Rspl Limited vs. Agarwal Home Products & Anr.

2023:DHC:3586
$~6
* IN THE HIGH COURT OF DELHI AT NEW DELHI
rd
Date of Decision: 03 May, 2023

+ C.O. (COMM.IPD-TM) 142/2023 & I.As. 7528-7530/2023

RSPL LIMITED ..... Petitioner
Through: Mr. S. K. Bansal, Mr. Pankaj Kumar
and Mr. Ajay Amitabh Suman,
Advocates.

versus

AGARWAL HOME PRODUCTS & ANR. ..... Respondents
Through: Mr. Ripu Daman Bhardwaj, CGSC
with Mr. Gokul Sharma, Advocate
with Mr. Kushagra Kumar, G.P. for
R-2.

CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
J U D G M E NT
SANJEEV NARULA, J. ( Oral ):
RIEF ACTS
B F
1. RSPL Ltd., formerly known as Rohit Surfactants Pvt. Ltd., is a
diversified conglomerate in the Fast-Moving Consumer Goods (FMCG)
industry. The company specializes in manufacturing detergent powders and
cakes, which are marketed under the brand names ‘GHARI’ and ‘GHADI’.
RSPL Ltd. was incorporated in 1988 and reconstituted as a public limited
company in August 2011. They hold several device and label mark
registrations, which are detailed in paragraphs No. 11 (vii) and (viii) of the
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petition [hereinafter collectively “ Petitioner's marks ”].
2. In paragraph No. 11 (vii) of the petition, Petitioner has presented label
mark registrations that they assert are pertinent to the present proceedings.
These registrations, which exclusively consist of label marks, are extracted
hereinbelow:

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3. Petitioner is aggrieved with the registration of word mark
‘AGRAGHADIYAL’ (Trade Mark No. 4398088 under Class-03) for
“ DETERGENT POWDER & DETERGENT CAKE, LIQUID TOILET
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CLEANER, CLEANING, POLISHING, SCOURING AND ABRASIVE
PREPARATIONS AND SOAPS INCLUDED IN CLASS 3 ” [hereinafter
“ impugned mark ”].
P ETITIONER ’ S C ONTENTIONS
4. Mr. S.K. Bansal, counsel for Petitioner, argues that registration of the
impugned mark is liable to be cancelled on the following grounds:
4.1 The impugned mark is deceptively and confusingly similar to
Petitioner’s mark ‘
’ (Trade Mark No. 809474), which has
been declared to be a ‘well-known trademark’ within the meaning of Section
2(1)( zg ) r/w Section 11(6) of the Trade Marks Act, 1999 [hereinafter “ the
1
Act ”].
4.2. The impugned mark resembles Petitioner’s mark ‘GHADI’ and in
absence of cancellation, having both such marks, for the same class of
goods/ in the same market, is likely to decieve or cause confusion to public
at large.
4.3. The mark ‘AGRAGHADIYAL’ in question bears structural, visual,
and phonetic similarities to the mark ‘GHADI’, which can potentially
mislead unsuspecting consumers into believing that they are purchasing
products from Petitioner or that there is some form of association or
endorsement between Respondent No. 1 and Petitioner’s well-known brand.
4.4. Meaning of ‘GHADIYAL’, which forms part of the impugned mark,
is same as ‘GHADI’.

1 th
A notification, to that effect, has been published in Trade Marks Journal No. 1942 dated 24 February,
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4.5. Adoption of the impugned mark is solely with the intent to come close
to Petitioner’s marks and create unauthorized association with Petitioner’s
brand name and cachet.
4.6. Respondent No. 1, in addition to registering the impugned mark, has
also applied for the registration of a device mark– ‘
’ (Trade
Mark No. 5554653 under Class-03) on a ‘ proposed to be used ’ basis.
Petitioner has opposed this registration. Notably, the application for the
device mark identifies the impugned (word) mark as an Associated
Trademark.
4.7. The impugned mark and the afore-extracted proposed to be used label
mark in relation to goods and business is identical with and deceptively
similar to Petitioner’s marks in each and every respect including
phonetically, visually, structurally and its basic idea and its features. Side-
by-side comparison of competing marks is culled down below:

4.8. Respondent No. 1 was well-aware of Petitioner’s registered
trademarks/ label, which are unique and arbitrary, along with their prior use
and established reputation. Despite this knowledge, Respondent No. 1 has
knowingly adopted and intends to use the impugned mark in a fraudulent

