Bombay High Court Rejects EYETEX DIVYA Owner's Plea Against DIVYAM Trademark

The Bombay High court has dismissed a plea by Aravind Laboratories to cancel the registration of a device mark using the word "DIVYAM". It held that the company cannot claim exclusive rights over the word "DIVYA" merely because it forms part of its registered mark "EYETEX DIVYA".

Justice Somasekhar Sundaresan observed that the distinctiveness of the company's registered marks comes from the "EYETEX" prefix and not the standalone word "DIVYA."

"It is evident that the dominant feature of the registered marks of the Petitioner is 'EYETEX'. It is the combination in which the other words are used with 'EYETEX' as the prefix, that makes the marks of the Petitioner distinctive... What the Petitioner now claims is a proprietary right to monopolise the use of variants of 'DIVYA' on the strength of being the proprietor of the 'EYETEX DIVYA' mark.", the court ruled.

Aravind Labs argued that its "EYETEX DIVYA" mark, registered in 1990 for kumkum products, had built substantial goodwill over the years. It claimed the "DIVYAM" mark was likely to confuse consumers and should not have been registered.

The court disagreed. It said the company was effectively seeking a monopoly over the word "DIVYA", even though it had never registered that word separately.

Referring to Section 17 of the Trade Marks Act, the court said registration of "EYETEX DIVYA" gives exclusive rights only over the mark as a whole. It does not confer exclusive rights over one part of the mark.

"The Petitioner cannot claim an entitlement to 'DIVYA' and its variants such as 'DIVYAM' on the strength of its registration and on the strength of its prior use of 'EYETEX DIVYA'.", the court ruled.

The court also said accepting the company's argument would allow traders to monopolise generic words that merely form part of a distinctive mark.

"One has to be cautious not to permit monopolisation of generic words forming part of a distinctive combination with another dominant part that provides the real distinctiveness to the mark... the Petitioner could even claim a right to 'Kumkum' and its variants as well, simply because it has registered 'EYETEX KUMKUM'.", it added.

The court also found no likelihood of confusion between the two marks. It noted that the "DIVYAM" mark is a stylised device featuring the letter "I" as a flame and the tagline "Your Complete Divinity Store". The court further noted that Aravind Laboratories operates in the cosmetics business, while the registered mark covers products used for pooja and ritual offerings.

The court said the marks were not structurally, visually or phonetically similar enough to mislead an average consumer.

"A lay person with average intelligence would not associate the Respondent No. 1's products as having been a brand extension of the Petitioner which has used 'EYETEX' in each and every mark deployed in its business.", the court ruled.

The court also held that Aravind Laboratories could not be treated as a "person aggrieved" under Sections 47 and 57 of the Trade Marks Act. It accordingly dismissed the rectification petition.