Arochem Ratlam Pvt Ltd vs Arom Alchemists Private Limited

IAL-32451-2024.doc

IN THE HIGH COURT OF JUDICATURE AT BOMBAY TALLE ORDINARY ORIGINAL CIVIL JURISDICTION SHUBHAM IN ITS COMMERCIAL DIVISION ASHOKRAO Digitally signed by TALLE SHUBHAM ASHOKRAO INTERIM APPLICATION (LODGING) NO. 32451 OF 2024 Date: 2025.08.12 20:28:46 +0530 IN COMMERCIAL IP SUIT (LODGING) NO. 32272 OF 2024

Arochem Ratlam Pvt. Ltd., & Anr. ... Applicants/ Plaintiffs. Versus Arom Alchemists Private Limited & Ors. ... Defendants ------------ Sr. Advocate Mr. Virag Tulzapurkar a/w Mr. Amit Jamsandekar, Mr. Vighnesh Kamat, Mr. Vaibhav Shukla, Adv Archita Gharad, Adv. Shreem Pathak i/by Zain A. K. Najam-es-Sani for Plaintiffs.

Mr. Ashutosh Kane a/w Ms. Prakhar Karpe, Ms. Aastha Pathak, i/by W. S. Kane and Co. for Defendants. ------------ Coram : Sharmila U. Deshmukh, J.

Reserved on: June 27, 2025.

Pronounced on : August 12, 2025. ORDER:

1. This is an action for infringement of trade mark and

passing off. The Plaintiffs and the Defendants are engaged in the

business of manufacturing/ marketing/ selling/ distribution of

perfumery products more particularly perfumes and fragrances.

2. It is submitted that the Plaintiff No. 1 was originally

constituted as a partnership firm known as Arochem Industries in the

year 1969 and was manufacturing and marketing its products under

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the mark "AROCHEM". The Plaintiff No. 1's predecessor i.e. partnership

firm applied for and registered its mark "AROCHEM" in Class 3 with

user claim since 1st September, 1969, which mark came to be assigned

to Plaintiff No. 1 vide Deed of Assignment dated 1 st April, 2013 and was

brought on record as subsequent proprietor of the mark "AROCHEM".

3. Subsequently, the Plaintiff made applications for

registration of trade marks in which the mark "AROCHEM" constituted

the leading, prominent and essential features. The registration of the

mark "AROCHEM" and its extension and abbreviated form is set out in

in paragraph 7 and are about 93 in number. The first registration of the

mark "AROCHEM" dates back to the year 1996.

4. It is submitted that the Plaintiff No 1 began marketing and

selling its product under the trade mark "AROME" in March, 2021 while

retaining the essential and prominent feature of the mark "AROCHEM"

and retaining its corporate name. The Plaintiff No 1 applied and

registered the trade mark "AROME" and the label containing/consisting

of the word "AROME" as its essential feature and various other

trademark retaining "AROME" as its essential feature in Class 3 as

under:-

Sr. Mark Registration Date of Application Class No. No. 1. AROME 4894723 08/03/2021 3 2. AROME BLUE 4896333 09/03/2021 3

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ISLAND 3. AROME WORLD 5902957 21/04/2023 3 4. AROME SCENT ART 5962397 02/06/2023 3 5. AROME THE LEGEND 5992110 22/06/2023 3

5. In order to demonstrate the goodwill and reputation of the

Plaintiffs under the trademarks "AROCHEM" and "AROME", the

statement of Plaintiff No 1 demonstrating the sales figure and

advertisement expenses duly certified by Chartered Accountant is

annexed to the plaint.

6. In so far as the Defendants are concerned, it is pleaded

that the Defendants filed trade mark applications No. 5933224 and

5933225 on 12th May, 2023 in respect of its mark "AROM" on a

proposed to be used basis and in the examination report the

Application was objected under Section 11 of the Trade Marks Act,

1999 ("T. M. Act") by citing the Plaintiff's mark as the conflicting mark.

The Plaintiffs issued cease and desist notice dated 18 th December, 2023

to the Defendants against use of the mark "AROM", which was

responded by stating that the Defendant's mark does not infringe the

Plaintiff's mark and that the Defendants have filed rectification

application against the Plaintiff No 1's mark "AROME" on 23 rd

December, 2023. The Defendants are advertising in the same trade

magazines and participating in the same exhibitions in which the

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Plaintiffs also advertise and participate in order to mis-represent and

mislead the consumers that the Defendants are associated with the

Plaintiffs. The Plaintiff's various customers, retailers etc made

purchases from Defendants believing that they were purchasing from

Plaintiff No 1. The Defendants are inducing and inciting the Plaintiff's

employees to breach their contractual obligation including that of

employment and obligation of confidence and trust with ulterior

motives and malafide intentions by portraying that the Defendants are

connected to the Plaintiffs.

