Denial of Protection to Phonetically Generic Marks - Delhi High Court

Recently, the Delhi High Court in 'Delhivery Private Limited vs. Treasure Vase Ventures Private Limited (CS(COMM) 217/2020)', ruled that phonetically generic terms cannot be protected, insofar as to seek the benefit of statutory rights, against other phonetically generic marks. In this case, the plaintiff claimed that the Defendant infringed its registered trademark ‘DELHIVERY’ by using the mark ‘DELIVER-E’. During the course of proceedings, the Court had granted an interim injunction against the Defendant’s use of ‘DELIVER-E’. Eventually however, the Court vacated an interim injunction, thereby effectively permitting the Defendant to use the impugned trademark ‘DELIVER-E’.

The plaintiff had adopted the mark in 2008 and continuously used the trademark 'DELHIVERY' for purposes of logistics, transportation, management, etc. In fact, the plaintiff company has twenty-seven (27) registrations for the trademark 'DELHIVERY'. The Plaintiff contended that it has completed 600 million orders to around 120 million households, delivering around 1 million packages per day. Relying on extensive sales and recognitions, the Plaintiff submitted that the mark had obtained a secondary meaning. Furthermore, the Plaintiff alleged that the adoption of its mark by the Defendant was dishonest, based on previous business interactions, whereby the Defendant had changed its mark from ‘SMART-E’ to ‘DELIVER-E’, as an attempt to benefit from the positive reputation of the Plaintiff’s mark.

On the other hand, the Defendant refuted the Plaintiff’s claims, stating that there is little or no visual or structural similarity between the marks. It was pleaded that both the marks were an adaption of the descriptive word ‘delivery’ and that both the parties were engaged in providing delivery services. Accordingly, the Defendant argued that no monopoly could be taken in regards to ordinary dictionary words which are used as ‘marks’ and are descriptive of the business. Based on this premise, the Defendant requested that insofar as the interim injunction granted is not overturned, it would amount to giving the Plaintiff exclusive monopoly over a dictionary word ‘delivery’ which is descriptive for the business of delivering passengers or goods. Furthermore, the Defendant argued that the adoption of the mark was honest since ‘DELIVER-E’ was an extension of, and had been inspired by, the mark SMART-E, which has been in use since 2014. The Defendant’s mark merely signified delivery using electric vehicles for passengers and last-mile goods delivery.

Upon perusing the submissions of the parties, the Hon’ble Delhi High Court vacated the interim injunction, thereby enabling the Defendant to use the disputed trademark ‘DELIVER-E’. The Court did not accept the Plaintiff’s contention that its mark is a combination of two words, namely ‘DELHI’ and ‘VERY’ and as such being a coined word, thereby indicating that the mark ‘DELHIVERY’ was different from the generic word ‘delivery’. It rejected the Plaintiff's argument that it did not intend to stop any other party from using the word ‘delivery’ in a generic sense. Further, the Plaintiff’s stance that the Defendant was not justified in adopting and utilising ‘DELIVER-E’ or any other mark which is identical or deceptively similar to the registered mark ‘DELHIVERY’ in respect of related services was held to be incorrect. The Court stated that the Plaintiff could not compare their ‘coined mark’ with the mark ‘DELIVER-E’, as the origin of the marks were different. The court further held that the Plaintiff shall put evidence on record to show that the consumers associated the mark with a single source of origin to prove secondary meaning. Mere reliance only on volume of sales or expenses is not sufficient to establish secondary meaning, thereby holding that it is not a suggestive mark.

The Court observed that there are several registrations for marks containing the term ‘delivery’ which are currently in co-existence in the market, without causing deception and/or confusion. Since the manner and style of representation of the parties’ marks was different, they could thereby also co-exist. Lastly, the Court noted that consumers would be able to differentiate between the source of the respective services through the parties’ varying trade names.

In conclusion, the Delhi High Court held that the registered trademark of the Plaintiff, i.e. ‘DELHIVERY,’ is phonetically similar to the English term ‘delivery’, and thus is a generic symbol that is not entitled to protection against other generic marks. Therefore, the Delhi High Court overturned the interim injunction, permitting the Defendant to use the impugned trademark ‘DELIVER-E’. The decision further highlights that a registration is not an absolute right, and lays down the importance of difference between a suggestive mark and a descriptive mark. It also reaffirms that identification of a single source by the consumer is essential to show secondary meaning.

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