Serpenti And Serpentine Phonetically Similar - Delhi HC Issues Interim Injunction In Bulgari's TM Infringement Suit
The Delhi High Court has granted an interim injunction against Notandas Gems Pvt Ltd- Defendant for using "SERPENTINE" as their mark for their high-end jewelry brand as it was prima facie infringing "SERPENTI", a trademark used by Bulgari for their high-end luxury jewelry.
A bench of Justice Hari Shankar was hearing an application under Order XXXIX, Rules 1 and 2 for grant of an interim injunction against the use of the mark Serpentine.
The peculiar facts, in this case, are that both Plaintiff and Defendant are engaged in the business of manufacturing high-end jewelry. Plaintiff alleged infringement of their trademark "SERPENTI", as Defendant was using SERPENTINE as their trademark.
The Plaintiff held the following trademarks registrations -
(i) Device mark "BVLGARI SERPENTI",
(ii) Device mark "SERPENTI HYPNOTIC",
(iii) Device mark "SERPENTI INCANTATI",
(iv) Device mark "SERPENTI SEDUTTORI" and
(v) Device mark of a "Snakehead"
The Counsel for the Plaintiff, Mr. Jayant Mehta contended that the mark "SERPENTI" has become indelibly identified with the Plaintiff's range of niche jewelry and has been in use by the plaintiff since the 1940s. He further contended Defendant has adopted a trade dress that is identical or, at the very least, deceptively similar to that of Plaintiff while manufacturing and marketing its jewelry. He also submitted the claim of the Plaintiff is not hit by Section 17 of the Trade Marks Act, 1999, which proscribes claiming of any exclusivity in respect of part of a composite mark as, in the registered marks of the plaintiff, "SERPENTI" constitutes the prominent part. He also submitted both marks share a phonetic similarity.
The Counsel for the Defendant, Ms. Rukhmini Bobde invoked Section 17 of the Trade Marks Act to contend that, as the Plaintiff's marks are composite in nature, it is not permissible for the Plaintiff to claim exclusivity in respect of "SERPENTI" alone, which constitutes a part of the composite mark. She also invoked Section 30(2) of the Trade Marks Act to contend that "serpentine" is merely the adjectival form of "serpent" and that, therefore, Plaintiff cannot claim exclusivity in respect thereof. She also contended the Court has no territorial jurisdiction to decide the matter as their exclusive store located in Delhi has been shut and mere interactivity of the website of the Defendant cannot justify invocation of the jurisdiction of this Court.
The issues that were dealt with by the Court were -
i) Whether the Plaint is bad for want of territorial jurisdiction.
ii) Whether a prima facie case of infringement of a trademark is made out.
iii) Whether a prima facie case of infringement of design is made out.
On the point of territorial jurisdiction, the Court relied on V. Guard Industries Ltd. v. Sukan Raj Jain, to note that once the Defendant has made its goods, or services, available for consideration, online, it has, prima facie purposefully availed the jurisdiction of Courts in all territories where such transactions can be carried out and consummated.
On the point of trademark infringement, the Court noted there is a clear phonetic similarity between the expressions "SERPENTI" and "SERPENTINE" and the mere slight phonetic distinction in the manner in which the concluding syllable of these two words cannot detract from the similarity between the two.
As far as the application of section 17 of the Trademarks Act is concerned, the Court noted that section 17 engrafts a proscription against claiming exclusivity over a part of a composite mark unless such part is separately registered by the plaintiff as a trademark.
The Court came to the conclusion that SERPENTI is the dominant mark in this case and prima facie Defendants have breached the Plaintiff's mark.
As far as design infringement is concerned the Court noted that innovation and novelty run through the scheme of the act and Defendant's design is different from Plaintiff's.Therefore, no infringement in this respect.
Accordingly, the Court issued an interim injunction restraining the Defendant, its individual proprietors/partners, agents, representatives, distributors, assigns, heirs, successors, stockists, and all other actions for and on their behalf from using the trademark "SERPENTINE" in respect of any of its products and dismissed the application.