7. The case of the Plaintiffs is that the Defendant No. 2 who

is Director of Defendant No. 1 is an ex-employee of the Plaintiff No. 2

between November-2017 and May-2018 and was therefore fully aware

of the Plaintiff's product, trade mark, clientele etc.

8. The defence is that the Defendant No 1 Company "AROM

ALCHEMISTS Pvt Ltd" was incorporated on 3 rd January, 2023 and it was

decided to use the word "AROM" which is a mere misspelling of and

inspired from the generic and descriptive word "AROMA" and that

ALCHEMIST means a person who studies Alchemy meaning magic

power that can change things and thus the adoption of the mark by the

Defendants is honest and bonafide.

9. The Defendant No. 2 had left the employment of the

Plaintiff in the year 2018 and the trade mark "AROM" was adopted in

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the year 2021. The Defendants have conceived and adopted the trade

mark and the trade name "AROM ALCHEMISTS" and has been using the

same since 3rd January, 2023. The Plaintiffs are attempting to

camouflage their trade mark AROME with AROCHEM and documents

annexed to the Plaint pertains to AROCHEM. The Plaintiffs have failed

to show use of their alleged mark AROME which is generic.

10. The Plaintiffs have failed to show prior continuous user and

invoices produced are for the year 2011 and 2012 and from 2020

onwards. The Plaintiffs have used the trade mark AROCHEM as their

trading name and not in sense of trade mark. The Plaintiffs cannot

claim monopoly over the word "AROME" which is mere mis spelling of

the word "AROMA". The same is dictionary word and is descriptive of

the goods and no monopoly can be claimed over such generic

descriptive word. There is no goodwill and reputation shown on the

relevant date in respect of "AROME" to sustain an action for passing

off. The Defendant has never used or intend to use "AROM" on stand

alone basis or separately from the trade mark "AROM ALCHEMISTS" as

a whole which is the pleadings in the plaint. The Plaintiff's cease and

desist notice as well as the suit does not mention "AROCHEM" whereas

the prayers mentions "AROCHEM".

11. In the Additional Affidavit in reply, the Defendants have

dealt with the documents annexed to the plaint and there is Affidavit

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in rejoinder filed by the Plaintiffs denying the contents of the Affidavit

in reply and Additional Affidavit in reply.

SUBMISSIONS

12. Mr. Tulzapurkar, learned Senior Advocate appearing for the

Plaintiff would point out the registrations procured by the Plaintiffs in

respect of the trade mark "AROCHEM" and its extensions and its

abbreviated form and of "AROME" since 8th March, 2021. He submits

that in so far the Defendant's mark AROM ALCHEMISTS is concerned ,

the suffix of ALCHEMISTS does not give distinctiveness. He submits

that under Section 29(9) of Trade Marks Act, 1999 infringement is

caused even by spoken use of the words.

13. He would point out to the sales figure which is combined

sales figure to demonstrate the goodwill and reputation, which for the

Year 2022-23 is Rs. 872,30,499/- and sales promotional and

advertisement expenses are about Rs. 16,11,644/- and Rs. 3,09,226/-

respectively. He submits that there is identity of marks and identity of

goods and under Section 29(3) of Trade Marks Act, 1999, there is

presumption of likelihood of causing confusion on part of the public.

He submits that the essential feature of the trade mark is "AROME"

and the Defendant has adopted the mark "AROM" by removing the last

alphabet 'E' and there is phonetic similarity between the rival marks.

He submits that the manner in which the Defendants uses the mark is

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to highlight word "AROM" whereas the words "ALCHEMISTS" is in

smaller font.

14. He would submit that the Defendant's company was

incorporated on 3rd January, 2023 and the affidavit says that the mark

"AROM ALCHEMISTS" is used since 3rd January, 2023 whereas in

response to the cease and desist notice it is stated that the mark is

used since 1st June, 2023. He submits that the defence to cease and

desist notice that the rectification application is filed is no defence. He

submits that there is dishonest adoption of the mark as the Defendant

No. 2 is ex-employee of the Plaintiff No. 2 and knows about the

existence of the Plaintiff and the business. He submits that it is the

duty of the Defendants to take search of Trade Mark Registry before

adopting the mark and having not taken search, the same is at the

Defendants own peril. He would further point out the trade magazine

which shows the mark of the Plaintiffs and the Defendants being

featured side by side and would submit that there is likelihood of

confusion. He submits that the Defendants have approached its

employees by giving impression that it is part of the Plaintiff's group.

He submits that in view of the inducement offered by the Defendants

to the Plaintiff's employee by order of 25 th November, 2024 this Court

had granted ex parte relief in terms of prayer clause (c) restraining the

Defendant's from inducing the Plaintiff's employees.

