Van Tibolli & Anr. vs. K. Srinivas Rao & Anr.

$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 20 February 2023
Pronounced on: 26 December 2023
+ CS(COMM) 339/2021 & I.A. 8970/2021
VAN TIBOLLI & ANR. ..... Plaintiffs
Through: Mr. Gaurav Barathi,
Ms.Muskan Arora and Mr. Vishal
Shrivastava, Advs.
versus
K. SRINIVAS RAO & ANR. ..... Defendants
Through: Ms. Joshini Tuli, Mr. Joginder
Tuli, Mr. Shrikant Sharma, Mr. Ishu Sharma
and Ms. Kirti Goyal, Advs.
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
JUDGMENT
% 26.12.2023
I.A. 8970/2021 (under Order XXXIX Rules 1 & 2 of the CPC)
1. The plaintiffs allege that the defendants’ mark “GK
WELLNESS” and their logos
and
infringe the
plaintiffs’ registered trade mark “GK HAIR”, within the meaning of
1
Section 29(2) of the Trade Marks Act, 1999. Accordingly, the
1
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of trade, a mark which because of –
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plaintiff seeks, by the present application, an interlocutory injunction
against the use by the defendants, in any manner, of the impugned
mark “GK WELLNESS” and the logos
and
.
The Plaint
2. Plaintiff 1 is a company incorporated in Luxembourg. Plaintiff
2 is the exclusive distributor, in India, of the products of Plaintiff 1.
3. Plaintiff 1 commenced selling its goods and products, under the
mark “Global Keratin”, in 2007. According to the plaint, in 2010,
Plaintiff 1 adopted and coined the mark “GK Hair” and the logo
.
“GK”, according to the plaintiffs, constitutes the prominent part of the
mark “GK Hair” as well as of the logo
. The mark “GK Hair”
and the logo
have, according to the plaint, acquired immense
reputation and goodwill over a period of time and have become source
identifiers of the plaintiffs. Under the mark “GK HAIR”, it is asserted
that the plaintiffs not only market hair care products but also provides
education to salon professionals regarding use of the products for

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nourishing of hair from the roots. The logo
is used for hair
tanning products, hair care shampoo, conditioner, hair colours,
hairspray, hair packs and other similar products. The plaintiffs claim
to have served over 5 lakh customers in India with more than 5000
salons. According to the plaint, Plaintiff 1 is one of the world’s largest
keratin-based haircare brands.
4. The word mark “GK HAIR” is registered in favour of Plaintiff 1
under the Trade Marks Act w.e.f. 23 June 2017 in Class 3 for “haircare
preparation in the form of oil and gel, hair shampoo and conditioners,
hair straightening preparation in the form of lotion and spray and hair
treatment preparation”; in Class 8 for “electrical hair curling and
straightening irons”; in Class 11 for “hand-held electric hairdryers”;
and in Class 21 for “hairbrushes”. Plaintiff 1 has licensed the use to
Plaintiff 2 which, therefore, has the exclusive right to use the said
marks for the goods in respect of which they are registered.
5. Plaintiff 1 claims to have entered the Indian market in 2015
through Plaintiff 2, its authorised exclusive distributor. Plaintiff 2
imports the products manufactured by Plaintiff 1 and displays them
for sale in several salons, supermarkets, retail stores and online
platforms, as well as on its website www.gkhair.co.in. Considerable
amounts are expended in publishing and advertising the plaintiffs “GK
HAIR” mark and products, with the amount expended during the year
2019-2020 alone aggregating over ₹ 9 crores. The plaintiffs also
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claims an annual sales turnover, from use of the “GK HAIR” mark, of
₹ 48,09,59,282/– in 2019-2020 alone.
6. The defendants are also manufacturing and selling haircare
products, similar to those of the plaintiff, under the impugned marks
“GK WELLNESS”,
and
. The plaintiffs claim to have
come to learn of this in April 2021. The plaintiffs condemn the
defendants’ marks as “blatant” and “slavish” imitations of the
plaintiffs’ registered trademark “GK HAIR” and the logo
. Apart
from their logo, the plaintiffs claim that the defendants have also
replicated the trade dress in which the plaintiffs pack and sell their
“GK HAIR Keratin Serum”, for the defendants’ own Keratin Serum.
The plaint provides the following comparison:

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The plaintiffs contend that the defendants’ “GK WELLNESS Keratin
Serum” adopts an appearance and a trade dress which are virtually
identical to that of the plaintiff’s Keratin Serum, with identical
placement of features on the phial. It is clear, according to the plaint,
that the defendants have made every effort to imitate and, thereby, ride
upon the plaintiffs’ established goodwill, while in the bargain
confusing consumers.
7. The plaintiffs contend that, even in respect of other products,
the manner in which the defendants use their logo, and the trade dress
that they adopt, are bound to result in confusion. Photographs of the
plaintiffs’ and defendants’ products have, for this purpose, being thus
provided in the plaint:
Plaintiffs’ products
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Defendants’ Products
The plaintiff contends that there is structural, visual and conceptual
similarity between the defendants’ “GK WELLNESS” and the
plaintiffs’ “GK HAIR” marks. The defendants have, moreover,
packed their products in containers, phials and bottles which replicate
the trade dress of the plaintiff’s corresponding containers, phials and
bottles. A consumer of average intelligence and imperfect recollection
is bound to confuse the defendants’ products with those of the
plaintiffs, and to confuse the rival marks as well. It is further alleged
that the domain IDs of the defendant, gkwellness.com and gk-
wellness.business.site also infringe the plaintiffs registered
trademarks, as “GK” is the most prominent part of the domain names.
