NATURALS v NIC Natural : Delhi HC restrains NIC Natural ice creams from using NATURALS trademark

IN THE HIGH COURT OF DELHI AT NEW DELHI

 CS(COMM) 735/2022

 SIDDHANT ICECREAMS LLP & ORS.                                                      ..... Plaintiffs

versus

AMEET PAHILANI & ORS.                                                                       ..... Defendants

 CORAM:

 HON'BLE MS. JUSTICE JYOTI SINGH

 O R D E R

 19.10.2022

 I.A. 17198/2022 (seeking leave to file additional documents)

 1. Present application has been preferred on behalf of the Plaintiffs seeking leave to file additional documents under Order 11 Rule 1(4) CPC.

2. Plaintiffs, if they wish to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act, 2015.

3. Application is allowed and disposed of. I.A. 17197/2022 (Exemption)

4. Subject to the Plaintiffs filing clearer copies of the documents, which they may seek to place reliance on, within four weeks from today, exemption is granted.

5. Application is allowed and disposed of. I.A. 17199/2022 (Section 12A of the Commercial Courts Act, 2015 seeking exemption from pre-institution mediation)

6. Present application has been preferred on behalf of the Plaintiffs seeking exemption from instituting pre-litigation mediation, in accordance with Section 12A of the Commercial Courts Act, 2015.

7. For the reasons stated in the application, Court is of the opinion that Plaintiffs are entitled to consideration of the application seeking urgent relief in the present case and are thus exempted from instituting pre-litigation mediation.

8. Application is allowed and disposed of.

9. Let plaint be registered as a suit.

10. Issue summons.

11. Mr. Aditya Gupta, learned counsel enters appearance on behalf of Defendant No.6 and submits that there is an error in the memo of parties, as the name of Defendant No. 6 has been incorrectly reflected. The correct name is ‘Google LLC’ and fresh address of Defendant No. 6 shall be provided to counsels for the Plaintiffs.

12. Let an amended memo of parties be filed by the Plaintiffs.

13. Upon requisite steps being taken by the Plaintiffs, summons be issued to the remaining Defendants, through all permissible modes, returnable on 21.12.2022 before the learned Joint Registrar.

14. Summons shall state that written statement be filed by the remaining Defendants within 30 days from the date of receipt of summons. Along with the written statement, Defendants shall also file an affidavit of admission/ denial of documents of the Plaintiffs.

15. Replication be filed by the Plaintiffs within 15 days of the receipt of the written statement. Along with the replication, an affidavit of admission/denial of documents filed by the Defendants shall be filed by the Plaintiffs.

16. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines. I.A. 17196/2022 (under Order 39 Rules 1 and 2 CPC, by Plaintiffs)

17. Present application has been preferred by the Plaintiffs under Order 39 Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 for grant of an ex-parte ad-interim injunction.

18. Issue notice to the Defendants.

19. Mr. Aditya Gupta, learned counsel accepts notice on behalf of Defendant No.6 and submits that insofar as prayer (g) in para 11 of the application is concerned, Defendant No. 6 cannot remove all associations with Defendants No. 1 and 2.

20. Mr. Sandeep Sethi, learned Senior Counsel appearing on behalf of the Plaintiffs fairly submits that Plaintiffs do not press prayer (g) of para 11 of the application at this stage.

21. On steps being taken by the Plaintiffs, notice be issued to the remaining Defendants, through all permissible modes, returnable on 22.02.2023.

22. It is stated in the plaint that Plaintiffs are engaged inter alia in the business of manufacturing, marketing, selling, distributing and retailing ice creams, ice cream shakes and allied/ancillary products and services under the name/style/brand ‘NATURAL’. The business of ‘NATURAL’ ice cream was started by Plaintiff No. 3 in 1984 when he devised a revolutionary new machine for artisan ice creams and adopted the mark ‘NATURAL’. Since then, the mark ‘NATURAL’ has been the essential, distinct and prominent feature of Plaintiffs’ ice cream business. The products are sold through authorized franchisees in 42 locations across the country including Delhi. NATURAL and NATURALS have become household mark and attained the status of iconic brand for ice creams and ice cream based products. During the course of business, the logo was created, of which ‘NATURAL’ is an essential and prominent feature. Plaintiffs have registrations in NATURAL logo, its adaptations/variations/extensions in classes such as 30, 29, 42 etc. which are valid and subsisting. Plaintiffs’ right in NATURAL brand have been acknowledged and recognized by Courts in multiple cases, e.g. the order of the Bombay High Court dated 15.04.2011 in Siddhant Ice Creams Pvt. Ltd. and others v. Tanco Enterprises and others, etc.