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15. He submits that there is no honest adoption of the mark as

the Plaintiff's mark was already cited in the examination report as

conflicting mark. He submits that the defence is that "AROM" is mis

spelling of the word "AROME" which is generic word cannot be

accepted as Defendant claims registration of its mark which means

that the mark is distinctive. He submits that the Plaintiffs have coined

the mark "AROME" which is not a common English word. He submits

that the Defendants does not use the mark "AROM" in descriptive

sense but in trade mark sense. He submits that the first user rule will

apply and as the Plaintiffs are registered proprietor as well as prior

user of the trade mark "AROME", the Defendant by use of deceptively

similar mark infringes upon the right of the Plaintiff. Mr. Tulzapurkar

would further submit that the Defendant is also using the Plaintiff's

mark as part of its domain name 'www.aromapl.com' which does not

use the entire trade name of "AROM ALCHEMIST". In support he relies

upon following decisions:

1. Ruston & Hornsby Ltd vs. The Zamindara Engineering Co 1

2. James Chadwick & Bros., Ltd Vs. The National Sewing Thread

Co., Ltd.,2

1 1969 (2) SCC 727 2 OCJ App No. 95 of 1950.

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3. Sky Enterprise Private Ltd vs. Abaad Masala & Co.,3

4. Neon Laboratories Limited vs. Medical Technologies Limited 4

5. Ultra Tech Cement Limited vs. Alaknanda Cement Pvt Ltd 5

6. Jagdish Gopal Kamath vs. Lime & Chilli Hospitality services6

7. Lupin Limited vs. Eris Lifesciences Pvt. Ltd7

16. Per contra, Mr. Kane, learned Counsel appearing for the

Defendants submits that the suit is misconceived by drawing attention

of this Court to prayer clause (a) and (b) of the plaint. He submits that

the Plaintiffs seeks injunction against the Defendants from using mark

"AROM" or corporate name "AROM" or website/domain

'www.aromapl.com' and/or mark "AROCHEM" and/or "AROME" on the

Defendant's product and the Plaintiffs have pleaded that the

Defendant's mark is "AROM" whereas the defendant uses the "AROM

ALCHEMISTS". He submits that the Defendant's mark "AROM

ALCHEMISTS" was applied for registration on 12 th May, 2023 on

proposed to be used basis which was an application for the device

mark. He submits that there is no specific pleading that the Defendants

mark is "AROM ALCHEMIST" and the prominent and essential feature is

3 2020 SCC Online BOM 750 4 (2016) 2 SCC 672 5 2011 SCC Online Bom 783 6 2015 SCC Online Bom 531 7 2015 SCC Online Bom 6807

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"AROM". He submits that the Defendants have no intention to use the

mark "AROM" as stand alone mark. Pointing out to the invoices

annexed to the affidavit-in-reply, he submits that the Defendants have

raised invoice of sale on 5th August, 2023 under the mark "AROM

ALCHEMIST". He submits that the Plaintiffs, in the opposition

applications have understood the Defendant's mark as "AROM

ALCHEMISTS" however in the plaint there is deliberate reference to the

Defendant's mark as "AROM". He submits that in the cease and desist

notice the Plaintiff refers to the Defendant's mark as "AROM" and

therefore there is inconsistency in the stand adopted by the Plaintiffs.

17. He would further submit that it is not the case of the

Plaintiffs in the cease and desist notice that the Defendant's mark is

deceptively similar or identical to the Plaintiff's mark "AROCHEM" and

despite thereof in the prayer clause injunction is sought also in respect

of the mark "AROCHEM". He submits that during the arguments, there

are no submissions canvassed as regards the mark "AROCHEM". He

would further draw attention of this Court to paragraph 9 of the plaint

which sets out registration of the Plaintiff's mark "AROME" and its

extension and would submit that as far as the registration of marks at

serial nos. 3, 4 and 5 are concerned, the applications for registration

have been made on 21st April, 2023 and subsequent thereto and

therefore the Defendants are prior users. He submits that as far as the

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mark at item no. 2 i.e. "AROME BLUE ISLAND" is concerned the same is

not stand alone mark and it is not the case of the Plaintiffs that "AROM

ALCHEMIST" have copied the essential features of "AROME BLUE

ISLAND". He submits that as far as the mark "AROME" is concerned the

same is challenged by way of rectification.

18. He would further submit that the word "AROME" is mis

spelling of the word "AROM" which is generic word and descriptive of

the perfumes and the fragrances and being devoid of distinctiveness

constitute an absolute ground for refusal of registration under Section

9 of the T. M. Act. He submits that the Defendants have applied for

registration of the device mark "AROM ALCHEMISTS" and have not

applied for the registration of the word mark "AROM" and that the

trade name of the Defendants is "AROM ALCHEMISTS". He submits

that the mark is not used by the Defendants as trade mark but as trade

name. He submits that what is necessary to be considered is

comparison of the mark as a whole and not part of the mark.

