This case revolves around a legal dispute concerning trademark infringement, passing off, and unfair competition between ITC Limited and Arpita Agro Products Pvt Ltd. The plaintiff, ITC Limited, sought an injunction against the defendants, alleging that their use of the mark "POWRNYM" was deceptively similar to its registered trademarks "NIMYLE" and "JOR-POWR," which were acquired through a series of agreements. The matter was adjudicated by the Delhi High Court, which delivered a significant ruling on October 8, 2024.

• Factual Background:
  • ITC Limited is a major Indian company engaged in various businesses, including FMCG.
  • The dispute pertains to ITC’s ownership of the trademarks "NIMYLE" and "JOR-POWR," acquired from Arpita Agro Products Pvt Ltd through assignment agreements in 2018.
  • Before the transfer, Arpita Agro Products had been manufacturing and selling herbal floor cleaners under these trademarks.
  • The agreements assigned all rights, including ownership, trade dress, regulatory information, and goodwill, to ITC for ₹100 crores.
  • In 2023, ITC discovered that the defendants had started marketing a floor cleaner under the trademark "POWRNYM," alleged to be deceptively similar to ITC's trademarks.
• Procedural Background:
  • On October 5, 2023, ITC approached the Delhi High Court seeking an injunction against the use of "POWRNYM."
  • The Court granted an ex-parte ad-interim injunction, preventing the defendants from using the mark.
  • The defendants filed an application under Order XXXIX Rule 4 of the CPC, 1908, to vacate the injunction, arguing their mark was distinct.
• Issues Involved in the Case:
  • Whether the defendants' use of "POWRNYM" infringed ITC’s registered trademarks "NIMYLE" and "JOR-POWR."
  • Whether the defendants' branding and trade dress misled consumers into associating their products with ITC.
• Submissions of Parties:
  • ITC Limited:
    • Argued that "POWRNYM" was derived from "NIMYLE" and "JOR-POWR."
    • Claimed the defendants were aware of the marks’ goodwill.
    • Highlighted the defendants' use of similar trade dress, bottle shape, and labeling.
    • Relied on legal precedents such as Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73.
  • Defendants:
    • Argued "POWRNYM" was distinct and coined independently.
    • Claimed "NYM" referred to "NEEM" as an ingredient.
    • Contended that the non-compete clause had expired in 2022.
    • Cited Rhizome Distilleries Pvt Ltd v. Pernod Ricard S.A. France 2009 SCC OnLine Del 3346.
• Discussion on Judgments Cited:
  • Kaviraj Pandit Durga Dutt Sharma v. Navaratna Laboratories (AIR 1965 SC 980) - Phonetic and structural similarities are key in trademark disputes.
  • Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. - Minor variations do not prevent consumer confusion.
  • Midas Hygiene v. Sudhir Bhatia - Clear infringement warrants immediate injunctions.
• Reasoning and Analysis of the Judge:
  • The Court found "POWRNYM" to be deceptively similar to "NIMYLE" and "JOR-POWR."
  • Held that the defendants had prior knowledge of the trademarks and acted in bad faith.
  • Concluded that the similarity in trade dress and packaging could mislead consumers.
  • Determined that the agreements prohibited the defendants from using similar marks.
• Final Decision:
  • The Delhi High Court ruled in favor of ITC and granted a permanent injunction.
  • The defendants’ application to vacate the interim injunction was dismissed.
• Law Settled in this Case:
  • Trademark assignment includes an obligation not to use similar marks.
  • Expired non-compete clauses do not override trademark assignment agreements.
  • Deceptive similarity is assessed holistically, considering phonetic, structural, and visual elements.
  • Consumer confusion, even indirect, is sufficient for granting an injunction.

Case Title: ITC Limited Vs Arpita Agro Products Pvt Ltd 
Date of Order: October 8, 2024
Case No.: CS(COMM) 698/2023
Neutral Citation: 2024: DHC: 2478
Court: Delhi High Court
Judge: Hon'ble Mr. Justice Saurabh Banerjee

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: ajayamitabhsuman@gmail.com, Ph no: 9990389539