8. Defendant 1 possesses a registration, under the Trade Marks
Act, for the device mark
, registered on 6 May 2021 w.e.f. 7
November 2020 in Class 3 for “bleaching preparations and other
substances for laundry use; cleaning; polishing; scouring and abrasive
preparations; soaps; perfumery, essential oils, cosmetics, hair lotions,
2
dentifrices”. Plaintiff 1 has filed an application under Section 57(2)

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of the Trade Marks Act, seeking cancellation of the registration. In
this connection, the plaintiffs submit, in the plaint, that, though an
opposition against Application 4736181 – which was the application
which subsequently proceeded to registration of the
device
mark in favour of Defendant 1 – was filed by the plaintiffs consequent
on the defendants’ application being published and advertised, the
opposition was not accepted by the Trade Marks Registry on the
ground that the statutory period of four months, with effect from the
date of publication of Defendant 1’s application in the Registrar of
Trade Marks, had already expired. The plaintiff submitted that, in so
doing, the Trade Marks Registry violated the order passed by the
3
Supreme Court in In re. Cognizance for Extension of Limitation ,
which extended all periods of limitation that came to an end during
the currency of the COVID-19 pandemic, till 28 February 2022.
Defendant 1’s
mark thus illegally proceeded to registration.
9. There are other applications filed by the defendant for
registration of the
mark, but they are all either under objection
from the Trade Marks Registry itself or under opposition by the
plaintiff, as a result of which none of the applications have proceeded
to registration. They do not impact the present application, one way
or the other.

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10. Inasmuch as (i) Defendant 1’s impugned “GK WELLNESS”
mark , and its associated logos
and
are deceptively
similar to the plaintiffs’ registered “GK HAIR” mark and the
plaintiffs’ logo
, (ii) the marks are used for identical products
and, therefore, cater to the same customer segment and (iii) the
products bearing the rival marks are available at the same counters
and at the same outlets, the three factors which constitute the “triple
identity test” which, when they coalesce, make out a prima facie case
of infringement are, it is submitted, present here. It is further
submitted that the adoption, by the defendants, of the “GK
WELLNESS” mark, with the obvious knowledge of the prior
existence of the plaintiffs’ “GK HAIR” mark and logo, with the
defendant’s logo being structured in a manner similar to that of the
Plaintiff, is clearly mala fid e and with a view to capitalise on the
plaintiff’s goodwill and reputation.
11. Alleging, therefore, that the defendants have indulged in
infringement, passing off and unfair competition, the plaintiffs have
instituted the present suit in this Court, seeking a decree of permanent
injunction restraining the defendants, as well as all others acting on
their behalf, from using the mark “GK WELLNESS” or the logos
and
, in connection with haircare preparations or any
associated goods or services.
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12. By the present application, the plaintiffs have sought grant of
the said reliefs at the interlocutory stage, as, according to the plaintiff,
it has a prima facie case in its favour and the principles of balance of
convenience and irreparable loss would also justify grant of
interlocutory injunction.
Written Statement
13. GK Wellness, submit the defendants by way of reply, is the
proprietorship of Defendant 1 K. Srinivas Rao, operating since 2019.
The device mark
stands registered in the name of Defendant 1
with effect from 7 November 2020. Despite advertisement and
publication of the application of Defendant 1 seeking registration of
the
mark, no opposition to registration was filed by the
plaintiffs within time. The mark, therefore, proceeded to registration.
Plaintiff 1 applied for cancellation of the registration of the
mark in favour of Defendant 1 only on 10 May 2021, and the
application is still pending. As the proprietor of a registered device
mark, Defendant 1 submits, in the written statement, that the benefit of
its use cannot be denied to the defendants.
14. Moreover, submit the defendants, “GK” is a generic
abbreviation over which no one can claim monopoly though, when
combined with another term or word, it may result in a composite
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mark entitled to protection. The case of the plaintiffs is, however,
predicated on the common “GK” factor in the rival marks of the
plaintiff and the defendant. Inasmuch as no one can be allowed to
appropriate, to herself or himself, the right to use a generic
abbreviation such as “GK”, the defendants submit that the plaintiff’s
grievance is without any basis. In this context, the defendants also
seek to point out that there are several registered trademarks which
start with “GK”, such as “GK Legal Solutions”, “GK Industries”, “GK
Little King”, “GK Management Services”, “GK Wood” and the like,
of which some are registered in Class 3. For the same reason, there
can be no injunction against the use, by the defendants, of the
gkwellness.com domain name, either. The defendants place reliance
on the judgment of the Supreme Court in Parakh Vanijya Pvt Ltd v.
4
Baroma Agro Products , in which the Supreme Court, while dealing
with the competing marks “MALABAR” and “MALABAR
BAROMA”, held that no monopoly could be claimed over the generic
word MALABAR.
15. Relying on the judgment of the Supreme Court in F. Hoffmann-
5
La Roche & Co. Ltd v. Geoffrey Manner & Co. (P) Ltd , the
defendants submit that the plaintiff could not dissect its mark and
claim exclusivity over the “GK” part thereof.
