India: Protecting Translations of Descriptive Words as Trademark

In law of trademarks, words that are distinctive enough to distinguish goods or services of one person from those of others, qualify to be protected against infringement and/or passing off. Descriptive words/marks which lack inherent distinctiveness are refused registration under the Indian Trade Marks Act, 1999 (hereinafter, "the Act"). Interestingly, trademark squatting vis-à-vis translation of descriptive words is a niche area in trademark disputes. This article attempts to discuss this subject area in the light of an order passed by the Hon'ble High Court of Delhi in the case of Sunil Mittal & Anr. v. Darzi On Call.

The plaintiffs in this case, Sunil Mittal and Darzi India LLP, are the registered proprietors of the label mark "The Darzi THE SUIT PEOPLE SINCE 1981" and copyright in the artistic work of mark/ label "THE DARZI", with respect to services of tailoring, selling and marketing of all kinds of clothing and garments in Class 24. The defendant company, Darzi on Call Private Ltd. adopted the mark "DARZI ON CALL" in 2015 and had applied for registration of the mark in respect of same tailoring services under Class 40. When the plaintiffs for the first time learnt about the trademark application of the defendant, they proceeded to issue a cease and desist notice to the defendant in October 2015. However, after a wait of about 10 months, the plaintiffs were alerted of the continuous use of "DARZI ON CALL" by the defendant. Therefore in October 2016, the plaintiffs approached the Delhi High Court and sought for an interim injunction against the defendant's use of the said mark contending that the defendant had used the word "DARZI" as well as alphabet 'D' in it in the same style as that of the plaintiff. Accepting the plaintiff's contentions, the Single Judge passed an ex-parte interim order restraining the defendant from using the trademark or trade name comprising the word "DARZI" or any other trademark or trade name which may be similar or deceptively similar till further orders of the court. Subsequently, the Single Judge modified the same order on December 7, 2016, allowing the defendant to use the alphabet 'D' with exception of the word "DARZI".

The defendant contested this suit and filed its written statement contending that the plaintiffs had registration only with respect to their label and not the words "DARZI" or "THE DARZI" per se. This implied that the plaintiffs were aware that the words in dispute are common to trade and, thus, generic and descriptive of tailoring and textile services. The defendant, therefore, contended that the registration on the label conferred rights on the label/logo as a whole and not on parts of the whole, as deciphered on combined reading of Sections 17 and 15 of the Act. These provisions require separate registrations on parts of the trademark to confer rights on each of them. Moreover, the phonetic similarity in the marks was also disputed as well as the services and class they fell in.

The plaintiffs, on the other hand, argued that their logo cannot be portrayed without "THE DARZI", of which "DARZI" formed an integral and essential part of the label/mark. They placed reliance on the case of Jagdish Gopal Kamath v. Lime & Chilli Hospitality Services to contend that the essential, prominent and leading feature of the mark has to be considered whether it is a label, device or composite word. They also claimed that their label/mark "THE DARZI" had acquired distinctiveness through long and continuous use for nearly 35 years.

Interestingly, the Court considered and appreciated that a distinction had to be carved out between the use of a word as descriptive of the services provided under a trade name/ mark and the use of that word as trade name/mark in itself. Accordingly, if a person adopts such a word as trade name/trade mark, then it deserves to be viewed as a novel thought, which, in turn, is entitled to protection under IP law. The Single Judge observed that the words 'Tailors' or 'Drapers' were used to describe the nature of business of tailoring in the high end society to which both parties provided their respective tailoring services. "DARZI" happened to be the Hindi/Urdu translation for 'Tailor' and, in his experience, the judge had never come across any person or entity providing the services of tailoring under such name. The Court opined that the word "DARZI", in common parlance, is used in spoken language than written to describe the profession of a person. It further stated that the word 'Tailor' accompanied with the word 'Master', when written in Hindi language, as commonly displayed on shops, can be said to be descriptive of the services, but not "DARZI". Hence, the Court rejected the contention of the defendant that the word "DARZI" was inherently incapable of being used as a trademark on account of being generic or publici juris of the service. It reasoned that "DARZI" is neither devoid of distinctive character, unlike "Tailor", to distinguish services of one person from that of another nor commonly used in the territory of business to designate the service rendered so as to be refused registration under sub-clauses (a) & (b) of Section 9(1) of the Act. The Court, thereby, laid down the test to determine distinctiveness of translated words, i.e., to not only take into account whether a word or its meaning was understood at a particular place but also if it was generally used at that place as descriptive of the services rendered. Applying this test, it was observed that the word "DARZI" was not used in Delhi to designate the service of tailoring under a trade name/mark, rather it was used in spoken language to describe the vocation/profession of a person instead of a service, placing reliance on the judgements of T.V. Venugopal vs. Ushodaya Enterprises Ltd.^[1] and Info Edge (India) Pvt. Ltd. vs. Shailesh Gupta^[2].

Further, the Court also rejected defendant's contention that the plaintiffs' registration was with respect to the label and not the word mark "DARZI", on the grounds that the word "DARZI" was the essential feature of both the marks which, in itself, had stronger recall value in the minds of the customers than with the suffix of "On Call". Additionally, the Court opined that where goodwill of tailoring business is by word of mouth and recall value is the word "DARZI", then the test of similarity/deceptive similarity has to be based on human interactions in a particular society rather than as laid down in law books. Applying this test, in observation of the Court, neither the added features in both the labels (i.e., defendant's label with stylized alphabet 'D' or the shape of mannequin's dress and plaintiff's label containing "The Suit People" or "1981") nor their colour scheme, were relevant and capable of distinguishing each other. The Court also rejected the defendant's contention on the aspect of plaintiffs' registration in Class 24, stating that the plaintiffs could not be deprived of protection due to absence of any specific class for tailoring under the Fourth Schedule of the Trade Marks Rules.

Notably, the Single Judge adjudicated on the issue of whether the mark at dispute had acquired secondary meaning or not at the interim stage itself. It also observed that the proprietor of a trademark is not expected to make litigation as a business to prevent use of its mark, even when the proprietor is not affected by such use. But that doesn't deprive him of pursuing protective action when someone invades his business.

In light of the above grounds, the Court held that the plaintiffs had established a prima facie case, wherein the balance of convenience lied in their favour and they would have suffered irreparable loss/injury from continued use of the mark by the defendant, had the injunction not been granted in their favour. The Single Judge granted an interim injunction against the defendant restraining them from using the word "DARZI" or any other word, mark, label identical with or deceptively similar to the word/mark "DARZI".

Therefore, the position of law on translations or paraphrases of descriptive words as trade name/mark in itself was set out in this case, as being capable of protection under trademark law. Although the order could have discussed in detail the test of distinctiveness in such a case, especially on the aspect of considering common usage of the word at a particular place/society when the protection granted under law is pan-Indian in nature, it definitely encourages trade owners to come up with innovative translations as trademark/name and avail protection under the Act. However, this order has been challenged by the defendant and is presently lying on appeal before the Division Bench of the Delhi High Court. The findings and grounds of the decision of the Appellate bench, whether it upholds or overrules the Single Judge order, would be interesting to learn as it will definitely set a precedent in this niche area of trademark law in India.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.