The case of Izuk Chemical Works vs. Babu Ram Dharam Prakash, decided by the Delhi High Court on May 11, 2007, is a landmark judgment concerning trademark infringement and passing off. The plaintiff, Izuk Chemical Works, alleged that the defendant had dishonestly adopted a deceptively similar trademark and trade dress, leading to consumer confusion and unfair competition. The case revolved around the trademarks "MOONSTAR" and "SUPERSTAR," with the plaintiff seeking a permanent injunction to restrain the defendant from infringing its registered trademark and copyright. The judgment, delivered by Justice Gita Mittal, set a precedent in protecting proprietary rights in trademarks and labels.

• Factual Background:
  • Izuk Chemical Works, engaged in manufacturing and trading bleaching preparations, cleaning substances, cosmetics, and hair dyes since 1917, used the trademark "MOONSTAR" alongside an artistic device featuring a star in the lap of the moon.
  • The plaintiff secured trademark and artistic label registrations under the Trademarks Act since 1943.
  • Over the decades, "MOONSTAR" gained substantial goodwill and consumer recognition.
  • The defendant, Babu Ram Dharam Prakash, was engaged in a similar business and allegedly adopted the trademark "SUPERSTAR," incorporating similar elements.
  • The plaintiff argued that the defendant’s adoption of "SUPERSTAR" was deceptive and intended to capitalize on its goodwill.
  • The plaintiff presented evidence of extensive use, advertising expenditures, and commercial success, asserting that the defendant copied essential features of its label.
• Procedural Background:
  • The plaintiff filed a suit under Order 39 Rule 1 and 2 of the Code of Civil Procedure, seeking an interim injunction.
  • The Delhi High Court initially granted an interim injunction restraining the defendant.
  • The defendant challenged the injunction, claiming independent creation of its trademark.
  • During proceedings, the defendant submitted an affidavit stating modifications to its label and packaging.
  • The plaintiff argued that despite changes, the use of "STAR" still violated its trademark rights.
• Issues Involved in the Case:
  • Whether the defendant’s use of "SUPERSTAR" constituted trademark infringement and passing off.
• Submissions of Parties:
  • The plaintiff argued that "MOONSTAR" had acquired distinctiveness and consumer recognition.
  • The plaintiff contended that the defendant’s use of "SUPERSTAR" was deceptive and aimed at misleading consumers.
  • The defendant claimed "SUPERSTAR" was an independent mark and bore no deceptive similarity to "MOONSTAR."
  • The defendant argued that its changes to packaging avoided confusion and demonstrated good faith.
• Discussion on Judgments Cited:
  • Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73: Even slight phonetic or visual similarities could cause confusion.
  • Atlas Cycle Industries Ltd. v. Hind Cycles Ltd. (1973 I Delhi 393): Copying essential trademark features constitutes infringement.
  • Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 449): Trademarks must be analyzed from the perspective of an average consumer with imperfect recollection.
• Reasoning and Analysis of the Judge:
  • The Court found that "STAR" was a dominant feature in both trademarks, leading to potential consumer confusion.
  • The defendant failed to establish prior use or independent adoption of "SUPERSTAR."
  • The defendant’s initial packaging closely resembled the plaintiff’s, indicating an intent to mislead consumers.
  • Trademark law aims to protect both businesses and consumers from deceptive similarities.
  • The defendant’s label modifications did not absolve it of liability.
• Final Decision:
  • The Delhi High Court ruled in favor of the plaintiff.
  • A permanent injunction was granted, restraining the defendant from using "SUPERSTAR" or any deceptively similar mark.
  • The defendant was also barred from using any misleading trade dress, packaging, or design.
• Law Settled in this Case:
  • Even partial similarities in trademarks can lead to consumer confusion and infringement.
  • The dominant feature of a trademark is crucial in determining deceptive similarity.
  • Modifying certain aspects of an infringing product does not absolve liability if core trademark violations persist.
  • Prior use and goodwill play a key role in determining trademark rights.
  • Mere applications for trademark registration do not create legal entitlements.

Case Title: Izuk Chemical Works Vs. Babu Ram Dharam Prakash
Date of Order: May 11, 2007
Case No.: CS(OS) 390/2006
Neutral Citation: MIPR2007(3)8, 2007(35)PTC28(DEL)
Court: Delhi High Court
Judge: Hon’ble Ms. Justice Gita Mittal

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