16. The defendants also dispute the plaintiffs’ contention that the
mass of the plaintiff and the defendant are similar. The logo
,
4
(2018) 16 SCC 632
5
(1969) 2 SCC 716
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it is asserted, has no similarity with the logo
, and there is no
likelihood of confusion between them. Moreover, the plaintiffs have
no registration for the logo
as a device mark, whereas the logo
is the registered device mark of Defendant 1.
17. The defendants also dispute the plaintiffs’ claim to user of the
Mark “GK HAIR” since 2015, pointing out that there is no evidence
on record to substantiate the submission.
18. The defendants claim that the “GK” part of the mark “GK
WELLNESS” represented the initials of Defendant 1’s father and
daughter, who were named Gopal and Komal respectively. It was not,
therefore, as if, by using the said abbreviation, the defendants were
seeking to ride on the plaintiffs’ goodwill. It is urged that, in fact, the
defendants have always sold their products as their own, and have
never sought to project their products as the products of the plaintiffs.
There is no similarity in appearance between the plaintiffs’ and
defendants’ products. Besides, the plaintiffs’ products are far more
expensive than the defendants’, with the products of the defendants
being sold at approximately one-tenth the price of the plaintiffs’
products. These assertions are sought to be supported on the basis of
the following tabular representation
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The vast difference in prices between the plaintiffs’ and defendants’
products, it is submitted, would itself minimise the chance of any
confusion in the public.
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19. The manner in which the products are used is also not the same.
For example, the plaintiffs’ hair serum contains juvexin, and can be
used as an individual product whereas the defendants’ hair serum is to
be used only after obtaining keratin treatment, and not individually.
20. Seen as whole marks, it is submitted that
and
are
not similar at all. The colours used in the two logos are different. The
letters in the two logos are in different fonts. The overall appearance
of the two logos is not similar. The plaintiffs’ logo is “GK HAIR”,
whereas the defendants’ is “GK WELLNESS”. The defendants have
never associated themselves with the plaintiffs, or held themselves out
as connected, in any manner, with the plaintiffs. No evidence to that
effect has been placed on record with the plaint.
21. As the defendants have never attempted to propagate their
products as those of the plaintiffs, it is submitted that no action for
passing off can lie.
22. It is also contended that Defendant 2 is not a necessary party to
this litigation. Defendant 2, it is submitted, merely manufactures
products as per orders placed by Defendant 1. The
mark is
registered in favour of Defendant 1.
Rival Submissions
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Submissions of Mr Gaurav Barathi for the plaintiffs
23. Mr. Barathi, appearing for the plaintiffs, reiterates the assertions
in the plaint. He submits that “GK” is the dominant part of the rival
marks. The manner in which the defendants have written “GK” in its
logo, he submits, is identical to the manner in which the
plaintiffs have written “GK” in
. “WELLNESS”, in the
defendant’s logo, he submits, is printed in such a microscopically
small font as to be virtually imperceptible, when compared to “GK”.
24. The plaintiffs, submits Mr. Barathi, have been using the “GK
HAIR” mark since 2015, and obtained registration for the mark on 23
June 2017. He submits that, while obtaining registration, it was
erroneously stated that registration was being sought on “proposed to
be used” basis. As against this, the registration of the
device
mark, in favour of Defendant 1, is of 6 May 2021. The rectification
proceedings filed by the plaintiffs, seeking cancellation of the said
registration, are pending.
25. Mr. Barathi also seeks to point out, from the photograph of an
outlet of the defendants at Bareilly, that the defendants are
prominently using the
logo even on signages outside the salon,
thus:
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Besides, on e-commerce websites, the plaintiffs and defendants
products figure side-by-side, enhancing the possibility of confusion.
He draws attention to the following screenshot reflecting the manner
in which the products are displayed on the Flipkart e-commerce page:
26. Mr. Barathi points out that the defendants do not dispute either
the plaintiffs’ sales turnover or the promotional expenses incurred by
the plaintiffs in promoting the “GK HAIR” brand.
27. The facts, therefore, submits Mr. Barathi, clearly justify grant of
interim injunction, as sought by the plaintiffs.
Submissions of Ms. Jyotsna Tuli for the defendants
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28. Ms Jyotsna Tuli, appearing for the defendants, also reiterates
the assertions contained in the written statement and submits that there
is no visual similarity between the
logo of the plaintiff and the
logo of the defendants. The colours used in the
logo
are different from those used by the plaintiff. The plaintiffs’ logo is in
monochrome. Defendant 1 is the proprietor of registration in the
logo, as a device mark.
29. The acronym “GK”, submits Ms. Tuli, is publici juris . No one
can claim a monopoly over such a generic acronym. She reiterates the
assertions, in the written statement, that the defendants use “GK” as an
acronym as G and K are the initial letters of the names of the father
and daughter of the proprietor of Defendant 1. In the rival marks “GK
HAIR” and “GK WELLNESS”, Ms Tuli submits that “GK”
constitutes the dominant part. As there can be no monopoly over the
acronym “GK”, she submits that the plaintiffs really have no
legitimate cause of action against the defendants. For the proposition
that no monopoly can be claimed over the generic acronym “GK”, Ms
Tuli cites, apart from F. Hoffmann la Roche , paras 14, 25, 26, 35 and
36 of the judgment of the Division Bench of this Court in SBL Ltd v.
