Introduction:
India, as a mixed market, has a diverse range of industries that
function on a free-market basis. In the market system, there is
fierce competition. Any business that wants to succeed in the free
market must have brand recognition and value. Trademarks are the
most straightforward way to accomplish this. However, the Squatting
of trademarks and registering of identical and/or deceptively
similar trademarks has been a never-ending problem for registered
and prior users of trademarks in recent years. Any application for
registration of a trademark that is identical or deceptively
similar to an already registered brand in order to profit from
goodwill and reputation is considered bad faith. Walmart
Apollo LLC. Vs. Aayush Jain & Anr. (2021) is a recent
case in which Walmart Apollo (Plaintiff) sued Aayush Jain &
Anr. (Defendant) for trademark and copyright infringement over its
marks in the Delhi High Court.
Factual Background:
Plaintiff is a wholly-owned subsidiary of Walmart Inc. and the
world’s largest retailer, with a global network of massive
discount department stores, e-commerce stores, and brick-and-mortar
retail and wholesale outlets selling a wide range of goods,
including but not limited to home decor items. Under the corporate
name and trading style “WAL-MART/WALMART,” Plaintiff runs
over 10500 outlets under 48 banners in 24 countries. Plaintiff
describes their emblem as a yellow spark, which represents
invention, creativity, and diversity. Plaintiff became aware of a
trademark application for hosiery and ready made items,
undergarments as defined in Class 25 under the name
“WMART.” Plaintiff has filed an opposition before the
Registrar of Trademark, which is now pending.
Defendants have submitted another application for the identical
mark “WMART” in Class 35, as stated. Defendants are in
the business of brick-and-mortar stores as well as online clothing
and home accessory sale, and they use the trademark
“WMART” with the same spark logo as used by Plaintiff.
Defendants operate a website at http://www.wmartretail.com, where they
advertise and recruit customers using the Impugned Marks as well as
on defendants’ social media sites, and sell online through an
e-commerce platform. Plaintiffs claimed that after receiving
cease-and-desist letters, Defendants continued to use the infringed
marks.The plaintiff’s case was prima facie, and they filed a
suit against the defendants under the Trade Marks Act, 1999, and
the Copyright Act, 1957, seeking a permanent injunction,
infringement of trademark, infringement of copyright, passing off,
declaration of a well-known mark, and rendition of account of
profits in relation to its trademark WALMART/WAL-MART.
Issues in the case:
- Whether there is a prima facie case under Trademark Protection
for the plaintiff? - Whether the application brought against the defendant
legal? - Whether a lawsuit involving a comparable trademark fit under
the act’s trademark infringement category?
Held:
Compliance of Order 39 Rule 3 of the Code of Civil Procedure
(India), [Act No. 05 of 1908], was passed, and the court
ordered and stated that the defendants, their successors, servants,
agents, licensees, franchisees, representatives, sister concerns,
assignees, and anyone acting for and/or on their behalf are
restrained using the trademarks WMART and/or any other mark
deceptively similar/identical to the Plaintiff’s trademarks
WAL-MART / WALMART, as a trademark/trade name/trading style/domain
name with respect to their goods and/or services or in any manner
whatsoever, which would amount to infringement of the registered
trademark of the Plaintiff and passing off the goods/services of
the defendants as the goods/services of the plaintiff.
Analysis
In the case of H&M Hennes &Mauritz AB Anr. v. HM
Megabrands Pvt. Ltd. & Ors.
(2018),the Plaintiff, a well-known fashion brand
with hundreds of shops across the world, adopted the
‘H&M’ trademark in 1970 and registered it in India in
2005. The Plaintiff claimed that Defendant infringed on their
trademark by representing their ‘HM’ mark with the same red
and white colour scheme as the Plaintiff. The Defendant claimed
that their use and adoption of the mark was lawful, and that the
mark stood for the names of their directors. They also claimed that
because the Plaintiff entered the Indian market much later, their
mark had not yet established a reputation when they adopted their
‘HM’ mark in 2011.The Court found in favour of the
Plaintiff, holding that a company with a global reputation does not
need to open up shop in India in order for its trademark to be
protected in India. As a result, the Defendant was barred from
utilizing the ‘HM’ mark or any of its deceptive
modifications.
In another case, the domain names owned by the Plaintiff and the
Defendant, ‘Yahoo!’ and ‘Yahoo India!’
respectively, were practically same and comparable in the case of
Yahoo!, Inc. v. Akash Arora & Anr.
(1999). The complainant claimed that the
similarities would cause consumers to be confused and deceived,
leading them to believe that the two domain names were linked. The
Delhi High Court ruled that a domain name serves the same purpose
as a trademark and is therefore entitled to the same level of
protection. According to the court, internet users would be misled
and tricked into believing that both domain names are from the same
source. The defendant claimed that a disclaimer was posted on its
website.However, it was pointed out that a disclaimer alone was
insufficient. The plaintiff’s name gained individuality and
uniqueness as a result of its association with him. The Court ruled
in the Plaintiff’s favour.
Similarly, the Supreme Court concluded in Neon
Laboratories Limited vs. Medical Technologies
Limited(2016), that the “first in the market
test” has always had priority. Milmet Oftho Industries
(2004) and N.R. Dongre v Whirlpool Corpn.
(1996) both concluded that the worldwide prior user has
priority and supremacy over the registered brand in India. It was
decided that the visibility in India of web pages displaying the
goods is adequate to prove that purchasers in India or Indians
traveling overseas are aware of the product and are likely to
identify it with plaintiffs for the purposes of establishing a
reputation.
Conclusion
When choosing a trademark, it is critical for everyone to choose
one that can easily differentiate their products from those of
others. Copying logos and selling goods online and offline,
particularly in the clothing and garments segment, has become very
common. To avoid confusion and unhealthy competition, an
independent and distinctive mark should be adopted so that the
general public will not be confused between the two trademarks and
can buy genuine and authentic goods.
Walmart Apollo Llc. Vs. Aayush Jain & Anr.: A Case
Analysis
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