2020 at serial No. 17
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manner, with the intention of unjustly benefitting from and trading on the
reputation built by Petitioner.
4.9. Registration of the impugned mark is violative of Sections 9, 11, 12
and 18 and other provisions of the Act. Reliance is placed on the decision of
the Supreme Court in K.R. Chinna Krishna Chettiar v. Shri Ambal and Co.,
2 3
Madras and Anr. , this Court in M/s Hitachi Ltd. v. Ajay Kumar Aggarwal ,
Shree Nath Heritage Liquor Pvt. Ltd. v. M/s Allied Blenders & Distillers
4 5
Pvt. Ltd. , Sunil Mittal and Anr. v. Darzi On Call , Cadbury India Ltd. and
6
Ors. v. Neeraj Food Products , and High Court of Judicature at Bombay in
7
Centron Industrial Alliance Ltd. v. Gillette U.K. Ltd .
NALYSIS
A
5. The Court has patiently heard Mr. Bansal and also examined the case
laws cited by him, but remains unconvinced. First and foremost, it is
important to clarify that the subject matter of present petition does not
pertain to device mark, namely ‘
’, which has been presently
“Accepted and Advertised” by the Trade Marks Registry and has been
opposed by Petitioner. Therefore, no opinion is expressed regarding the
aforementioned device mark, and our focus solely lies on the impugned
word mark - 'AGRAGHADIYAL'.