6
Himalaya Drug Co. , paras 51 to 53, 57, 58, 65, 67, 73 and 74 of the
judgment of a learned Single Judge of this Court in Himalaya Drug
6
AIR 1998 Del 126 (DB)
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7
Co. v. SBL Ltd , paras 6 to 8 and 19 of the judgment of the Division
8
Bench in Marico Ltd v. Agro Tech Foods Ltd , paras 9 to 16 of the
judgment of a learned Single Judge in Bigtree Entertainment Pvt Ltd
9
v. Brain Seed Sportainment Pvt Ltd and paras 5 and 11 of the
judgment of a learned Single Judge of this Court in Superon
10
Schweisstechnik India Ltd v. Modi Hitech India Ltd . She submits
that the plaintiff has led no evidence to indicate that the acronym
“GK” has acquired any secondary meaning. In any event, that would
be a matter for trial, for which purpose Ms Tuli cites paras 67 to 68 of
the decision in Delhivery Pvt Ltd v. Treasure Vase Ventures Pvt
11
Ltd .
30. The abbreviation “GK”, she submits, is common to the trade.
She draws attention to the fact that, against the application of Plaintiff
1 for registration of the word mark “GK HAIR”, the Trade Marks
Registry, in its First Examination Report (FER), cited the mark
,
already registered prior in point of time in favour of M/s Guy Kremer
Products Ltd in Class 3 for “shampoo; conditioner; hairspray; hair
lotion; hair wax; hair putty; hair mousse; hair colourants; hair dye;
hair cream; shaving gel; skin balm; shower gel; moisturiser; soaps,
face wash preparations; facial scrubs; perfumery; eau de toilette ;
aftershave; essential oils”.
7
2010 (43) PTC 739 (Del)
8
174 (2010) DLT 279 (DB)
9
MANU/DE/5189/2017
10
MANU/DE/1319/2018
11
MANU/DE/1862/2020
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31. The defendants, submits Ms Tuli, have discontinued
manufacture and sale of their Hair Serum and are not, therefore, any
longer using the trade dress
with which the plaintiffs are
aggrieved. She undertakes, on behalf of her clients, that they would
not use the said trade dress pending disposal of the suit. Except for
the possible similarity in the trade dress of the Hair Serum of the
plaintiffs and defendants, Ms Tuli submits that there is no similarity
whatsoever either in the rival marks of the plaintiffs and the
defendants, or the trade dresses used by the defendants for their
products, when compared to the trade dresses of the plaintiffs’
products. She further submits that her clients are willing to
discontinue use of the trade dress
for their hair mask, as
well.
32. In view of Ms Tuli’s statement that the defendants have
discontinued the use of the
phial for their Hair Serum, I do not
propose to enter any observations in that regard. The defendants
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would, however, be bound by Ms Tuli’s undertaking that they would
not use the said trade dress, pending disposal of the suit.
33. Though the defendants contest the allegation of similarity
between the existing logo
and the plaintiffs’ logo
, Ms
Barathi submits that her clients are further willing to replace the
mark with the mark
with which, she submits, the
plaintiffs can have no legitimate grievance.
Mr. Barathi’s submissions in rejoinder
34. In rejoinder, Mr. Barathi cites, in response to the submission of
Ms Tuli that the acronym “GK” is common to the trade, para-12F of
the judgment of a learned Single Judge of this Court in Max
12
Healthcare Institute Ltd v. Sahrudya Health Care Pvt Ltd . The
mark, which was registered in favour of Guy Kremer Products
Pvt Ltd, he points out, was never renewed and has lapsed. In any
event, he submits that a mere reference to various marks, figuring on
the Register of Trade Marks, which include “GK” as a part, cannot
make out a case of the abbreviation “GK” being common to the trade.
He relies, for this purpose, on the well-known judgment of the
13
Division Bench of this Court in Pankaj Goel v. Dabur India Ltd ,
12
MANU/DE/2118/2019
13
2008 (38) PTC 49 (Del) (DB)
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14
apart from Indian Shaving Products Ltd v. Gift Pack , Automatic
15 16
Electric Co. v. R.K. Dhawan , P.M. Diesels v. S.M. Diesels and
17
Dish TV India Ltd v. Prasar Bharati . Mr. Barathi further submits,
relying on Coolways India v. Princo Air Conditioning and
18
Refrigeration , that the Court cannot be concerned with use of the
mark by third parties and is only concerned with the parties before it.
He also cites, in this context, Clinique Laboratories LLC v. Gufic
19
Ltd .
35. In response to Ms. Tuli’s contention that the plaintiffs could not
seek a monopoly over the generic acronym “GK”, Mr. Barathi cites
20
B.K. Engineering Co. v. U.B.H.I. Enterprises to contend that “GK”
is certainly entitled to the same treatment as “BK”. He also cites the
judgment of the Division Bench of this Court in Kirorimal Kashiram
21
Marketing & Agencies Pvt Ltd v. Shree Sita Chawal Udyog Mill .
36. The decisions cited by Ms Tuli, he submits, all cases in which
the parts which were common between the rival marks were
descriptive. As against this, “GK” is arbitrary and coined. Mr.
Barathi submits that, having itself applied for, and obtained,
registration for the “GK WELLNESS” device mark, the defendants
are estopped from contending to the contrary.
