Bombay High Court Restrains Entity From Using Trademark 'Deceptively Similar' To Hair Color Brand STREAX
The Bombay High Court on Wednesday (March 5) restrained an entity from using a trade mark which is 'deceptively similar' to hair colour brand - 'Streax.'Single-judge Justice Manish Pitale in his order, noted that the plaintiff - Hygienic Research Institute Private Limited owner of the trademark 'Streax' successfully brought on record the fact that it has been using this trademark since July...
The Bombay High Court on Wednesday (March 5) restrained an entity from using a trade mark which is 'deceptively similar' to hair colour brand - 'Streax.'
Single-judge Justice Manish Pitale in his order, noted that the plaintiff - Hygienic Research Institute Private Limited owner of the trademark 'Streax' successfully brought on record the fact that it has been using this trademark since July 1, 2002 while the defendant company trademark 'Streak Street' was registered only in 2018.
"This Court is of the opinion that sufficient pleadings and material have been placed on record on behalf of the plaintiff, including its sales turnover figures to show that considerable goodwill is earned by the plaintiff in respect of its registered trademark 'STREAX/STREAX formative marks.' The sales turnover of more than ₹ 500 crores for the year 2023-24, is indeed a relevant consideration in this regard. As this Court has found that the adoption of the impugned trademark by the defendants prima facie appears to be dishonest, a case is made out by the plaintiff to claim that the defendants are seeking to pass off their products as those of the plaintiff in order to ride over the considerable goodwill of the plaintiff in the market," Justice Pitale said.
The judge said that the records indicate, a prima facie case of 'dishonesty' on the part of the defendants in claiming the date of user of the impugned trademark. "Such defendants cannot be heard to say that the plaintiff is not entitled to assert its statutory rights in its registered trademark," the judge said.
The judge took into account the 44 registrations obtained by the plaintiff in its favour as regards the trademark 'Streax' and its variants from July 1, 2002. He said he is convinced that the plaintiff is entitled to assert its "proprietary rights" in its registered trademark “STREAX/STREAX formative marks.”
"Therefore, there is sufficient material on record to indicate that the plaintiff has earned considerable goodwill in its favour in respect of its registered trademark STREAX/STREAX formative marks” and hence, it is entitled to assert its proprietary rights in respect of the said registered trademark. In fact, copies of earlier orders passed by this Court, placed on record, do show that plaintiff has been vigilant in protecting its proprietary rights in respect of the said registered trademarks and this Court on earlier occasions has also granted adinterim reliefs / interim reliefs in favour of the plaintiff," the judge said.
The bench junked the contention of the defendant who claimed that the registered trademark of the plaintiff - 'Streax' is phonetically similar and almost identical to the word 'Streak' and since the products of the plaintiff are admittedly concerned with hair and hair care products, the registered trademark of the plaintiff is nothing but descriptive in nature and that despite registration, the plaintiff cannot claim exclusive right in the same. It also argued that the said word 'Streak' is common to trade and hence, the plaintiff cannot assert its rights, so as to restrain the defendants from using their mark in respect of hair and hair care products.
The defendants argued that the obvious meaning of the word 'Streak' is a coloured strand of the hair.
"But, it has been correctly pointed out on behalf of the plaintiff that this is not the only obvious meaning of the word 'STREAK' and that the said word is used in various ways in English language. This Court is unable to accept the contention of the defendants that the word 'STREAK' would be associated only with a coloured strand of hair and hence, it is descriptive of the products of the plaintiff," the judge opined.
The judge said that the defendants cannot blow hot and cold at the same time, for the reason that on the one hand they are raising doubts about the character and strength of the registered trademark of the plaintiff, while on the other hand they have themselves applied for registration of the impugned trademark, of which the leading, essential and central feature is the word “STREAK.”
"This Court is of the opinion that the plaintiff has made out a strong prima facie case in its favour to claim that the prominent, leading and essential feature of the impugned trademark of the defendants i.e. 'STREAK' is deceptively similar to the registered word mark of the plaintiff 'STREAX'," the bench held, while restraining the defendants in an interim order.
Appearance:
Advocates Hiren Kamod, Ramesh Gajria, Deepa Hate and Prem Khullar instructed by Gajria & Co. appeared for Plaintiff.
Senior Counsel Ashish Kamat along with Advocates Rashmin Khandekar, Pranshul Dube and Haseena Khan represented the Defendants.
Case Title: Hygienic Research Institute Private Limited vs Chandan and Shah Trading LLP (Commercial IP Suit 32628 of 2024)