The Delhi High Court has declared the DS Group trademark and its corresponding logo as well-known trademarks.
It also permanently restrained five people and entities sued over a website that allegedly offered fake distributorships of Rajnigandha, the group's popular mouth-freshener brand.
Justice Purushaindra Kumar Kaurav passed the judgment on September 25 in a suit brought by DS Intellectual Properties LLP and Dharampal Satyapal Limited, the companies that hold rights in the DS Group and Rajnigandha trademarks.
The five people and entities did not contest the proceedings and were proceeded against ex parte.
The dispute arose after the companies came across www.onlinerajnigandharetail.in in December 2022.
According to their case, the website was being used to lure members of the public into paying money for Rajnigandha distributorships that were not genuine. It prominently displayed the companies' trademarks and used the address of their Telangana zonal office as the corporate office address.
Two of the people sued allegedly represented themselves as employees of the companies and offered Rajnigandha distributorships while collecting money from members of the public. The website also reproduced the companies' privacy policy, according to the evidence placed before the court.
In December 2022, the court had passed an ex parte interim order restraining the five people and entities from offering or advertising fake distributorships or dealerships. They were also restrained from using the DS Group and Rajnigandha marks, as well as the disputed website and associated email address.
The court separately directed the domain registrar to suspend and lock the website. It also directed the registrar to disclose the website's registration and payment details.
A bank was directed to freeze a specified account and provide its KYC details. The telecom company was directed to disclose the KYC details of the mobile number linked to the activity.
The domain registrar, bank and telecom company later complied with the directions and were deleted from the array of parties. The five people and entities at the centre of the dispute, however, remained absent and were proceeded against ex parte in November 2023.
With no one contesting the case, the court examined the evidence produced by the companies. Their registration certificates established their rights in the DS Group and Rajnigandha marks.
The evidence also showed that the marks had been used on the disputed website in connection with distributorship offers. The companies' privacy policy had also been reproduced there.
The court ruled that the unauthorised use of the registered marks in a manner suggesting an association with the companies amounted to trademark infringement. It also supported their claims of passing off and dilution.
The copying of the privacy policy, the court held, further supported the copyright infringement claim. The plaintiffs consequently established their entitlement to protection against the acts complained of.
Justice Kaurav also considered earlier cases in which the companies had obtained protection for their trademarks. One of those cases involved unauthorised Rajnigandha distributorship offers, where the court had directed blocking of the disputed domain and bank accounts.
Another case concerned a similar online distributorship website involving the same companies. The court had considered allegations of trademark and copyright infringement there and granted ex parte interim protection.
The more substantial issue was whether DS Group and its logo had become “well-known” trademarks.
Under Section 2(1)(zg) of the Trade Marks Act, a well-known trademark is one recognised by a substantial segment of the relevant public. The recognition must be such that use of the mark for other goods or services would likely suggest a business connection with its original owner.
In practical terms, this status can give a brand protection beyond the particular goods or services for which it is ordinarily known. The court also referred to Section 11(2), which protects well-known marks against certain later marks used for dissimilar goods or services where the use could take unfair advantage of or harm the established mark's reputation\
Rule 124 of the Trade Marks Rules, 2017 provides a mechanism for seeking recognition of a trademark as well-known before the Trade Marks Registry. In the present case, however, the declaration was sought and granted by the court itself.
The court examined the question against five factors set out in Section 11(6). These broadly concern how widely the mark is recognised, how long and extensively it has been used, the scale of its advertising and promotion, its registration history, and how successfully its trademark rights have been enforced.
The evidence showed that the group traces its inception to 1929. Its present logo was adopted in 2003 and has been used as a house mark across products including Rajnigandha, Catch, Tulsi, Pass Pass and Pulse.
The companies also produced evidence of the logo's use, registrations, promotional activities, online presence, corporate publications, turnover and advertising expenditure. The court noted that Rajnigandha, Catch and Pulse had previously been recognised as well-known marks by the court and/or the Trade Marks Registry.
The packaging of those products also carried the DS Group logo. The court considered this relevant to assessing the recognition and reputation associated with the group's mark.
On enforcement, the companies relied on earlier proceedings in which their trademark rights had been protected. The court found that this record, together with the continuous use and promotion of the logo, was relevant to the fifth factor under Section 11(6).
That fifth factor concerns the record of successful enforcement of trademark rights. It also specifically considers the extent to which a mark has been recognised as well-known by a court or the Registrar.
Taking the evidence cumulatively, the court ruled that “the DS GROUP mark has acquired the requisite knowledge and recognition amongst the relevant section of the public”. It held that the mark therefore met the statutory test for well-known status.
The court consequently made the 2022 interim injunction absolute against the five people and entities. It also passed a permanent injunction against them in the same terms.
Separately, the court declared the DS Group trademark and corresponding logo as well-known trademarks under Section 2(1)(zg) of the Trade Marks Act.
The companies had abandoned their claims for damages and costs. The court therefore granted no relief on those claims.
It directed the Registry to draw up the decree accordingly.
For DS Intellectual Properties LLP: Advocates Vaishali Mittal, Siddhant Chamola and Shivang Sharma