14
1998 (18) PTC 698 (Del)
15
77 (1999) DLT 292
16
AIR 1994 Del 264
17
262 (2019) DLT 345
18
1993 (1) ALR 40
19
2009 (41) PTC 41 (Del)
20
27 (1985) DLT 120 (DB)
21
MANU/DE/2307/2010
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Analysis
The plea of registration
37. One of the defendants’ primary contentions is that the
mark is registered in favour of Defendant 1 and that, therefore, no
action for infringement can lie against the said mark.
38. I am unable to accept the said submission, for the simple reason
that the registration of the
mark, in favour of Defendant 1, was
granted in a manner contrary to the law. Defendant 1 applied for
registration of the
mark on on 23 February 2019. The
application was advertised under Section 20 of the Trade Marks Act.
Section 21 provided for any opposition, to the registration of the
mark, being filed within four months of advertisement. That period,
however, expired during the currency of the COVID-19 pandemic, at
which time all periods of limitation, under all statutes, for all
purposes, stood extended by orders of the Supreme Court in In re.
Cognizance for Extension of Limitation. The extension continued till
28 February 2022. Before that date, the plaintiff filed its opposition,
under Section 21, to the registration of the
mark in favour of
Defendant 1. The opposition was rejected as having been filed
beyond the statutory period of four months envisaged in Section
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21(1). The decision was clearly illegal, as the period of limitation
stood extended till 28 February 2022 by the Supreme Court. The
mark was granted registration, therefore, without considering
the opposition of the plaintiff, which was filed within time. The grant
of registration was itself, therefore, prima facie invalid ab initio .
39. No right can flow, in law, from an illegal act. Having obtained
registration in a manner which contravenes the statutory scheme, the
registrant cannot claim, on the basis of the said registration, either the
exclusive right to use the mark, or a protection against any
infringement action, as would otherwise be available under Section
22
30(2)(e) of the Trade Marks Act.
23
40. Section 31(1) states that the registration of a trademark shall
be treated as prima facie evidence of its validity. The use of the words
“ prima facie ” is significant. The legislature has consciously provided
scope for the validity of the mark to be questioned, despite its
registration. In such an event, the registration would operate as prima
facie evidence of the validity of the mark, which means that the onus
would shift to the challenger, who challenges the validity of the
registered mark, to prove that the registration is invalid. That onus
22
(2) A registered trade mark is not infringed where –

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stands discharged in the present case, for the reasons already stated
hereinabove. Section 31(1) cannot, therefore, come to the rescue of
the defendants.
41. There are three more reasons why the registration of the
mark in favour of Defendant 1 cannot enure to the benefit of the
defendants in their defence against the plaintiffs’ allegation of
infringement.
42. Firstly, a coordinate Single Bench of this Court has, in its
decision in Dr Reddy’s Laboratories Ltd v. Controller General of
24
Patents Designs and Trademarks for the reasons already stated in
the foregoing paragraphs, directed that registrations granted to
applicants against whose applications oppositions were filed before
30 May 2022 would stand suspended till the oppositions were decided
by the office of the Registry of Trade Marks . That has yet to happen in
the present case.
43. Secondly, the plaintiffs, whose opposition to the application of
Defendant 1 for registration of the
mark was illegally not
taken into consideration, cannot be foreclosed from pleading
infringement merely on the ground that, ignoring the plaintiffs’
opposition, the
mark illegally proceeded to registration.
24
(2022) 90 PTC 235
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44. Thirdly, of all the goods and services in respect of which the
mark stands registered in favour of Defendant 1, the only
goods having any connection with the manner in which the defendants
use the said mark, insofar as we are concerned, is “hair lotion”. It is
not, prima facie , possible to include, within the ambit of the
expression “hair lotion”, every kind of preparation for hair treatment.
Significantly, in sharp contrast, the plaintiffs’ registration for the mark
“GK HAIR” covers “hair care preparation in the form of oil and gel,
hair shampoo and conditioners, hair straightening preparation in the
form of lotion and spray and hair treatment preparation”. A
registration granted only for “hair lotion” cannot be treated as
extending to all kinds of hair care products. Even if, therefore, the
defendants’ registration were to be taken into account, it would only
protect the use, by the defendants, of the impugned
mark for
hair lotions, and for no other products.
45. I am, therefore, of the view that the defendants cannot, in the
peculiar facts of the present case, plead registration of the
mark as a defence to the allegation of infringement, laid by the
plaintiffs.
Do the defendants’ marks infringe the plaintiffs’?
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46. Infringement, under Section 29 of the Trade Marks Act, can
only be of a registered trademark. The validity of the registration is
not a relevant consideration for Section 29. However, if infringement
is found to exist within the meaning of Section 29, it is only if the
registration is valid that the proprietor of the mark which is infringed
25
can obtain relief against infringement under Section 28(1) , as
validity of the registration is a precondition to obtain relief against
infringement.
47. Section 29(2)(b) envisages infringement as occurring where the
defendant’s mark is similar to that of the plaintiff and both marks are
used in respect of goods or services which are identical or similar. If,
owing to these two conditions coexisting, there is a likelihood of
confusion in the public or a likelihood of association between the
marks in the minds of the public, the defendant’s mark is said to
infringe the mark of the plaintiff.
48. Plaintiff 1, in the present case, is the proprietor of the
registered word mark “GK HAIR”. The plaintiffs have no device
mark registered in their name. What is to be seen, therefore, is
whether the word mark “GK HAIR” is infringed by the defendants
“GK WELLNESS” word mark or the logo
.

