A critical question in such cases is whether a suit for trademark infringement can be maintained against a defendant who also holds a registered trademark. This article explores this issue through the lens of the case where the plaintiffs, owners of the well-known "HIMALAYA" brand, brought an infringement action against Vlado Sky Enterprise Private Limited, the proprietors of the "HIMALAYAN ORGANICS" trademark. his case underscores the importance of protecting established trademarks from infringement, even when the alleged infringer holds a registered trademark.

The Dispute Between "HIMALAYA" and "HIMALAYAN ORGANICS":
The plaintiffs, a company with a long-standing reputation in the herbal healthcare industry, have been using the "HIMALAYA" trademark since 1930. Their brand is synonymous with high-quality herbal products, enjoying widespread recognition and goodwill in both domestic and international markets. The defendant, Vlado Sky Enterprise Private Limited, registered the trademark "HIMALAYAN ORGANICS" and marketed products under this brand.

The plaintiffs alleged that the defendant's use of the "HIMALAYAN ORGANICS" trademark was deceptively similar to their "HIMALAYA" mark. They contended that the similarity between the marks was likely to cause confusion among consumers, who might mistakenly believe that the defendant's products were associated with or endorsed by the plaintiffs. Moreover, the plaintiffs accused the defendant of imitating their distinctive packaging and overall brand identity, further exacerbating the likelihood of confusion.

Legal Issue: Can an Infringement Suit Be Maintained Against a Registered Proprietor?
A significant aspect of this case is the legal question of whether an infringement action can be maintained against a defendant who is also a registered proprietor of a trademark. The plaintiffs relied heavily on the precedent set in the case of Raj Kumar Prasad and Another v. Abbott Healthcare (P) Ltd., 2014 SCC OnLine Del 7708, wherein the Delhi High Court held that a suit for infringement is maintainable even against another registered proprietor.

In Raj Kumar Prasad, the court observed that mere registration of a trademark does not grant an absolute right to use the mark in a manner that infringes on the rights of another registered proprietor. If a mark is deceptively similar to an existing registered trademark, the latter's proprietor can still seek relief through an infringement action. This principle reinforces the idea that trademark registration does not provide carte blanche to infringe upon the established rights of others.

Court's Analysis and Decision:
In the present case, the court undertook a thorough examination of the facts, focusing on several key factors that ultimately led to the grant of an interim injunction in favor of the plaintiffs:

Long-Standing Use and Reputation of the "HIMALAYA" Trademark:
The plaintiffs demonstrated extensive use of the "HIMALAYA" trademark, dating back to 1930. Over the decades, they had built a global reputation in the herbal healthcare sector, making "HIMALAYA" a household name. The court recognized the substantial goodwill attached to the "HIMALAYA" brand, which was deserving of protection against any form of dilution or confusion.

Deceptive Similarity and Market Confusion:
The court found that the defendant's trademark, "HIMALAYAN ORGANICS," bore a striking resemblance to the plaintiffs' "HIMALAYA" mark. The similarity was not only in the name but also in the overall presentation of the products. The court agreed with the plaintiffs' argument that this resemblance was likely to confuse consumers into believing that the defendant's products were associated with the plaintiffs, thereby infringing on the latter's trademark rights.

Reliance on Precedent:
The court also endorsed the judgment in Raj Kumar Prasad v. Abbott Healthcare (P) Ltd., reaffirming that a suit for infringement is maintainable against another registered proprietor. This legal precedent provided a solid foundation for the plaintiffs' case, underscoring that trademark registration is not an impenetrable shield against infringement claims.

Implications of the Decision:
The court's decision in this case has significant implications for trademark law, particularly concerning the rights and obligations of registered proprietors. It reiterates the principle that registration of a trademark does not confer an unfettered right to use the mark if such use infringes on the rights of another registered proprietor.

Conclusion:
The court's reliance on the Raj Kumar Prasad precedent reinforces the notion that trademark rights are not absolute and must be exercised in a manner that respects the rights of other proprietors. As businesses continue to expand and diversify, it is crucial for trademark proprietors to remain vigilant and proactive in defending their brands against any form of infringement, regardless of the registration status of the competing mark.

Case Citation: Himalaya Wellness Company Vs Vlado Sky Enterprises:13.08.2024 : CS Comm 682 of 2024: Delhi High Court: Mini Pushkarna, H.J

Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539