19. He would further submit that for the purpose of

maintaining an action of passing off, the relevant date is the date on

which the Defendants started using his mark which was on 5 th April,

2023 and the Plaintiffs have to prove goodwill as on 5 th April, 2023. He

would submit that the invoices produced by the Plaintiffs are up to the

year 2012 and for the year 2021 there are two to three invoices which

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does not demonstrate goodwill and reputation. He submits that the

sales figure given is combined sales figure. He submits that the mark

"AROME" was adopted by the Plaintiffs in the year 2020-21 and CA

certificate at page 149 makes reference at serial nos. 9 and 10 to the

combined statements and the burden is upon the Plaintiffs to show

stand alone sales figure. He submits that it is pleaded in paragraph 8

that the products came to be known by the Plaintiff No. 1's customers

as "AROME" which cannot be accepted as the same is different from

the abbreviations or the extension which were used by the Plaintiffs.

He submits that for purpose of passing off, the prior, continuous use

had to be shown which is not shown. He submits that the invoices

annexed to the plaint are pertaining to the mark "AROCHEM" and the

invoices from page 118 makes reference to various extensions of

"AROME" but not the registered marks.

20. He would further submit that it is not the Plaintiff's case

that the Plaintiffs were not aware of the existence of the Defendants

and the Defendant No. 2 was an ex-employee in the year 2017-2018

when the word mark "AROME" was not in use. He would submit that

the opposition to the various marks of the third parties annexed at

page 158 of the plaint have not been adjudicated on merits. He would

submit that the Defendant's company was incorporated in January-

2023 and the invoices are of April-2023. He submits that the

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comparison shown in the trade magazines which though show products

were displayed on consecutive pages however the same are at

different pages in the trade magazine and have been placed side by

side in the plaint. He submits that bare comparison of the marks would

indicate that there is no similarity. He submits that the suit has been

filed in the year 2024 and therefore there is acquiescence. He submits

that reliance placed upon the whatsapp messages sent to his

employee to demonstrate that the Defendants to show association

with the Plaintiff cannot be believed as the employee would be

knowing that the Defendants are not associated with the Plaintiffs.

21. He would further submit that ad-interim relief granted in

terms of prayer clause (c) cannot be granted in suit for infringement of

trade mark and only reliefs set out in Section 135 of the T. M. Act can

be granted. He submits that even assuming that such a relief could be

granted there is no case made out of any inducement or poaching and

only job offer was given. He submits that even if the Interim

Application is not dismissed prayer clause (c) cannot continue. In

support he relies upon the following decisions:

1. Phonepe Private Limited vs. EZY Services8

2. Delhivery Private Limited vs. Tresure Vase Ventures Pvt. Ltd. 9

8 2021 SCC Online Del 2635 9 2020 SCC Online Del 2766

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3. Paramjeet Singh Nande vs. Paramount Toys & Ors.(Order of this Court

in OOJC Interim Application (L) No. 35055 of 2023 dated 10 th June,

2025.)

4. M/s Gufic Ltd vs. Clinique Laboratories, LLC ( Order of Delhi High

Court in FAO (OS) 222/2009 dated 9th July, 2010).

5. Ayushakti Ayurved Pvt Ltd vs. Hindustan Lever Limited10

6. Marico Limited vs. Agro Tech Foods Limited 11

7. Honda Motor Company Limited vs. Kewal Brothers12

8. Sun Pharmaceuticals Industries Ltd vs. Emcure Pharmaceuticals Ltd. 13

9. G. M. Sheik vs. M/s. Raja Biri Private Ltd ( Order of Kerala High Court

At Ernakulam in FAO No. 94 of 2022 dated 31st August, 2022)

22. In rejoinder, Mr. Tulzapurkar, would point out the pleadings

in the plaint that the essential features of the Plaintiff's label is

"AROME". He would submit that the invoices of the Defendant would

show the prominence to the word "AROM". He would further submit

that the definition of the mark under Section 2(1) (m) read with 2(1)

(zb) (ii) of the T. M. Act includes a name. He submits that there is no

relief which is claimed in respect of "AROCHEM" and the same was

10 2003 (5) Bom. C. R. 523 11 2010 SCC Online Del 3806 12 1999 SCC Online Cal 536 13 2012(2) Mh.L.J

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brought in as the word "ALCHEMIST" subsumes the mark "AROCHEM".

He submits that as far as prayer clause (c) is concerned, the provisions

of CPC permit combining of causes of action.