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26
49. Section 17(2)(a) of the Trade Marks Act clearly proscribes any
claim of exclusivity in a part of a composite mark, where that part is
not separately registered as a trade mark. The plaintiffs’ mark “GK
HAIR” is a composite mark, composed of “GK” and “HAIR”. The
plaintiff has no registration for “GK” per se. Section 17(2)(a),
therefore, read as it is, would not permit the plaintiff to plead
infringement by claiming exclusivity for the “GK” part of its “GK
HAIR” Mark. This is also referred to as the “anti-dissection rule”.
50. The plaintiffs’ and defendants’ marks have, therefore, to be
compared as wholes. In other words, the whole mark of the plaintiffs
has to be compared with the whole mark of the defendants to ascertain
whether there is infringement. In doing so, however, it is permissible,
where a part of the plaintiffs’ mark constitutes its dominant feature, to
take that fact into consideration while comparing the two marks as
whole marks. By doing so, one does not breach the anti-dissection
rule or Section 17(2)(a), as the comparison is still between the two
marks as whole marks. The possibility of likelihood of confusion, or
of association, for the purposes of Section 29(2)(b), has to be assessed
from the perspective of a consumer of average intelligence and

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27
imperfect recollection. Also, the Court has to assess the possibility of
“initial interest confusion”. In other words, what has to be seen is the
effect, on the consumer of average intelligence and imperfect
recollection, of the defendant’s mark, if such a consumer has,
sometime earlier, seen the plaintiff’s mark. The marks are not to be
placed side-by-side. If the consumer of average intelligence and
imperfect recollection, who has earlier seen the plaintiff’s mark and, at
a later point of time, comes across the defendant’s mark, is
immediately inclined to ponder – or to wonder – whether he has seen
the mark, or associated mark, earlier, the defendants mark, even for
that sole reason, infringes the plaintiffs. It is the impression on the
mind of the average consumer at the initial point when he sees the
defendant’s mark which matters. This is often referred to as “initial
interest confusion”. The human mind tends to compartmentalise.
Certain aspects impress themselves more prominently on the psyche
of the individual than others. Where a part of a mark is dominant, that
part registers most prominently or the psyche of the mind of the
consumer of average intelligence and imperfect recollection, when he
first sees the mark. Thus, though a consumer, who had first seen the
plaintiff’s mark and later sees the defendant’s mark compares the 2
marks as whole marks, even so, while so comparing the marks, the
consumer recollects that feature of the marks which is dominant,
where such a dominant feature exists. It is for this reason that, in its
27
Refer Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449; Corn Products Refining Co. v.
Shangrila Food Products, (1960) 1 SCR 968; Cadila Health Care v. Cadila Pharmaceuticals, (2001) 5
SCC 73
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judgment in South India Beverages Pvt. Ltd. v. General Mills
28
Marketing Inc. , a Division Bench of this Court has held as under:

28
(2022) 90 PTC 235 (Del-DB)
29 th
994 F.2d 1359, 1362 (9 Cir. 1993)
30
174 F. Supp. 2d 718, 725 (M.D. Tenn. 2001)
31
211 (2014) DLT 296
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32
380 F.3d 1340
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33
405 F. Supp. 530 (1975)
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Clearly, the defining and dominant feature of each mark, which
immediately impresses itself on the consumer psyche, is “GK”.
Applying the South India Beverages principle, if, owing to the
common “GK” part of the plaintiffs’ and defendants’ marks, there is a
likelihood of confusion or association in the minds of the public, it
would be possible to hold that the defendants’ mark infringes the
plaintiffs.
52. But is there such a likelihood?
53. Mr. Barathi placed reliance on the judgment of the Division
Bench of this Court in B.K. Engineering . That was the case in which
the plaintiff B.K. Engineering Co. Ltd (“BKECL”) was using “BK” as
its house mark. Though the case was one of passing off, as,
apparently, BKECL did not possess a registration for the trade mark
“BK”, the requirement of likelihood of confusion, as a result of the
coexistence of the rival marks, is common to infringement and passing
off. The respondent-defendant UBHI Enterprises (“UBHI”) was using
the mark “BK-81”. BKECL alleged that, by use of the deceptively
similar mark BK-81, UBHI was passing off its goods as those of
BKECL. BKECL instituted a suit against UBHI, seeking permanent
injunction against UBHI using the mark “BK-81”. The suit was
accompanied by an application for interlocutory injunction. The
application was rejected by a learned Single Judge of this Court.
BKECL appealed to the Division Bench. That appeal came to be
decided by the judgment under discussion.
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54. UBHI sought to contend, before the Division Bench, that the
“81” suffix was sufficient to distinguish between BKECL’s and
UBHI’s marks. As in the present case, UBHI also sought to explain
the use, by it, of “BK” as the initials of the name of the mother of the
proprietor of UBHI, which was Balwant Kaur. The Division Bench
held, unexceptionably, that, even if “BK” had been coined, by UBHI,
from the initials of Balwant Kaur’s name, that would not permit UBHI
to use a mark which infringed the mark of another.

34
(1915) 32 RPC 273
35
(1901) AC 217, 223-224
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altered name is likely to mislead. The defendants' product will
deceive people into thinking that their goods are the goods of the
plaintiffs.
