ANISH DAYAL, J.

I.A. 16555/2022 (Application Under Order XXXIX Rules 1 & 2 of CPC).

1. This application has been filed under Order XXXIX Rules 1 & 2 read with Section 151 of Code of Civil Procedure, 1908 (“CPC”) by the plaintiff as part of their suit seeking permanent injunction restraining the defendants from trading, selling, marketing or, in any manner, dealing with products including footwear under the mark ‘NEBROS’ (“impugned mark/defendants’ mark”) or any other mark which is identical or deceptively similar to the plaintiff’s trade mark ‘ABROS’ (“plaintiff’s mark”) and other attendant relief.

2. Earlier, post issuance of notice and summons in the suit, this Court on 20th October, 2022 after noticing that both parties claim to be using the marks ‘ABROS’ and ‘NEBROS’ respectively, since 2020, stated in para 6 as under:

“6. The present case would require further consideration, thus it is directed that the Defendants shall restrict their business to Rajasthan, Madhya Pradesh, Gujarat and Haryana and shall not expand the sale of their footwear under the mark ‘NEBROS’ beyond these states till the next date of hearing. The Defendant No.1 shall also restrict online sales, if any, to Rajasthan, Madhya Pradesh, Gujarat and Haryana.”

3. The Court also directed the parties to explore the possibility of an amicable resolution of their disputes and a mediator was appointed for the said purpose. Subsequently, the parties chose to argue this application and submissions were addressed by counsel for parties. The matter was partheard before the Predecessor Bench but was released on 8th January, 2024. Thereafter, this Court heard submissions of both the parties.Brief Facts.

4. According to the plaint, plaintiff is an Indian company with trade name ‘ABROS’, and was incorporated on 14th February, 2020. The business of the company was carried out by a proprietorship in the name of M/s Narmada Polymers, through its proprietor, Anil Sharma.

5. On 15th January, 2021, by a deed of assignment (“assignment deed”), Anil Sharma assigned all rights under the mark ‘ABROS’ to the plaintiff company. Marks assigned by the assignment deed are extracted as under:

6. Plaintiff has since been manufacturing shoes and soles. In the past, it has manufactured soles for several renowned brands in India and is now selling high quality footwear products in India, including in Delhi. Plaintiff has been running its website www.abrosshoes.com since June 18, 2020, and their products are also available on various e-commerce platforms.

7. The predecessor-in-interest of the plaintiff conceived and adopted the mark ‘ABROS’ in March 2017. It was claimed that the letter ‘A’ in the mark signifies the first letter of. Mr. Anil Sharma’s name, who was the eldest brother in the Sharma family, and ‘BROS’ refers to the term ‘brothers’, as the family is involved in running the business.

8. Plaintiff, under the brand ‘ABROS’, offers sports shoes, sandals, and slippers for all genders, making it a family footwear brand. It provides products at an affordable price and claims sales for the years 2020-21 as per the following tabulation:

9. Expenses incurred for advertising, and promotional figures for the year 2020 and 2021, are claimed by plaintiff as under:

10. The plaintiff has obtained registrations in the mark ‘ABROS’ and its various stylised forms, which are tabulated as under:

11. The grievance is against the defendants who are selling shoes under the brand ‘NEBROS’, which the plaintiff claims is a deceptively similar mark for an identical category of products. The trademark search conducted by plaintiff revealed that defendant no.1, Ashish Bansal, had obtained a registration in ‘NEBROS’ bearing no. 4303659 dated 25th September, 2019 in Class 25. The mark was shown to be used on a ‘proposed to be used’ basis, and was registered on 02nd March, 2020.

12. Defendant no. 2, namely Shyam Ji Sharma, trading as ‘Papa Footwear’ is apparently the producer of the products under the impugned mark ‘NEBROS’. Defendant nos. 3 to 6, respectively, are engaged in the business of trading, marketing and selling footwear, including under the impugned mark.

13. Illustrative images of the impugned products being sold under the mark ‘NEBROS’ are tabulated by plaintiff as under:

Submissions on behalf of the parties.

14. To support its user since 2021, counsel for plaintiff drew attention to invoices appended with the suit, which were issued by the plaintiff Company and reflected the trademark ‘ABROS’. In regards to the registration of the site www.abrosshoes.com , the WHOIS status was shown, according to which the website has been registered on 18th June, 2020. Furthermore, the certificate of incorporation was also adverted to.