23. It is further stated that Plaintiffs have established a network of 140 franchisees in 42 cities across India and extensive advertisements are published on various social media platforms such as Facebook, twitter etc. The sales have been steadily increasing over the years and for the year 2022-23, upto 30.09.2022 31,14,666 kilos of ice creams have been sold by the franchisees. Cumulative turnover for the said year is Rs.234.47 crores between April, 2022 to September, 2022. Various awards and recognitions have been earned by the Natural brand of ice cream as mentioned in the plaint.

24. It is stated that Defendant No. 1, who was formerly a Partner in one of the Plaintiffs’ franchisees, is wrongfully using the Natural family marks in relation to ice creams and related products. He has also dishonestly registered marks bearing the name ‘NIC Natural Ice Creams’ by incorporating NATURAL mark, which is an essential part of Plaintiffs’ trademark, which is deceptively similar. Defendant No. 1 was clearly aware that NIC was commonly used as an acronym for the Natural ice cream business. The impugned mark also uses an identical shade of green colour as used by the Plaintiffs which enhances the similarity and also incorporates the word ‘NATURAL ICE CREAMS’ underneath the mark. Additionally, with a mala fide intent to create further deceptive similarity, Defendants No. 1 and 2 also employed a packaging which is similar to the Plaintiffs packaging and a juxtaposition of the two containers would clearly reflect this. A screenshot of the rival packaging is as follows:

25. It is further averred that on 18.09.2021, to further perpetuate the impression that products sold by the Defendants belong to the Plaintiffs, Defendants have registered the domain name ‘www.nicnaturalicecreams.com’. Defendants No. 1 and 2 have registered the impugned marks, deceptively similar to Plaintiffs’ NATURAL family marks. Defendants No. 4 and 5 have on multiple occasions used photos of Plaintiffs’ products for listing the Defendants’ business, in order to increase traffic for Defendants No. 1 and 2 and free ride on their goodwill. Defendant No. 6 has also compounded the difficulties faced by the Plaintiffs inasmuch as when a consumer searches for Defendants’ business through a google search, information of Plaintiffs Natural ice cream business is reflected in the result page indicating an association. Defendants No. 1 and 2 are actively purchasing the keyword NATURAL through AdWords programme of Defendant No. 6 to pass off their ice creams.

26. Learned Senior Counsel appearing on behalf of the Plaintiffs contends that the NATURAL brand has carved out a niche and acquired distinctiveness and evolved to become synonymous with ice creams made of fruit, milk and sugar and the dishonest adoption of deceptively similar marks for identical products amounts to infringement of Plaintiffs’ registered trademarks. The immense goodwill and reputation garnered by the Plaintiffs is being encashed by Defendant No. 1 to pass off its goods by misrepresenting to the consumers that the products of Defendant No. 1 emanate from the Plaintiffs. Consumer base and trade channels being same, rival products being identical and the impugned mark being deceptively similar likelihood of confusion and misrepresentation is evident and the actions of Defendant No. 1 in collusion with the remaining Defendants are causing irreparable harm and injury to the reputation and goodwill of the Plaintiffs.

27. Having heard learned Senior Counsel for the Plaintiffs, this Court is of the view that Plaintiffs have made out a prima facie case for grant of an ex-parte injunction. Balance of convenience also lies in favour of the Plaintiffs and in case an ex-parte injunction is not granted, Plaintiffs are likely to suffer irreparable loss.

28. Accordingly, till the next date of hearing, Defendants No. 1 to 3 along with their subordinates, subsidiaries, officers, directors, family members, distributors, agents, franchisees, dealers, servants, and all other persons claiming through or under them or anyone who may be acting for and on their behalf, are restrained: i. from using Plaintiffs’ marks ‘NATURAL’, ‘NATURALS’ or using ‘NIC Natural Ice Creams’, ‘NIC’, in any form or manner, including any marks identical or deceptively similar, or from adopting same colours, trade dress and packaging for their products so as to amount to passing off; ii. from using the domain names ‘nicicecreams.com’, ‘nicnaturalicecreams.com’ or any other domain name or email address or handle containing the mark NATURAL as a part thereof; and iii. from using the Plaintiffs’ marks ‘NATURAL’ or ‘NATURALS’ as metatags and/or purchasing the same as keywords under Defendant No. 6’s AdWords programme to advertise their products.

29. Defendants No. 4 and 5 are directed to ensure that Defendants No. 1 and 2’s infringing marks, products bearing such infringing marks or any marks using the Plaintiffs’ NATURAL Family marks are not displayed in any manner in relation to Defendants No. 1 and 2 and/or in relation to any other party apart from the Plaintiffs, on their respective online platforms or otherwise, and that the Plaintiffs’ NATURAL Family Marks are not displayed in connection with the Defendants No. 1 to 2 business in any manner whatsoever.

30. Plaintiffs shall comply with the provisions of Order 39 Rule 3 CPC within a period of ten days from today.