two marks, such as the name of the two marks, is the same, or is confusingly similar, the fact that the two marks may be visually distinct from each other may not be of much relevance when one examines the aspect of infringement.”

In the present case, the Court stated that the word ―Zenith was the distinctive feature of both the plaintiff’s and the defendant’s marks. Both marks were used for providing education in dance. There was bound, therefore, to be also a customer overlap in the marks of the plaintiff and the defendant. The use of ―Zenith as part of the mark of the defendant was bound, therefore, to create confusion in the mind of a customer of average intelligence and imperfect recollection. It could hardly be said that the word ―Zenith, when used as a mark in the context of providing services in respect of dance education, was incapable of distinguishing such services from the services provided by another. Plainly put, the word ―Zenith in the name ―Zenith Dance Institute was certainly one as would impress itself on the psyche of a customer, or a client, of average intelligence and imperfect recollection. It could not, therefore, be treated as a mark which was lacking in distinctive character, such as to disentitle itself to any claim to monopoly.

The Bench therefore, held that the plaintiff had the priority to use of the 'Zenith' mark vis-a-vis the defendant and that the defendant’s marks infringed the plaintiff’s registered trademarks by using the prominent 'Zenith' word.