28 Jan An interim injunction is granted in favour of the appellants and against the respondents and the respondents are also restrained from using the mark ‘UNPLUG YOURSELF’

Imagine Marketing Pvt. Ltd. V/S Exotic Mile

The present suit is filed by the appellants Imagine Marketing Pvt. Ltd., in the Honourable High Court of Delhi before Honourable Justice Mukta Gupta, seeking a decree of permanent injunction restraining the respondents from in any manner using the mark BOULT or any other mark deceptively similar to the appellants’ registered trademarks BOAT/boat. [CS (COMM) 519/2019, Decided On: 21.01.2020]

The appellants in the present suit are a company incorporated under the Companies Act in the year 2013 having its registered office at Mumbai and in a short span of time they have become a market leader in electronic gadgets such as earphones, headphones, speakers, sound bars, etc. which are marketed, sold and distributed under their flagship trademark (boAt), which was originally coined and adopted by the Directors in the year 2014. The reason for adoption of the word “boat” as the brand name ‘boAt’ is the philosophy of the founders of the appellants’ company that “when you take a boat, you leave everything behind, you plug into a new zone”. The appellants thus also adopted the tagline ‘Plug into Nirvana’.

The appellants are the owner of the copyright in the mark/logo and alphabet ‘A’ in ‘boAt’ which is a well thought of artistic work, displaying a boat within the letter ‘A’. further they are also the registered owner of the trademarks boAts, with the stylized ‘A’ and boAt along with the word ‘nirvana’ in class 9, 11 and 35.

The appellants state that they first learnt about the unlawful activities of the respondents and confusion being caused in the market in February 2019 when the appellants received an email from Myntra regarding a customer complaint of the respondents’ product. Thereafter, the appellants had been regularly receiving complaints by emails from various customers and distributors regarding sub-standard quality of respondents’ products which have been reported to the appellants as their products, clearly evidencing that the customers were getting confused between the appellants’ and respondents’ products.

According to the appellants the respondents are selling cheap and low quality products under the brand name BOULT, which was deceptively similar to the appellants’ trademark BOAT, on the same platform on which the appellants were selling their products i.e. Amazon and Myntra. On further search conducted, the appellants came to know that the respondents had initially approached the appellants in the year 2017 to become a distributor of the appellants’ products.

The appellants claim that respondents had dishonestly adopted the trademark BOULT which was phonetically and deceptively similar to the appellants’ mark BOAT, with the intention to create confusion in the market and amongst the consumers. Furthermore, the respondents’ logo/mark too was deceptively similar to the appellants registered trademark and the respondents had merely re-adjusted the elements and parts of the appellants’ aforementioned trademark.

It is the contention of the appellants that by adopting and using the elements of the appellants’ registered trademark the respondents were trying to piggyback on the appellants’ goodwill and popularity.

The appellants thus claim that the respondents are using a deceptively similar trademark for identical products without authority or license of the appellants and riding on the goodwill and reputation of the appellants and their trademark thereby infringing the appellants’ trademark and copyright as also passing off their own products as that of the appellants’ and thereby indulging in unfair trade practice and unfair competition.

Hence the appellants filed the present suit seeking a decree of permanent injunction restraining the respondents from selling, distributing, advertising or in any manner dealing in goods and/or services under the mark BOULT or any other mark or trade name, deceptively similar to that of the appellants’ registered trademarks BOAT/boAt, thereby amounting to infringement of the appellants’ trademark, copyright and passing of the goods of the respondents’ as that of the appellants, rendition of accounts, delivery up, damages and cost.

The respondents in the suit Exotic Mile, state that they are a proprietorship firm engaged in the business of audio gadgets specializing in headphones and speakers and have started their operation in the year 2017. According to the respondents, they coined and adopted their trademark/ name, BOULT and BOULT AUDIO in the year 2017. The respondents also applied for the registration of their trademark in the year 2017 and the same has been duly registered in their favour in class 9.

According to the respondents, they had become one of the biggest competitors of the appellants in the market and due to this reason the appellants had filed the present baseless suit to eliminate the competition in the market. The respondents also highlighted that the appellants had concealed from the court the fact that the respondents’ trademark BOULT was a registered trademark under class 9 since 23rd May, 2017.

The respondents also asserted that they being a registered trademark holder, no suit for infringement would lie against them and that there was no similarity between the two marks.

The court in the present suit highlighted that the class of users of the product sold by the appellants and respondents were all strata of the society including children. Hence the similarity between the two marks was not to be adjudicated by way of precision but the manner in which the senses perceive a fact and retain it in the memory. BOAT and BOULT being quite phonetically similar, a consumer would not have a correct and complete reflection when he goes to buy the product whether the product is of BOAT or BOULT because of the first two and the last alphabet of the two words being the same. Further, the logo of the two products was also similar in the form of a triangle and the tagline also used the word ‘PLUG’ in both, so as to cause a deception.

According to the court in the present case the respondents were not only using the trademark, logo and tagline deceptively similar to that of the appellants’ but were also using deceptively similar name for their product i.e. “BoultBassBud” and had adopted a similar get up and colour scheme for their products and packaging.

The court stated that as highlighted by the respondents they being owner of the registered trademark BOULT, no action for infringement would lie viz-a-viz the said trademark, however according to the court an action for passing off the trademark, infringement of the copyright and dilution of the mark would certainly lie against the respondents and the appellants would be entitled to an injunction on the said count.

Consequently, an interim injunction in respect of infringement of the appellants’ registered trademark and passing off, infringement of the copyright of the appellants’ marks and dilution of the mark was granted in favour of the appellants and against the respondents and the respondents were also restrained from using their marks and ‘UNPLUG YOURSELF’ till the disposal of the suit.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 1; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 2; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 4