Trademark Infringement in Composite Marks: Insights from the latest judgment of the Delhi High Court
Case Title: Royal County of Berkshire Polo Club Ltd. & Ors. v. Lifestyle Equities C V & Ors
Date of Judgment: 28.08.2023
Case Number: FAO(OS) (COMM) 168/2019, CM APPL. 32083/2019 & CM APPL. 44128/2022
Coram: Hon’ble Mr. Justice Vibhu Bakhru & Hon’ble Mr. Justice Amit Mahajan
Introduction
The case involves a dispute between Royal County of Berkshire Polo Club Ltd. & Ors. (referred to as ‘Berkshire’) and Lifestyle Equities C V & Ors. (referred to as ‘BHPC’) over the alleged infringement of a logo mark used in the sale of fragrance products.
Factual Background
The appellants, Royal County of Berkshire Polo Club Ltd. & Ors. (referred to as ‘Berkshire’), appealed under Section 13 of the Commercial Courts Act against a judgment dated 06.05.2019. The judgment was passed by the learned Single Judge of the Delhi High Court in Suit bearing No. C.S. (COMM) 1031/2018. The learned Single Judge had granted an interim injunction against Berkshire, restraining them from selling or advertising products using a logo mark that the respondent, Lifestyle Equities CV & Ors. (referred to as ‘BHPC’), claimed was deceptively similar to their own logo mark.
Contentions of the Appellants
The appellants argued that the logo of a polo player on a horse is a common and descriptive image related to polo sports. They contended that BHPC’s claim of exclusivity over this image was unfounded, and several other companies, including Ralph Lauren, used similar imagery. The appellants also pointed out that they had been using their logo since 1985 and that the word “polo club” was not objected to by BHPC.
Contentions of the Respondent
BHPC claimed that they held the registration of a logo mark depicting a “charging polo pony, the rider and the polo stick of mallet,” which they considered to be a distinctive and well-known trademark. BHPC claimed that their logo mark, consisting of a distinctive polo player device and the stylized word mark “Beverly Hills Polo Club,” was registered in various countries, including India, and was well-known. They alleged that Berkshire’s logo mark, which also included a polo player and horse, was deceptively similar to their logo mark and likely to cause confusion among consumers. They sought an injunction against Berkshire from using any product with a logo mark similar to theirs.
Key Legal Issues
- Whether Berkshire’s logo mark was deceptively similar to BHPC’s logo mark?
- Whether there was a likelihood of confusion among consumers regarding both the trademarks?
- Whether BHPC was entitled to an injunction against Berkshire’s use of the logo mark?
Court’s Analysis and Decision
The Division Bench of the High Court, comprising Justice Vibhu Bakhru and Justice Amit Mahajan, set aside the impugned judgment. The Court observed that while the Single Judge had correctly identified the essential feature of the respondent’s mark as the polo player device, the learned Single Judge erred in finding deceptive similarity based solely on this feature.
The Appellate Court found that the learned Single Judge had misinterpreted the principles regarding trademark infringement. The Court emphasized that the competing marks should be considered as a whole and not dissected into individual components. It was noted that both companies used variations of the polo player device, which was also used by other entities like Ralph Lauren. The Appellate Court highlighted the dissimilarities in the marks, including the direction of the horses depicted, the positioning of the polo player device, and the co-existence of similar marks in various countries.
The Court noted that both parties used the polo player device in conjunction with their respective names (“Royal County of Berkshire Polo Club” for the appellants and “Beverly Hills Polo Club” for the respondents). It was also highlighted that the marks were co-existing in other countries. The Court concluded that Berkshire’s use of its logo mark, along with its actual name “Royal County of Berkshire Polo Club,” did not constitute infringement under Section 29(1) of the Trademarks Act, 1999. It was held that the marks belonging to the two polo clubs were distinct and not likely to cause confusion among consumers. The Court ruled that the marks were not deceptively similar when viewed as a whole and that BHPC’s claim of infringement was not justified.
Conclusion
This case demonstrates the complexity of determining trademark infringement when dealing with composite marks. The judgment emphasized that trademarks must be analyzed in their entirety and not dissected into individual elements for comparison, especially when dealing with marks that are used in conjunction with different words and upheld the importance of the overall commercial impression created by the mark.
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Written by – Ananya Chaudhary