REASONS AND ANALYSIS:

23. The Plaintiff's case is that the mark "AROCHEM" was

adopted by its pre-decessor in the year 1969 in respect of perfumes

and fragrance products which came to be registered as trade mark in

the year 1996 and subsequently its variants and abbreviated forms

were registered. The word "AROCHEM" is also part of the Plaintiff's

trading name. In so far as "AROME" is concerned, the mark is stated to

be used by the Plaintiffs in March, 2021 and the registration of the

word mark "AROME" was applied on 8 th March, 2021. The Plaintiff's

case is that the Defendant's mark "AROM" is deceptively similar to the

Plaintiff's marks "AROCHEM" and "AROME" and is used in respect of

identical goods. The prayer clause seeks injunction restraining the

Defendants from using the mark "AROM" or the corporate name

"AROM" or the domain name 'aromapl.com' and/or AROCHEM and /or

AROME on the products or an identical or deceptively similar mark.

24. Though the pleadings in the plaint refer to the Defendant's

mark as "AROM", in paragraph 30 of the plaint, the rival marks are

reproduced and it is pleaded that the Defendants are using the mark

"AROM" prominently in its corporate name with "ALCHEMISTS" in small

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font. The pleadings give prominence to the word "AROM" which is part

of the impugned mark in order to demonstrate the deceptive similarity

between the Plaintiff's registered mark and the Defendant's mark,

while setting out rightly the Defendant's trademark and corporate

name.

25. The Plaintiffs claim infringement of its trade marks

"AROCHEM" and "AROME" by the Defendants. The rival marks are

reproduced hereinbelow for comparison:

PLAINTIFF NO. 1'S MARK: IMPUGNED MARKS AS USED ON INFRINGING GOODS:

AROCHEM /

26. The registration of the Plaintiff's mark "AROCHEM" is

prima facie since the year 1969 with the earliest registration of the

year 1996 and the mark "AROME" was applied for registration on 8 th

March, 2021. The Defendant's use of the mark "AROM ALCHEMISTS" is

admittedly of the year 2023 and the application was filed on 12 th May,

2023 with proposed to be used claim. Section 28 of the Trade Marks

Act, 1999 confers on the proprietor of validly registered trade mark

the exclusive right to use the trade mark in relation to goods and

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services in respect of which it is registered and take action for

infringement. Section 29 of the Trade Marks Act, 1999 governs the

infringement of the registered trade mark and provides that there is

infringement when the mark used by the Defendant is identical or

deceptively similar to the Plaintiff's trade mark and is used in relation

to goods and service in respect of which the trade mark is registered.

Where there is identity with the registered trade mark and identity of

goods or services covered by such registered trade mark, there is

presumption of confusion being caused amongst the public and likely

association with Plaintiff's goods.

27. The test to be applied in order to determine the deceptive

similarity/identity of the rival marks is to ascertain the essential

features of the registered trade mark and to consider whether the

Defendant has copied/adopted the essential feature of the Plaintiff's

mark. In the examination report of the Defendant's application for

registration of the word mark "AROM ALCHEMIST" and device mark

"AROM ALCHEMIST", the Plaintiff's mark is cited as conflicting mark.

The objection raised by the Trade Mark Registry under Section 11(1)

accepts that prima facie the Defendant's mark "AROM ALCHEMISTS" is

identical or similar to the Plaintiff's trade mark in respect of

identical/similar goods and there exists a likelihood of confusion and

likely association with the registered trade mark. Even accepting that

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the extensions of the mark "AROME" were applied for registration by

the Plaintiffs subsequent to April-2023, the Plaintiff's mark "AROME"

was applied for registration on 8th March, 2021. It is this mark which will

have to be considered against Defendants mark "AROM ALCHEMIST" in

order to ascertain whether the essential feature have been copied.

There cannot be any debate of the Plaintiffs being registered

proprietor of the mark and entitled to sue for infringement of the

mark. Though it is sought to be contended that the Defendants have

applied for rectification of the Plaintiff's mark, the same is immaterial.

For the purpose of challenging the validity of the registration this

Court in the case of Lupin Limited vs. Eris Lifesciences Pvt. Ltd (supra)

has left very small window for the Court to consider the invalidity only

where the same is ex-facie illegal and fraudulent so as to shock the

conscience of the Court. The Defendants have not argued on the

invalidity of the registration and certainly not in manner which would

fit the Defendant's case in the small window which is left open by the

principles of Lupin Limited vs. Eris Lifesciences Pvt. Ltd (supra). The

decision of Marico Lomited vs Agro Tech Foods Limited (supra) is of

Delhi High Court and what would bind this Court is the Full Bench

decision of Lupin Limited vs. Eris Lifesciences Pvt. Ltd (supra). The

defence that the registered mark is mis spelling of the routine generic

word AROMA which is devoid of distinctiveness cannot be accepted as

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the mis spelling of generic word AROMA cannot be "AROME" which

differs from AROMA. The mis-spelling of the generic word AROMA

would likely be AAROMA or maybe AROMAH or such. A mis-spelling of

word is not likely to be considered as invented word if phonetically it is

similar to well known word. The Plaintiff's mark 'AROME' is not

common dictionary word and is not even pronounced as aroma but has

pronouncement different from the pronouncement of the common

word Aroma.

