Case Title:
Vinita Gupta v. Amit Arora
Date of Order:
1st of June, 2022
Judge:
Justice Jyoti Singh
Parties:
Plaintiff :Vinita Gupta
Respondents: Amit Arora
FACTS OF THE CASE
- The plaintiff has filed this lawsuit in order to obtain an injunction prohibiting the defendant and those acting on his behalf from marketing, advertising, or selling any goods using the trademarks "APPLEPLANT" or any other mark that is confusingly similar to the plaintiff's trademark "APPLESTREE," which could lead to consumers mistaking the defendant's goods for the plaintiff's, including goods with similar packaging, get-up, and trade dress.
- The owner of Palm Abrasives, Late Shri Yogesh Gupta, began using the registered trademark APPLESTREE as well as packaging and trade dress in 2008. The well-known trademark APPLESTREE created significant sales in India for a variety of items, including abrasive strips, rolls, paste, and more, as well as silicon carbide waterproof abrasive paper, velcro discs, sandpaper, and other related goods.
- It is claimed that the trademark APPLESTREE has developed a secondary meaning and has become extremely unique to the point that it is associated with the Plaintiff and no one else as a result of its substantial, long-term usage for more than 14 years along with its distinctive packaging.
- In addition to owning a property interest in the trademark APPLESTREE and its packaging, get-up, and trade dress, Plaintiff has also obtained common law rights as a result of past adoption, prior usage, and substantial exposure and marketing. Plaintiff asserts that the trademark APPLESTREE is registered in Classes 03, 08, 07, and 17, and that these registrations are current and valid. Thus, the Copyright Act of 1957 provides protection for the plaintiff, and any illegal use would be considered an infringement under Section 51 of the same Act.
ARGUMENTS ADVANCED BY THE PLAINTIFF
- The disputed trademarks, NUAPPLEPLANT and, are identical to or confusingly similar to Plaintiff's trademark APPLESTREE, and the defendant also copied the product's trade dress, packaging, and advertisements. There is a high likelihood that consumers will mistakenly believe the Defendant is the source of the goods because the competing products, such as abrasive papers, sand, rolls, and paste, are identical, as are the distribution channels and the target market. This would amount to passing off and violate the plaintiff's common law rights.
- The brand NUAPPLEPLANT is phonologically, aesthetically, and structurally similar to the plaintiff's trademark APPLESTREE (word per se), and the defendant has faithfully reproduced all crucial and distinctive elements of the label mark. The words "PLANT" and "TREE" have the same meanings, thus there is a conceptual connection between the two trademarks that gives the appearance that they are related and affiliated.
- In the event that any defect is discovered in the impugned products, it would result in the loss of the Plaintiff's reputation and goodwill, which is a very important asset. The general public, traders, and consumers who are well aware of the reputation of the Plaintiff and the quality of the goods sold under the trademark APPLESTREE would continue to purchase the products of the Defendant under the assumption that they emanate from the Plaintiff.
ARGUMENTS ADVANCED BY THE RESPONDENT
- Due to the concealment of important facts from this Court, the plaintiff is not entitled to equitable remedy in the form of an injunction. The assertion made in the plaint that the plaintiff has been using the trademark APPLESTREE since 2008 is untrue and also goes against the information found in the Trade Marks Registry. Some of the invoices entered into the system show that usage of the trademark only started in 2018, as evidenced by the fact that the earliest invoice entered into the system is dated 9.3.2018.
- The fact that the Plaintiff has submitted multiple trademark applications for the registration of different formatives of the trademark APPLESTREE, such as device marks or marks with suffixes or prefixes, in which user is claimed from 2017, is a concealment of the fact and proves that the Plaintiff or her predecessor cannot have used the trademark APPLESTREE prior to the aforementioned year. Although the plaintiff claims usage of the mark dating back to 15.02.2008 in the trademark application bearing number 3463220, it is unclear why the application was only submitted on 21.01.2017.
- According to records on the trademarks website, the Registrar of Trade Marks cited similar trademarks used by other people or entities in his examination report for four of the aforementioned applications filed by the Plaintiff. Significantly, in his reply, the Plaintiff asserted that the cited marks—Apple (Device), Apple (Label), Apple Wash, Apple Detergent Cake, and Apple Unisex Salon—were not similar to his trademark. Under the Commercial Courts Act of 2015, the current lawsuit must be accompanied by a declaration of truth, in which the party is obligated to accurately disclose all information and materials in its possession. Consequently, the current case, in which incorrect allegations are made in the plaint, ought to be dismissed on this ground
OBSERVATION BY COURT
- It is important to note that although the remedy requested in the prayer clause is merely for passing off and copyright infringement, the plaintiff has claimed infringement of the trademark APPLESTREE in the body of the plaint. The replication, however, makes it clear that the current lawsuit is for passing off rather than trademark infringement, and it appears that the Plaintiff's position has changed as a result of the Defendant's status as the registered owner of the trademark NUAPPLEPLANT. The plaintiff claimed that the discussion was limited to copyright infringement and passing off. According to this interpretation of the situation, the court does not need to dwell on the issue of trademark infringement of the name "Applestree".
- The Court stated that the key issue is whether the Plaintiff may assert a passing-off claim against the Defendant given that the latter is a registered owner of the in issue trademark. The legal situation is no longer res integra. In spite of the fact that the defendant is the registered owner of the contested mark NUAPPLEPLANT, the plaintiff has the right to sue the defendant for passing off.
- It is important to note that while the Defendant has disputed the Plaintiff's use date of 2008, it is an undisputed position prevailing between the parties that the Defendant's use date of the contested trademark with regard to the products at issue in the current lawsuit is from the year 2019. The period of time from the Plaintiff's first use of the trademark APPLESTREE in relation to the goods in Class 03—namely, abrasive paper, abrasive rolls, abrasive paste, polishing, scouring, and abrasive preparations—remains to be investigated.
- Plaintiff has shown evidence that her deceased spouse started using the trademark APPLESTREE in 2008. In support of the aforementioned position, the plaintiff has submitted trademark application No. 3463220, dated 21.01.2017, with the user date of 15.02.2008. Sales numbers are cited in the complaint, and many invoices have also been filed that purport to show sales made under the brand APPLESTREE.
CONCLUSION
Given the foregoing, Defendant and everyone acting on his behalf are prohibited from selling, offering for sale, advertising, or promoting any goods using the trademarks APPLEPLANT or any other mark that is confusingly similar to or identical to Plaintiff's trademark APPLESTREE/, as doing so may result in consumers mistaking
Defendant's goods for those of the Plaintiff. While the lawsuit is pending, the temporary injunction will be in effect. It goes without saying that the observations and conclusions in the current ruling are simply preliminary and prima facie and will not alter how the case is ultimately decided.
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