In the recent judgement of Imagine Marketing Pvt Ltd v. Exotic Mile, the plaintiffs who are owners of the trademark “BOAT” in relation to electronic gadgets and such as earphones, headphones, speakers etc., sought permanent injunction restraining the defendants for use of their mark “BOULT” claiming it to be deceptively similar to the plaintiffs registered trademarks BOAT /boAt, and hence amounting to infringement of the plaintiffs trademark and copyright as well as passing of the goods of the defendant’s as that of the plaintiffs.
The plaintiff claimed that the reason for adoption of the word “BOAT” as its brand name ‘boAt’ is that “when you take a boat, you leave everything behind, you plug into a new zone”. The plaintiff thus also adopted the tagline ‘Plug into Nirvana’. The plaintiff had also obtained copyright registration in the mark/logo and alphabet ‘A’ in ‘boAt’ – , displaying a boat within the letter ‘A’. The plaintiff had also secured registration for the trademarks boAts, with the stylized ‘A’, boAt along with the word ‘nirvana’ in class 9, 11 and 35. The plaintiff claimed that it had put in a lot of effort and investment to promote and advertise its products under the boAt trademark by entering into contracts with various celebrities as its brand ambassadors and were also the licensing partner to various sporting events.
The plaintiff submitted that they first learnt about the defendant’s trademark in February 2019 when the plaintiff received an email from Myntra regarding a customer complaint of the defendant’s product. Thereafter, the plaintiff has been regularly receiving complaints by emails from various customers and distributors regarding sub-standard quality of defendant’s products which have been reported to the plaintiff as plaintiff’s products, clearly evidencing that the customers were getting confused between the plaintiffs and defendant’s products. The defendant was selling its product on the same platform on which the plaintiff was selling its products i.e. Amazon and Myntra.
The plaintiff alleged that the defendant had dishonestly adopted the trademark BOULT which is phonetically and deceptively similar to that of the plaintiffs mark BOAT, with the same opening and closing syllables as well as the logo ‘A’ despite the fact that the defendant’s brand name BOULT does not have the letter ‘A’. In addition, the defendant had also adopted the tagline i.e. ‘UNPLUG YOURSELF’ which is deceptively similar to the plaintiff’s tagline ‘PLUG INTO NIRVANA’. Apart from that the defendant also copied the names of the plaintiffs product like ‘Boult BassBud’ which is deceptively similar to that of plaintiffs product ‘boAt BassHeads’. It was also claimed that by adopting and using the elements of the plaintiff’s registered trademark, the defendant was trying to piggyback on the plaintiff’s goodwill and popularity.
The defendant had argued that it is a proprietorship firm engaged in the business of audio gadgets specializing in headphones and speakers and have started its operation in the year 2017. The defendant submitted that they coined and adopted the trademark/trade name, BOULT and BOULT AUDIO ‘’ in the year 2017 which were also registered in their favour under Class 9. As regards logo they submitted that their trade name ‘BOULT AUDIO’ was mentioned in the logo. The defendant contented that there is no similarity between the two marks and that the trademark of the plaintiff, if any that is used in a standalone manner is actually, which is completely different from the plaintiff’s logo and the defendant’s logo. Further the tagline of the plaintiff and defendant are also not similar, the only common word being ‘PLUG’ which is common to trade. The defendant also claimed that since the defendant was selling its product under the trademark BOULT since the year 2017, plaintiff was not entitled to any injunction in view of the delay.
The Court while ruling in favour of plaintiff in the matter held as under:
- The Court rejected the defendant’s plea regarding delay in filing of the suit for the reasons that firstly in a case of dishonest adoption mere delay in bringing the action is not sufficient to defeat the claim of grant of injunction, as also, the delay if any by the plaintiff in bringing the action for injunction does not amount to acquiescence by the plaintiff. The Court relied on Supreme Court’s judgement in Midas Hygiene Industries (P) L td. Vs. Sudhir Bhatia & Ors wherein it was held that mere delay in bringing the action is not sufficient to defeat the grant of injunction. Further reliance was placed on the case of M/s. Hindustan Pencils Pvt. Ltd. V. M/s. India Stationery Products Co. & Anr wherein the Delhi High Court held that inordinate delay would not defeat an action for the grant of a temporary injunction especially where the use by the defendant of the mark was fraudulent.
- The Court noted that plaintiff was the prior user of the trademark BOAT for similar goods and had an established market when the defendant’s son acted as a consultant for a distributor of the plaintiff’s product even as per its own submission. Thus, the defendant was aware of the mark of the plaintiff.
- The Court considered the phonetic similarity in the rival marks and held defendant’s mark BOULT to be deceptively similar to the plaintiff’s mark ‘BOAT’. In this connection, the Court placed reliance on the Supreme Court judgement Chinna Krishna Chettiar v.Shri Ambal and Co., Madras & Anr wherein it was held that the resemblance between the two marks must be considered with reference to the ear as well as the eye. Also, reliance was placed on the judgement of Encore Electronics Ltd. v. Anchor Electronics and Electricals Pvt. Ltd. wherein the Court considered the mark ‘Anchor’ to be similar to ‘Encore’ and held that “The overall impression conveyed by a mark as a whole, has to be assessed in evaluating whether the mark of the Defendant is deceptively similar to the mark of the Plaintiff. Phonetic similarity constitutes an important index of whether a mark bears a deceptive or misleading similarity to another. The phonetic structure indicates how the rival marks ring in the ears”.
- The Court also observed that the class of users of the products sold by the plaintiff and defendant were from all sections of the society including children as well. Accordingly, BOAT and BOULT being quite phonetically similar, a consumer would not have a correct complete and 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 is also similar in the form of a triangle. The tagline also uses the word PLUG in both so as to cause a deception. In this regard, the Court relied on the judgement in Hindustan Sanitaryware (supra) wherein it was held that a mark has to be looked into as a whole and on looking at it as a whole, if there is a phonetic similarity resulting in every likelihood of deception the plaintiff would be entitled to grant of injunction. The Court decided to overlook the defendant’s usage since 2017 and also the expenses invested in promotion and advertising given the dishonest intentions in adoption of the mark ‘BOULT’, the logo containing the alphabet ‘A’, the tagline as well as deceptively similar product names along with similar get up and colour scheme for its products and packaging.
Accordingly, the Court decided in favour of the plaintiff by granting an interim injunction and restraining Exotic Mile from using the trademark ‘BOULT’ as well as the tagline ‘UNPLUG YOURSELF’ until the disposal of the suit.