28. There is phonetic similarity between the words AROME

and AROM as both are likely to be similarly pronounced. It is unlikely

that the consumer would refer to the Plaintiff's registered mark as Ae-

ro-me and not Ae-rom. Section 29(9) of Trade Marks Act, 1999 provides

that where the distinctive elements of the registered trade mark

consists of or include words, the trade mark may be infringed by

spoken use of those words. The contention that the Defendant's mark

is "AROM ALCHEMIST" and not "AROM" does not assist the case of the

Defendants as the manner in which the mark is used by the Defendants

would indicate that the word "AROM" is prominently displayed in bold

font whereas the word "ALCHEMISTS" is depicted in smaller font. The

word "ALECHEMISTS" also does not form part of domain name of the

Defendants which is "www.aromapl.com". The invoices which are

annexed by the Defendants to their affidavit in reply prima facie shows

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the distinct manner in use of the mark "AROM ALCHEMISTS" which till

September, 2023 was used on the tax invoices in similar sized font and

from October, 2023 the device mark of "AROM ALCHEMISTS" is used,

where the word "AROM" has been given prominence.

29. The addition of the word "ALCHEMISTS" is immaterial for

purpose of considering the case of infringement of the trade mark as

the Plaintiff's mark "AROME" is subsumed in the Defendant's mark

"AROM ALCHEMISTS" and there is deceptive similarity. Prima facie

there is phonetic similarity and deceptive resemblance between the

rival marks. [See Ruston & Hornsby Ltd vs. The Zamindara Engineering

Co (supra)]. In the case of M/s Gufic Ltd & Another vs Clinique

Laboratrories, LLC and Anr(supra), the rival marks were CLINIQUE and

SKINCLINIQ. The Delhi High Court considered the whole mark Skincliniq

to hold that there cannot be dissection of the mark into "skin" and

"cliniq" and then to compare the parts. The proposition of law is well

settled that what is required to be considered are the essential

features and it is sufficient if the impugned mark bears an overall

similarity to the registered mark. The application of the settled

principles to facts of each case would differ depending on the marks

produced for comparison. Pertinently, the Delhi High Court held that

the word skincliniq is one word and not two separate words, which is

not so in the present case. The same factual scenario existed in the

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case of Ayushakti Ayruved vs Hindustan Lever (supra) where it was

held that it is not possible to ignore both parts and there is no way that

the the word Ayushakti can be pronounced without pronouncing

shakti.

30. The test of infringement is matter of first impression and

in so far as the Plaintiff's mark is concerned, the same is word mark

"AROME" and apart from this word there are no other material and it is

this word "AROME" which constitutes the single, prominent, essential

memorable feature of the Plaintiff's mark. There is no question of

dissecting the Defendant's mark as the Plaintiff's entire mark has been

subsumed in the Defendant's mark. The Defendant having copied

phonetically and deceptively similar mark "AROM" though by adding

the words "ALCHEMIST" infringes the Plaintiff's registered trade mark.

There is no quarrel with the principles laid down in Phonepe Private

Limited vs EZY Services and Another (supra) and when the principles

are applied to the present case, it is evident that the dominant part or

the essential feature of the Plaintiff's registered trademark i.e.

"AROME" has been copied by the Defendants.

31. The manner in which the mark has been used by the

Defendants, prima facie makes it clear that the same is used in the

sense of trade mark and not descriptive of the product. What is

important in case of infringement is not the Defendant's intention in

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using the particular words, whether as a trademark or as a description

of goods, but how consumers are likely to see them i.e. likelihood of

confusion that the particular use of the words may cause in the mind of

the consumer. The prospective consumer would refer to the product

as AROM perfumes or fragrances and would be confused given the

prominence of the word "AROM" by the Defendants on its products.

32. The contention of honest and bonafide adoption of the

mark by the Defendants is required to be taken with a pinch of salt. It is

not open for an ex-employee to feign ignorance of the marks adopted

by its erstwhile employer as the Defendants were aware of existence

of the Plaintiffs. Accepting prima facie that the mark "AROME" was

adopted subsequent to the Defendant's exit from the Company, it is

incomprehensible that the Defendants were totally unaware of the

adoption of the mark "AROME" by the Plaintiffs in the year 2021.