*
Unfair competition
18. The setting of the law of passing-off is competition
between traders. There is a real risk of injury to the reputation of
the plaintiffs if the defendants are not prevented from selling cycle
bells under the name “B.K.-81”. This is a misappropriation of
plaintiffs' name. “B.K.-81” is strongly suggestive of association
with the plaintiffs, or some licence or endorsement from them.
This is called “misappropriation of business reputation”. This is a
conduct which will come into the new, generalised idea of “unfair
competition”.
*
24. Take this very case. “B.K.” is the house name of the
plaintiffs, the producers of the article, Crown bell, that has won
popular favour. The defendants have attached this name to the
article they produce, “B.K. 81” bell. The probability of deception
and confusion is certainly there. “B.K.-81” conveys “a false
impression, has something of a faculty ring about it; it is not
sterling coin; it has no right to the genuine stamp and impress of
36
truth.” ( Reddaway v. Banham pp. 218-214) per Lord
Macnaghten.
*
29. Both firms are engaged in a “common field of activity”.
There is a real possibility that the public to which the defendants
address their wares would draw the association with the plaintiffs
of which they complain.
*
32. The plaintiffs, in my opinion, have prima facie shown that
they are likely to sustain injury by defendants' misuse of their
“goodwill”. The crux of the case is that “B.K.” is a word or device
which is distinctive of plaintiffs' goods. It is a distinctive indicium
of the plaintiffs' bells. The defendants have misappropriated this
indicium which is distinctive of the goods manufactured by the
36
(1896) AC 199
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plaintiffs. It is not essential that the plaintiff be identified by name,
provided the mark is recognised as indicating the origin of the
goods or services and the plaintiff is in fact that source.
37
( Powell v. Birmingham Vinegar Brewery Co. Ltd. ). A message
is conveyed by a memorable word or name to the purchasing
public that the goods are of the plaintiff. So the potential purchaser
is misled and deceived if there is misappropriation of name,
symbol or slogan by a competitor.
*
34. “B.K.” is the manufacturer's mark of the plaintiffs. This is
seen by the public. In a “common field of activity” it is likely to
deceive prospective purchaser if the defendants are allowed to
market their product under the mark “B.K.-81”. There is likelihood
of diversion of trade from the plaintiffs to the defendants. This is
an injury against which an injunction is directed in the action of
passing off. The plaintiffs can well complain that their goodwill
suffers from an “injurious association” with the defendants' goods.
38
In Harrods Ltd. v. R. Harood Ltd. , the public thought that the
great, departmental store had stopped to money lending. An action
of passing off lies if one trader represents his business as being that
of or connected with that of, the plaintiff, as is the case here. There
is a false suggestion by one competing trader in the same line of
business that his business is connected with that of the other. This,
I apprehend, would damage the reputation and thus the goodwill of
the plaintiffs' business.
*
39. We were referred to telephone directory to show that
“B.K.” is a business name used by hundreds of people. I am not
impressed by this argument. It must be remembered that here we
are concerned with a case where both firms are engaged in a
“common field of activity”. The question arises whether the
defendants are misleading the public into buying their goods in the
belief that they emanated from the plaintiffs. Most defendants in
these cases start business fully well knowing of the fame of the
plaintiff's name and mark [ Equity Doctorines and Remedies by
R.P. Meagher (1984) 2nd ed. P. 857]. They want to cash in on the
popularity of the plaintiffs product. Whether the goods are inferior
or superior every infringement is, in a way, a tribute to the
excellence of the plaintiff's wares. It is a measure of the popularity
of plaintiff's goods.
37
1896 (2) Ch. 54 (21)
38
(1924) 41 RPC 74 (22)
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39
17 RPC 628 at 635
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56. The rival marks in the present case are “GK HAIR”, of the
plaintiff, and “GK WELLNESS”, of the defendants. “GK” is,
unquestionably, the dominant part of both the marks. This is, indeed,
apparent even from the logos used by the plaintiffs and defendants, in
which “GK” is in sharp relief in the foreground, with the descriptors
“HAIR” and “WELLNESS” relegated to a disproportionately small
print towards the base of the logo. (Indeed, if I were to use, for the
plaintiffs’ and defendants’ logos, smaller print than the one which I
am using, I doubt if the words “HAIR” and “WELLNESS” would at
all be readable.)
57. The acronym “GK” is obviously not descriptive of the services
provided by the plaintiffs or the defendants. Apropos hair care
solutions, it is prima facie inventive and arbitrary.
58. Given the fact that the marks “GK HAIR” and “GK
WELLNESS” are both used for hair care solutions, there is, prima
facie , every likelihood of a consumer being confused, or at least
presuming an association between the two marks. This possibility is
exacerbated by the likeness in the logos of the defendants and the
plaintiffs, which emphasise the “GK” and relegate the words “HAIR”
and “WELLNESS” to tiny letters, towards the base of the logo. The
consumer would ordinarily see the products of the plaintiffs and
defendants on the shelves of the outlets where they are displayed. At
the normal distance at which consumers view products on the shelves
of stores, it would be extremely difficult to read the words “HAIR” or
“WELLNESS”, as printed on the face of the products of the plaintiffs
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and defendants. The letters “GK” stand out. The marks are used for
identical products, which are available at common outlets and cater to
the same consumer segment. These three factors, if present, are
themselves a prima facie indicator of the existence of likelihood of
40
confusion in the mind of the average consumer.
