Rohini Court, Delhi: In a suit filed seeking ad interim injunction against defendant restraining defendant from using tag line ‘PEHLE CHECK KAREN PHIR VISHWAS KAREN’ against plaintiff tag line / ‘PEHLE ISTEMAL KAREN PHIR VISHWAS KAREN’ with respect to detergent powder, soap etc. under trade mark Ghari, Gurdeep Singh, J. restrained the defendant from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing in or using the impugned trade mark/ label/ punch line/ tagline/ literary work ‘PEHLE CHECK KAREN PHIR VISHWAS KAREN’ or any other trade mark/ label/ punch line/ tagline/ literary work which are identical with and / or confusingly or deceptively similar to plaintiff’s trademarks/ label/ punch line/ tagline/ literary work / ‘PEHLE ISTEMAL KAREN PHIR VISHWAS KAREN’ in relation to their impugned goods and business of manufacturing, trading, procuring, supplying, distributions, import and export of all kinds of jewellery and other allied and cognate goods and services or from doing any other acts or deeds amounting to or likely to infringing plaintiff’s registered trademarks and copyright; and passing off its goods and business as that of the goods and business of the plaintiff.
The plaintiff is a company engaged in the business of manufacturing and marketing of washing soap, detergent powder, detergent cake, Salt, Shampoo, Hair oil, Toothpaste, Moisturizer, Shaving Cream, Liquid Hand Wash, Floor Cleaner, Liquid Detergent, Toilet Cleaner and other allied and cognate goods. In 1988, the plaintiff adopted and started using trademark/punch line/tagline/ literary work ‘PEHLE ISTEMAL KAREN PHIR VISHWAS KAREN’ on its said goods and business.
The grievance of the plaintiff is that the that defendant is engaged in the business of manufacturing, trading, procuring, supplying, distributions, import and export of all kinds of Jewelry and other allied and cognate goods & services and has started using the trademark/labels/punch line/tagline/ literary work ‘PEHLE CHECK KAREN PHIR VISHWAS KAREN’ in relation to its impugned goods and business.
The Court noted that mark of the plaintiff is well established and on account of wide publicity of trademark, the tagline is identified with the goods coming from the house of plaintiff and it has acquired distinctiveness on account of long user and extensive publicity through celebrities / film stars like Mr. Amitabh Bachan and Nagarjun.
On the contention by the defendant that that trademark /tagline of the plaintiff is descriptive in nature and therefore it cannot be Protected, the Court noted that It does not lie in the mouth of the defendant as defendant has himself applied for registration of the same type of mark which according to them are descriptive and therefore, they cannot take advantage of the descriptive Mark.
On the contention by the defendant that adoption of tagline is not identical as their taglines means ‘first check and then trust’ whereas tagline of the plaintiff means ‘first use and then trust’, the Court observed that if one reads in Hindi, it will immediately remind / attract his attention to the tagline of the plaintiff and mere change of one word does not in any manner show that tagline/mark is different.
The Court remarked that the tag line ‘PEHLE CHECK KAREN PHIR VISHWAS KAREN’ is identical and deceptively similar to tag line ‘PEHLE ISTEMAL KAREN PHIR VISHWAS KAREN’ which is likely to cause confusion amongst the purchasing public and trader that goods under the trademark are also coming from the house of the plaintiff.
Thus, the Court held that a prima facie case of infringement of trademark, copyright and passing off is made out in favour of the plaintiff and balance of convenience is also lying in its favour as well as irreparable loss in terms of goodwill would be caused to the plaintiff if no interim injunction is passed in its favour.
[RSPL Limited v. GTM Jewellery Mart, 2022 SCC OnLine Dis Crt (Del) 39, decided on 20-09-2022]
Counsel for plaintiff: Anil Kumar Sahu
Counsel for defendant : Kapil Yadav
*Arunima Bose, Editorial Assistant has put this report together.