Having commenced similar business in the year 2023 and being a late

entrant, it was duty of the Defendants to conduct necessary search of

the Trade Mark Registry to ascertain that there is no conflicting mark

before adoption of its own trade mark. Even if the Defendant No. 1 was

incorporated in the year 2023 and started its business in April-2023, by

that time the Plaintiffs had already registered its mark and was using

the same since 2021. It is therefore difficult to digest that the adoption

of the deceptively similar mark as that of its erstwhile employer is a

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honest adoption in respect of identical goods. It is also pertinent to

note that the application for registration of the mark "AROM

ALCHEMISTS" was as device mark and the word mark was objected by

reason of Section 11 of the T. M. Act citing the Plaintiff's mark as

conflicting mark which ought to have put the Defendant to caution.

Despite thereof the Defendants having adopted the deceptively similar

trade mark has done so at its own peril.

33. As regards the submission that the Defendants have no

intention to use the mark "AROM" as stand alone mark, it makes no

difference when it is prima facie found that there is deceptive similarity

between the two marks and the addition of word "ALCHEMIST" is

immaterial. The manner in which mark is used by the Defendants would

indicate prominence given to the word "AROM" and the smaller font in

which the word "ALCHEMISTS" has been used indicates an intent to

highlight the registered mark "AROME". The deletion of single

alphabet "E" from "AROME" is insignificant as the infringement has to

be tested not only visually and also by sound. The use of the trade

mark by the Defendants is in trademark sense and is not descriptive so

as to avail of the defences under Section 30 and Section 35 of the

Trade Marks Act, 1999. The fact that the Defendants have applied for

registration of its mark indicates that the mark is not descriptive and is

used in trade mark sense. The reliance on the advertisement of incense

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media which indicates participation by two entities Aroma Atsiri and

Affarom to prima facie hold that the registered trade mark is common

to the trade. It is settled by the decision of Jagdish Gopal Kamath vs

Lime & Chilli Hospitality Services (supra) that to succeed, the

Defendant must establish that the marks on which it relies are many

and that they are in extensive use and that they have, by reason of the

wide usage passed into the realm of the generic to the extent that

they can no longer be used to describe any particular user. It is not

enough to merely show some use and the Defendant must show use by

the trade that is extensive.

34. The matter has to be viewed from the perspective of an

average consumer with imperfect recollection and when brought

across the counter the consumer would ask for the product with the

name AROM/(E) and would not refer to the entire mark as "AROM

ALCHEMISTS". What immediately strikes the eye when the Defendant's

trade mark is seen is the word "AROM" and not the entire mark "AROM

ALCHEMISTS". The probable effect on an average consumer is to be

considered and in view of the deceptive similarity prima facie an

average consumer is likely to be confused as to the origin of the

product. Once the impugned mark is found deceptively similar to the

Plaintiff's registered trade mark, no equitable plea can be raised of

honest adoption of the mark. The Plaintiff in the suit for infringement

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is only required to show that the mark is registered. (See Lupin Limited

vs Eris Lifesciences Pvt Ltd)

35. As regards the registered mark "AROCHEM" is concerned ,

there are no submissions canvassed by Mr. Tuljapurkar on the

impugned mark being deceptively similar to "AROCHEM" and this Court

has therefore not considered the same.

36. In the pleadings even if there is no specific reference to the

essential features of the Plaintiff's registered mark "AROM", it is duty

of the Court while ascertaining whether case for infringement is made

out to ascertain the essential features of the registered mark and then

compare the rival products to arrive at a finding as to whether the

marks are identical or deceptively similar. In the plaint though the

pleadings blur the distinction by referring to the Defendant's mark as

"AROM" instead of "AROM ALCHEMISTS" the reference is obviously to

the essential feature of the Plaintiff's mark which has been copied by

the Defendants. The Defendants have properly understood the case of

the Plaintiffs and have responded accordingly.

37. As regards the action of passing off is concerned, for the

purpose of passing off it is essential for the Plaintiffs to demonstrate

the goodwill and the reputation acquired in the trade mark "AROME"

when the defendants adopted the trademark and to show that the

Defendant's use of the mark is designed to mislead the public in

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believing that the Defendant's goods are the Plaintiff's goods. The

relevant date for the purpose of considering the aspect of passing off

is the date of adoption of the mark by the Defendant. [See Honda

Motor Company Ltd vs Kewal Brothers & Anr(supra)]. In the present

case the Defendant's claim to have commenced the use of the mark in

January-2023 and/or 5th April, 2023, if we consider the invoices which

are placed on record. It was therefore necessary for the Plaintiffs to

demonstrate the goodwill and the reputation as of the year 2023 in

respect of its trade mark "AROME".