59. Thus, as (i) the marks “GK HAIR” and “GK WELLNESS” are
similar to each other, (ii) they are used for identical products, catering
to the same consumers and available at the same outlets and (iii) there
is prima facie likelihood of confusion in the mind of the consumer, or
of the consumer believing an association between the marks as a result
of these factors, the three ingredients which are required to
cumulatively be satisfied for infringement, within the meaning of
Section 29(2)(b) of the Trade Marks Act to be found to exist, are
satisfied in the present case.
60. The judgment in F. Hoffmann La Roche is clearly
distinguishable as, in that case, the “VIT” suffix in the rival marks
“PROTOVIT” and “DROPOVIT” was found to be descriptive of the
products in respect of which the marks were used, which were vitamin
preparations. Besides, the Supreme Court specifically noted, in para 8
of the report (in SCC), that the affidavits filed by the appellant before
it indicated that the suffix “VIT” was a well-known common
abbreviation used in the pharmaceutical trade to denote vitamin
preparations. Similarly, in SBL , the common “LIV” suffix/prefix was
40
Refer Mex Switchgears Pvt Ltd v. Omex Cables Industries, (2018) 76 PTC 209 (Del-DB)
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found to be common to the trade for liver preparations and, in Marico ,
the mark “Sugar Free” was found to be “a common descriptive
adjective”. The acronym “GK” cannot, however, aspire to to any
such status in the hair care preparations trade.
61. Thus, prima facie , the defendants’ mark “GK WELLNESS”
infringes the plaintiffs’ registered trademark “GK HAIR”.
Section 17(2)(b) – The “common to the trade” defence
62. Section 17(2)(b) disallows any claim to exclusivity, by the
proprietor of a registered trademark, in any matter, contained in the
mark, which is common to the trade or is otherwise not distinctive.
63. Ms. Tuli sought to contend that the acronym “GK” is common
to the trade and is otherwise not distinctive and, therefore, the
plaintiffs cannot claim any exclusivity over the said acronym.
64. In support of the contention, however, no substantial evidence
has been produced by the defendants. The ingredients which are
required to be established for a plea that a mark, or a part of a mark, is
common to the trade, to succeed are, by now, well settled. In Pankaj
Goel , the rival marks, with which the Division Bench of this Court
was seized, were HAJMOLA and SATMOLA. It was sought to be
contended, by the defendant in that case, that the suffix “MOLA” was
common to the trade and that, therefore, no exclusivity could be
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41
(1970) 3 SCC 665 : AIR 1971 SC 898
42
(1989) 7 PTC 14
43
(2004) 29 PTC 435
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Entitlement of plaintiff to relief against infringement – Section 28(1)
67. Once, thus, it is found, prima facie , that infringement, within
the meaning of Section 29, exists, the Court has to proceed backwards
to Section 28(1). This is because Section 28(1) envisages, among the
rights available consequent on registration of a trademark, the right to
remedy against infringement, provided the registration is valid. Thus,
while validity of the registration of the plaintiff’s mark is not an
imperative for infringement, by the defendant’s mark, to be found to
exist, it is the sine qua non for the plaintiff to obtain relief against
such infringement.
68. The validity of the registration of the plaintiffs’ mark “GK
HAIR” is not in dispute. Indeed, the defendants, who themselves seek
to rely on the registration of the
mark in favour of Defendant
1, are estopped from questioning the validity of the “GK HAIR” Mark
of the plaintiff. The goose-and-gander principle applies.
69. As the proprietor of a validly registered trademark “GK HAIR”,
the plaintiffs are entitled to relief against infringement of the mark, in
view of Section 28(1).
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71. The considerations of balance of convenience and irreparable
loss would also justify grant of interlocutory injunction in the present
case. The balance of convenience is clearly in favour of the plaintiffs,
as the defendants are using an infringing mark, and, while grant of
injunction would only require the defendants not to use a mark of
which “GK” is a part, refusal of injunction would result in the plaintiff
having to tolerate continued infringement. Refusal of injunction
would also be contrary to public interest, as there would be likelihood
of further confusion, in the public, between the products of the
defendants and the plaintiffs as a consequence of similarity of the
marks used by them.
44
(2004) 3 SCC 90
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72. The plaintiffs are entitled, therefore, to an injunction,
restraining the defendants from using the mark “GK WELLNESS” in
any form, in connection with hair care solutions or any other goods or
services dealing with hair care or any allied enterprise, pending
disposal of the present suit.
73. I have not deemed it necessary to refer to decisions of learned
Single Judges of this Court cited by either side as they are merely
prima facie opinions at the interim stage – as is this – and cannot,
therefore, claim precedential status. At the highest, such decisions
would be relevant if they involve marks which are before this Court in
the present case, in which case consistency would require this Court to
take stock of the decision. They, however, do not.
Conclusion
74. The defendants, as well as all others acting on their behalf,
shall, consequently, stand restrained, pending disposal of the present
suit, from using the mark “GK WELLNESS” in any form, including
the logos
,
, any domain name of which “gkwellness”
is a part, or any other mark which is confusingly or deceptively
similar to the plaintiffs’ registered trade mark “GK HAIR”, or for any
goods or services dealing with hair care or hair treatment, or any other
goods or services which are allied or cognate therewith.
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75. The application stands allowed accordingly.
C.HARI SHANKAR, J
DECEMBER 26, 2023
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