Party Holding Trademark Registration Of A Shape Cannot Be Allowed To Monopolise Every Variant Of That Shape: Delhi HC

The Delhi High Court has observed that a party holding a trademark registration in one mark or shape cannot be allowed to monopolise every variant of the said shape. 

In that context, the Bench of Justice Vibhu Bakhru and Justice Amit Mahajan observed that, "The party having registration in one mark / shape cannot be allowed to monopolise each and every variant of the said shape only because both happened to be flowers. If that argument is accepted then the respondents would be entitled to seek injunction against every manufacturer who wants to manufacture a confectionary in a shape of a flower."

Counsel Raunaq Kamath and Counsel Sauhard Alung appeared for the appellants, while Counsel Shailen Bhatia, among others, appeared for the respondents. 

In this case, the appeal involved M/s. Suman International contested a Commercial Court's order, in which the Court granted the Respondents’ Application under Order XXXIX Rules 1 & 2 of CPC, thereby restraining the Appellants from activities like manufacturing, selling, and advertising goods bearing the impugned mark, deemed to infringe on the registered trademark of Respondent no.1. Both parties operate in the confectionery business.

Respondent no.1, Mahendra Gulwani, claimed exclusive rights over a distinctive rose-shaped lollipop and related trademarks. The respondents argued that the appellants' product, 'SWEET ROSE LOLLIPOP,' is deceptively similar, which caused confusion. The Court, in its October 2021 order, found in favor of the respondents, citing similarities in the product shape and packaging. The Court also noted that the appellants recently launched the contested lollipop, which supported the respondents' infringement claim.

The High Court observed that a party, who takes a risk of getting a registration of a generic word or a shape, runs a risk of the same being used by others.

By extension of the same, the Court observed that, "the respondents have not been able to show the usage of such nature which would make the mark/ shape as distinctive and having acquired a secondary meaning. On the other hand, there is enough material that has been produced by the appellants which, prima facie, shows that the product / lollipop is being manufactured / sold in a shape of a ‘Rose’ / flower from prior in time by many manufacturers"

""The appellants have produced enough material which, prima facie, shows that it is not only the parties in the present case, but many other manufacturers who have been manufacturing and marketing the lollipops in the shape of a flower and more particularly of a rose. The material produced by the appellants include the queries raised with the manufacturers abroad much prior to the claim made by the respondents of having adopted the said shape and also copy of the invoices evidencing the sale of rose shaped lollipop. In addition, the appellants have material produced material downloaded from the internet which is not denied by the respondent. The same shows the extensive use of shape of a ‘Rose’ in respect of a lollipop and other confectionary items.""

In light of the same, the impugned judgment was set aside.

Cause Title: M/s Suman International & Anr. vs Mahendra Gulwani & Anr.

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