38. The Plaintiff had applied for the registration of the mark in

the year 2021 and the sales figure and advertisement expenses which

have been placed at page 149 of the Plaint is combined sales figure and

the promotional expenses. There is no bifurcation of the sales figures

and promotional expenses in respect of the Plaintiff's product

marketed under the mark "AROME". It was necessary to show that the

Plaintiffs have generated such goodwill and reputation in respect of its

products marketed under the mark "AROME" that the public associates

the mark "AROME" with that of the Plaintiff's goods. Firstly the

registration was applied only in the year 2021 and therefore

immediately within a period of one or two years, it cannot be said that

the mark "AROME" had earned substantial goodwill and reputation

that the public identifies the mark with that of the Plaintiff's goods

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alone. The sales figure and advertisement expenses which are placed

on record is a combined sales figure and not the stand alone figure and

therefore even from the sales figure it cannot be prima facie deduced

that public had started associating the mark "AROME" with that of the

Plaintiff's product. In passing off action as held by the Hon'ble Apex

Court in the case of Ruston & Hornsby Ltd vs. The Zamindara

Engineering Co (supra) the question to be asked is whether the

Defendant is selling the goods so marked as to be designed or

calculated to lead purchasers to believe that they are the Plaintiff's

goods. For the said purpose, it is necessary to demonstrate that the

Plaintiffs have achieved substantial goodwill and reputation qua the

registered mark which has not been prima facie demonstrated in the

present case.

39. It is also necessary to show prior continuous uninterrupted

use from 2021 which has not been prima facie shown in the present

case. The invoices which are annexed to the plaint for the year 2021

bearing the mark "AROME" are only three invoices which prima facie is

not an indicator of continuous uninterrupted use. In so far as the

domain name "aromapl.com" is concerned, the principles applying in

respect of infringement of trademark apply to tradename also. The

Defendants have used the generic word aroma as part of their

tradename which cannot prima facie be said to constitute infringement

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of the Plaintiff's registered mark "AROME".

40. In so far as the prayer clause (c) granted by the order of

25th November, 2024 is concerned, prayer clause (c) seeks an injunction

against the Defendants from inducing the Plaintiff's employees to

breach contractual obligation and join the services of the Defendant.

Without going into the question as to whether the Whats-app

messages sent by the Defendants to the Plaintiff's employee were sent

to induce or misrepresent the Defendant's association with the

Plaintiff, what is significant is that the relief cannot be granted under

Section 135 of the T. M. Act. Under Section 135 of the T. M. Act the

reliefs which can be granted includes injunction and at the option of

the Plaintiffs either damages or an account of profits together with or

without any order for further delivery of the infringing labels and

marks for destruction or erasure. In a suit for infringement and passing

off the relief which have been prayed for in clause (c) cannot be

granted. The contention that the causes of action can be combined

cannot be accepted as no such relief can be granted in the suit for

infringement of trade mark and passing off. It is not case of breach of

confidentiality information by any of the employees which would fall

within the jurisdiction of the Court dealing with the intellectual

property rights.

41. In so far as acquiescence is concerned, the contention

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stands sufficiently answered by the decision of Delhi High Court In

Hindustan Pencils (P) Ltd vs India Stationery Products Company (AIR

1990 Del 19) , where the Delhi High Court held that in law, the question

arises where the proprietor of a mark, being aware of his rights and

being aware that the infringer may be ignorant of them, does some

affirmative act to encourage the infringer's misapprehension so that

the infringer worsens his position and acts to his detriment. It held that

a mere failure to sue without a positive act of encouragement is no

defence and is no acquiescence. A Defendant who infringes the

plaintiff's mark with knowledge of that mark can hardly be heard to

complain if he is later sued upon it. A Defendant who begins an

infringement without searching the trade marks register is in no better

a position.

42. In light of the above discussion, the Plaintiffs have prima

facie made out a case for grant of interim relief of infringement of the

mark "AROME". The Plaintiff has failed to make out prima facie case for

infringement of its mark "AROCHEM" or for passing off. Hence, the

Interim Application is allowed in terms of prayer clause (a) except the

bracketed portion as under:

"(a) that pending the hearing and final disposal of the suit, the Defendants, by themselves,, their directors, agents, associates, employees, servants, dealers, stockist, distributors, assignees, licensees,

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all persons claiming through or under them be restrained by a temporary order and injunction of this Hon'ble Court from using in any manner the impugned mark "AROM" or the corporate name "AROM" [ or the website/domain name 'aromapl.com and/or the trade mark AROCHEM] on any goods, label, packaging, advertising, business, corporate name, domain name etc in respect of goods which are covered under registration of Plaintiff No 1's mark and/or any mark which may be identical and/or deceptively similar to Plaintiff No 1's registered trademark and thereby, restrain them from infringing Plaintiff No 1's registered trademarks bearing registration numbers as more particularly stated in [paragraph 7 and] paragraph 9 of the plaint. "

43. Interim application is allowed in terms of prayer clause (a) as

above.

[Sharmila U. Deshmukh, J.]

44. At this stage, request is made for stay of the present order.

Order is stayed for a period of six weeks from today.

[Sharmila U. Deshmukh, J.]

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