The Delhi High Court has observed that the well-known status of a mark does not justify its infringement on the plaintiff's trademark rights under Section 29 of the Act.

In that context, the Bench of Justice Pratibha M Singh observed that, "A perusal of the product listings of the Plaintiff would show that the products of the Plaintiff are a large range and the mere use of the mark ‘DIOR’ with the mark ‘JOY’ would not eliminate confusion. The mere fact that the mark DIOR is well known would not be sufficient for the Defendant to believe that it can impinge upon the rights of the Plaintiff as such use would also amount to infringement of the Plaintiff’s trademark under Section 29 of the Act. The clear impression that the Court has is that the mark ‘JOY’, prima facie has been adopted recently by the Defendant No.1."

Counsel Hemant Daswani, and others, appeared for the plaintiff, while Counsel Pooja Dodd, and others, appeared for the defendants.

The case involved a dispute over the trademark 'JOY' between the plaintiff, JOY Creators LLP, and defendant No.1, M/s. Parfums Christian Dior & Ors.

The plaintiff claimed statutory and common law rights in the 'JOY' mark and sought an injunction against the defendant from using the mark for perfumes. The plaintiff, having adopted the mark in 1988 for various cosmetic products, including perfumes, argued that it held registrations and copyrights for the 'JOY' mark and logo.

Defendant No.1, a principal company in cosmetics, had launched products with the mark 'JOY,' leading to the plaintiff filing the present suit. Despite the defendant's response claiming common trade use and coexistence, the court recognized the plaintiff as the prior user of the 'JOY' mark in India. The plaintiff's registrations and substantial market presence supported its claim, leading to the Court's consideration of the matter. Defendant No.2, Dior, Select Citywalk Retail Pvt. Ltd., was mentioned as having a retail sales agreement with defendant No.1.

Considering the fact that the Defendants may be having certain stock of the products in the market, while the Defendants may file reply to the injunction application after having prima facie considered the matter, the following directions were issued

1) Defendant No.1 shall file a detailed statement of account of all products sold under the mark ‘JOY' since inception through an affidavit.

2) Insofar as the existing stock, which may be available in all retail outlets and shops or online, is concerned, Defendant No.1 is free to exhaust the same. However, no fresh products shall be infused into the market by Defendant No.1 till hearing of the present injunction application.

The hearing for the injunction application is scheduled for 14th February 2024.

Cause Title: Joy Creators LLP vs Parfums Christian Dior & Ors.

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