2
(1969) 2 SCC 131.
3
1995 SCC OnLine Del 268.
4
2015 SCC OnLine Del 10164.
5
2017 SCC OnLine Del 7934.
6
2007 SCC OnLine Del 841.
7
1986 SCC OnLine Bom 350.
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6. As noted above, Petitioner’s device mark ‘
’ has been
declared to be a ‘well-known trademark’. This device contains the word
‘ घड़ी ’ (In english: GHADI), which is the most prominent feature. However,
upon careful comparison of Petitioner’s marks (labels/ device marks) with
the impugned mark ‘AGRAGHADIYAL’, the Court does not identify any
similarities. The Petitioner’s claim for cancellation/ rectification, based on
deceptive similarity under Section 11 of the Act, is unfounded. The word
‘GHADI’, commonly used in the Hindi language, means ‘clock’. But, the
impugned mark is a combination of two words: ‘AGRA’, referring to a city
in Uttar Pradesh, India, and ‘GHADIYAL’, which translates to ‘crocodile’
in Hindi. When comparing the two marks: ‘GHADI’ and
‘AGRAGHADIYAL’, it is evident that the word ‘GHADI’ appears in both
marks, and they are used for identical goods. However, the similarity ends
there. In the impugned mark, ‘GHADI’ is part of the word ‘GHADIYAL’.
Under trademark law, the comparison has to be on the basis of the overall
impression created by marks, including visual, phonetic, and conceptual
aspects. In terms of visual and phonetic similarity, the two marks are
completely dissimilar. They have distinct spellings and pronunciations.
Conceptually, again, the similarity is not there as ‘GHADI’ refers to ‘clock’
and ‘GHADIYAL’ refers to ‘crocodile’. Further, the addition of the prefix
‘AGRA’ in ‘AGRAGHADIYAL’ changes the meaning and overall
impression of the impugned mark. Thus, the Court is unable to perceive that
the impugned mark is likely to cause confusion amongst the consumers
regarding the origin of the goods or services. Although, Mr. Bansal has
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argued that the word ‘GHADIYAL’ also refers to ‘clock’ in Hindi
dictionary, however, that also does not bring any similarity conceptually.
There is a direct association between ‘GHADIYAL’ and ‘AGRA’ –
National Chambal Sanctuary ( also known as National Chambal Ghadiyal
Wildlife Sanctuary) is located on the Chambal River and spread near Agra
and Etawah district and tripoint of Rajasthan, Madhya Pradesh, and Uttar
Pradesh. This long, narrow tri-state protected eco-reserve is co-administered
by the above three states for protection of the critically endangered ‘gharial’/
‘ghadiyal’. Thus, the two words together (‘AGRA’ and ‘GHADIYAL’) can
only draw reference to ‘ghadiyal’ which symbolizes/ means ‘crocodile’.
7. Section 11 of the Act provides for grounds of refusal of registration of
a trademark. One of the grounds includes the ground of the trademark being
identical or deceptively similar to an existing trademark for the same or
similar goods or services. Here, Petitioner may argue that the two marks are
being used for similar goods, however, as mentioned earlier, the marks are
distinct in their overall impression, sound and meaning and there is no
likelihood of confusion between the two. The addition of the word ‘AGRA’
and the letters ‘YAL’ after the word ‘GHADI’, change the overall
impression for the impugned mark. It must also be noted that Respondent
No. 1 has associated the impugned mark with its label/ device mark –
‘
’, which is the subject matter of the Trade Mark No.
5554653 under Class-03. In the said device mark, though the manner in
which the word ‘GHADIYAL’ is broken-down into two (‘GHADI’ and
‘YAL’). If the Petitioner finds the said label/ device mark objectionable, the
remedy lies in impugning the said device mark and not the impugned (word)
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mark.
8. Principles of law cited in the case laws noted above, cannot be
disputed, however, none of them come to the aid of Petitioner. The marks
which were subject matter in each of the case, are different and therefore,
there is no basis for Petitioner to apply the same to the facts of the present
case. The factual matrix of the said decisions relied on by Mr. Bansal are
discussed hereinbelow:
8.1. In Centron Industrial (supra), the impugned marks ‘7-Up’ and ‘7
BAJE’ were found to be infringing Plaintiff’s mark ‘7 O’CLOCK’ on the
ground that they conveyed the same idea as Plaintiff’s mark i.e., “to get up
at 7 in the morning and shave with the blade”. In the instant case, the
impugned mark ‘AGRAGHADIYAL’ does not convey the same meaning or
idea as Petitioner’s mark ‘GHADI’, and thus, the said judgment is
distinguishable.
8.2. In the Hitachi Ltd. (supra) case, the court held that although Plaintiff’s
mark (‘HITACHI’) and the Defendant’s mark (‘HITAISHI’) were
represented in different scripts, they exhibited a noticeable phonetic
similarity. By applying the “consumer imperfect recollection” test, Court
determined that the pronounced phonetic similarity would make it
challenging for ordinary consumers to discern the finer differences between
the two trademarks, despite their distinct meanings and concepts. In contrast,
the impugned mark in the present case does not possess a similar level of
phonetic similarity to Petitioner’s ‘GHADI’ marks, making the judgment
inapplicable.
8.3. In the Shree Nath Heritage (supra) case, the court examined the
impugned marks (‘COLLECTOR'S CHOICE’ and ‘OFFICER'S SPECIAL’)
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and observed that they conveyed a similar meaning, which pertained to an
official position or persons holding office. Although the terms “Collector”
and “Officer” had phonetic differences, the underlying ideas they conveyed
indicated a potential likelihood of confusion. Similarly, the words “Choice”
and “Special” refer to something that is ‘specially selected’ or ‘held in
particular value’ respectively, denoting comparable meanings. However, in
the present dispute between ‘GHADI’ and ‘AGRAGHADIYAL’, there is no
similarity in terms of meaning or relationship as hypernyms or hyponyms.
Therefore, the decision in the Shree Nath Heritage case cannot be
considered a binding precedent in the present matter.
8.4. In the Cadbury India (supra) case, the Court analyzed the disputed
marks (‘JAMES’ or ‘JAMES BOND’) and determined that they were
phonetically similar to the crucial element of the Plaintiff’s trademark
(‘GEMS’ in ‘CADBURY GEMS’). Additionally, the court noted that the
Defendant had replicated every essential aspect of the Plaintiff's unique
packaging and label. Consequently, the Court concluded that the
combination of phonetic and physical similarities between the products
could lead to confusion and deception among unsuspecting consumers. In
contrast, in the present matter, the Petitioner's mark ‘GHADI’ is
phonetically distinct from Respondent No. 1's trademark
‘AGRAGHADIYAL’.
8.5. In the Sunil Mittal (supra) case, the Defendant’s trademark (‘DARZI
ON CALL’) shared the word ‘DARZI’ with the Plaintiff’s mark (‘THE
DARZI’), and both were used in the same category of goods and services.
Nevertheless, this case is not applicable to the present dispute since the
subject marks under consideration are distinct from each other and carry
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different meanings.
8.6. In K. R. Chinna Krishna (supra), Respondent’s (Plaintiff) mark was a
label containing the device of a goddess Sri Ambal seated on a globe
floating on water with the words ‘SRI AMBAL PARIMALA SNUFF’ in
Class 34 and the impugned mark was a label containing the device of a
goddess Sri Andal (distinct goddess) with the words ‘SRI ANDAL
MADRAS SNUFF’. The Court held that the key portions of the trademarks
of Plaintiff and Defendant therein i.e., ‘AMBAL’ and ‘ANDAL’ had
striking similarity and affinity of sound, while also being derivatives of the
same concept i.e., a benign goddess. The Court therefore, held that there is a
likelihood of confusion due to imperfect recollection by an average
consumer. In contrast here, Petitioner’s mark does not have striking
similarity with that of Respondent No. 1. Therefore, this judgment due to the
distinctions highlighted above, would not have any relevance.
9. For the foregoing reasons, the Court finds no merit in the present
petition.
i
10. Dismissed, along with other pending applications.



SANJEEV NARULA, J
MAY 3, 2023
as
rd
(Corrected and released on: 23 May, 2023)


i
Operative portion of this order was dictated in open court and reasoning has been subsequently added in-
chamber.
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Digitally Signed
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