Case Title:
Mother Sparsh Baby Care Pvt. Ltd. v. Aayush Gupta & Ors.
Date of Order:
04 April 2022
Bench:
Hon’ble Ms. Justice Prathiba M. Singh
Parties:
Plaintiff: Mother Sparsh Baby Care Pvt. Ltd.
Defendants: Aayush Gupta & Others
SUBJECT
Trademark Law – Trademark Infringement – Passing Off – Descriptive Marks – Prior Use – Interim Injunction – Principle of Estoppel in Trademark Litigation.
IMPORTANT PROVISIONS
1.Trade Marks Act, 1999
- Section 2(1)(zb) – Definition of Trademark.
- Section 18 – Application for Registration.
- Section 28 – Rights Conferred by Registration.
- Section 29 – Infringement of Registered Trademarks.
- Section 34 – Saving of Rights of Prior User.
- Section 135 – Relief in Suits for Infringement or Passing Off.
2.Code of Civil Procedure, 1908
• Order XXXIX Rules 1 and 2 – Temporary Injunctions.
OVERVIEW
The present case concerns a dispute relating to the trademark “PLANT POWERED” used in connection with baby care and personal care products. The plaintiff, Mother Sparsh Baby Care Pvt. Ltd., alleged that it had adopted and extensively used the mark “PLANT POWERED” in relation to its products and had acquired substantial goodwill and reputation in the market.
The defendants commenced use of the identical mark “PLANT POWERED” for similar goods. Aggrieved by such use, the plaintiff instituted a commercial suit seeking permanent injunction, damages, rendition of accounts, and other ancillary reliefs on the grounds of trademark infringement and passing off.
The defendants resisted the suit primarily by arguing that “PLANT POWERED” was descriptive in nature and merely conveyed that the products were derived from natural or plant-based ingredients. Consequently, according to the defendants, no monopoly could be claimed over such expression.
The Delhi High Court rejected this contention and held that a party which itself seeks registration of a mark cannot simultaneously argue that the mark is incapable of protection because it is descriptive. The Court confirmed the interim injunction restraining the defendants from using the impugned mark.
ISSUES RAISED
- Whether the expression “PLANT POWERED” was entitled to trademark protection against use by competing traders.
- Whether the defendants could contend that the mark was merely descriptive and incapable of exclusive appropriation.
- Whether a party that has itself applied for registration of a trademark can subsequently challenge the distinctiveness of the same mark.
- Whether the use of an identical mark for identical or similar goods constituted trademark infringement and passing off.
- Whether the plaintiff had established a prima facie case warranting continuation of the interim injunction.
ARGUMENTS ADVANCED BY THE APPELLANT (PLAINTIFF)
- Prior Adoption and Use
The plaintiff contended that it had adopted and used the mark “PLANT POWERED” prior to the defendants and had developed substantial goodwill and reputation through continuous commercial use. - Identical Mark
The plaintiff argued that the defendants had adopted the exact expression “PLANT POWERED” without any meaningful variation. Such use was likely to create confusion among consumers. - Consumer Confusion
Since both parties dealt in similar baby care and personal care products, the use of an identical trademark would inevitably mislead consumers regarding the source and origin of the goods. - Trademark Infringement
The plaintiff asserted that the defendants’ conduct amounted to infringement and passing off because consumers would associate the defendants’ products with the plaintiff’s established business. - Dishonest Adoption
The plaintiff maintained that the defendants’ adoption of the identical mark was deliberate and intended to exploit the goodwill already established by the plaintiff.
ARGUMENTS ADVANCED BY THE RESPONDENT (DEFENDANTS)
- Descriptive Nature of the Mark
The defendants argued that the expression “PLANT POWERED” merely described the characteristics and composition of the products and therefore lacked distinctiveness. - Publici Juris Argument
The defendants contended that expressions indicating plant-based ingredients are commonly used in trade and should remain available for all traders. - No Exclusive Rights
The defendants maintained that descriptive expressions cannot ordinarily be monopolised by a single business entity. - Absence of Distinctiveness
The defendants submitted that the mark did not possess the degree of uniqueness necessary to attract trademark protection.
JUDGMENT ANALYSIS
The judgment is significant because it addresses an increasingly common issue in trademark law involving descriptive or semi-descriptive marks used in modern marketing practices.
The Court examined the conduct of the defendants and noted that they had themselves sought registration of the mark “PLANT POWERED.” By applying for registration, the defendants effectively represented before the Trade Marks Registry that the mark was capable of distinguishing their goods from those of others and therefore deserved statutory protection.
Justice Prathiba M. Singh observed that such conduct was inconsistent with the defendants’ subsequent argument before the Court that the mark was merely descriptive and incapable of protection. The Court held that a litigant cannot approbate and reprobate simultaneously. If a party seeks exclusive statutory rights in a mark, it cannot later deny the protectability of that mark solely to evade liability in an infringement proceeding.
This reasoning reflects the broader equitable principle of estoppel. The doctrine prevents a party from taking contradictory positions in different forums where such inconsistency would prejudice another party or undermine the integrity of judicial proceedings.
The Court also considered the likelihood of confusion. The products involved belonged to the same commercial field, namely baby care and personal care goods. The defendants had adopted an identical expression rather than a merely similar one. Consequently, there existed a substantial possibility that consumers would assume a commercial connection between the competing products.
The Court recognised that modern consumers often rely upon trademarks as indicators of origin and quality. Where identical marks are used for identical goods, the probability of deception becomes significantly higher.
Another important aspect of the judgment is the Court’s emphasis on commercial honesty. Trademark law seeks to protect not only proprietary interests of traders but also consumer interests. Adoption of an identical mark by a competitor creates a strong inference of an intention to benefit from the reputation already generated by the prior user.
The Court therefore concluded that the plaintiff had established:
- A strong prima facie case.
- Balance of convenience in its favour.
- Likelihood of irreparable injury if the injunction were vacated.
Accordingly, the Court confirmed the interim injunction restraining the defendants from using the mark “PLANT POWERED” or any deceptively similar variation.
The decision contributes significantly to Indian trademark jurisprudence by clarifying that a defendant cannot simultaneously pursue registration of a mark and challenge its protectability as descriptive. Such contradictory conduct is legally impermissible and contrary to principles of fairness and consistency.
CONCLUSION
The Delhi High Court reaffirmed the fundamental principle that trademark rights cannot be defeated through inconsistent legal positions. A party that seeks registration of a trademark implicitly acknowledges the mark’s distinctive character and cannot later argue that it is merely descriptive to avoid an infringement claim.
The Court held that the defendants’ conduct was inconsistent with their own claim for registration and therefore disentitled them from raising the defence of descriptiveness. Considering the plaintiff’s prior use, goodwill, and the likelihood of consumer confusion arising from the use of an identical mark for identical goods, the Court upheld the injunction.
The judgment serves as an important precedent in Indian trademark law by strengthening the doctrine of estoppel and protecting the integrity of trademark registration and enforcement mechanisms.