15. Plaintiff claims phonetic similarity besides prior use. It is further stated that both sides are selling shoes within the range of Rs. 2000/- but plaintiff’s turnover was about Rs. 190 crores, while defendants’ turnover was about Rs. 8.5 crores.

16. Counsel for plaintiff relied upon the principles enunciated in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980, on the issue of essential features of their mark being adopted by defendants. Reliance was placed on principles enunciated in Amritdhara Pharmacy v. Satya Deo Gupta, 1962 SCC OnLine SC 13, to state that the test is that of a man of average intelligence and imperfect recollection. On the issue of phonetic similarity, reliance was placed on the decision in K.R Chinna Krishna Chettiar vs. Shri Ambal & Co. and Ors., (1969) 2 SCC 131. Lastly, on the issue of likelihood of confusion, plaintiff’s counsel placed reliance on the decision in Russell Corpn. Australia Pty. Ltd. v. Ashok Mahajan, (2013) 4 HCC (Del) 301. Applying the rule of anti-dissection, it was further stated that the rival marks could not be dissected for the purposes of examination on phonetic similarity.

17. Defendants’ counsel, however, refuted the said submissions and pointed to paragraph 7 of the written statement wherein it has been stated that the term ‘NEBROS’ was a combined coined term derived from the name of the defendant and his paternal uncle. The paternal uncle was running his business in the name of ‘Nice Footwear’ and was one of the biggest distributors of footwear in Ahmadabad. The paternal uncle had also been a mentor for the defendants, and hence the defendants adopted the letter ‘N’ and ‘E’, and since they were brothers, the word ‘NEBROS’ was coined.

18. Defendants had applied for trademark registration in September 2019, and the mark ‘NEBROS’ was registered in their favour on 2nd March, 2020. It was claimed that no objection was received on the registration of the said trademark. However, plaintiff’s trademark, ‘ABROS’, was objected to by the trademark registry. The defendants claim user since September 2020 and has stated sales figures in the range of Rs 8.5 crores in the year 2021-2022.

19. It was pointed out that the predecessor-in-interest of the plaintiff, M/s. Narmada Polymer, was actually a leading manufacturer of soles of shoes and not shoes and, the use of the brand ‘ABROS’ on shoes started much later. The question of any dishonest adoption, therefore, did not arise.

20. Moreover, defendants’ counsel submitted that the two marks were completely different and the manner of use was also completely different as was brought out by the defendants with the following tabulation:

21. Counsel for defendant pointed out to the Examination Report for trademark registration of the plaintiff’s mark, where the defendants’ mark was not cited, clearly showing dissimilarity between the rival marks, both visual and phonetic. On the contrary, the mark ‘AV BROS’ in Class 25, which is extracted below, was cited when the plaintiff sought registration of its mark ‘ABROS’:

22. In its reply to the said Examination Report, the predecessor-ininterest of the plaintiff stated that the marks were visually and phonetically different. It was, therefore, submitted that the plaintiff had no legs to stand upon. It was pointed out that ‘BROS’ is a common generic word and was used in various trademarks; these marks, registered in Class 25, were provided in defendants tabulation of the search report, which included marks like BROSIX, BROS db, BROSKI, and BROSTAR.

23. To prove user, defendants have produced invoices of 1 st September, 2020, issued by Nice Footwear, carrying their mark ‘NEBROS’ as well. In contrast, plaintiff’s first user has been shown as 1st February, 2021. As regards the ‘proposed to be used’ status in the 2019 application, it was clarified that those were COVID times and, therefore, the products were launched a bit later.

24. Defendants state there is no difficulty in the coexistence of these two marks in relation to footwear as they are dissimilar. Without prejudice to their rights and contentions, defendants’ counsel also submitted that, even assuming without conceding that plaintiff had been the prior adopter of the mark ‘ABROS’, the defendants were clearly the prior users of the impugned mark ‘NEBROS’.

25. To support these submissions, counsel for defendants relied upon several decisions, including an order of the Division Bench of this Court dated 28th January, 2022 in FAO (COMM) 182/2021 titled “Airtec Electrovision Private Limited vs. Sunil Kumar Saluja”; order dated 25th April, 2022 in SLP (C) No. 5709/2022 before the Hon’ble Supreme Court titled “Airtec Electrovision Private Limited vs. Sunil Kumar Saluja”; the decision in S. Syed Mohideen vs. P Sulochana Bai, (2016) 2 SCC 683; Hindustan Sanitaryware and Industries Ltd. vs. Champion Ceramic, 2011 SCC OnLine Del 246; and the decision in Uniply Industries Ltd. vs. Unicorn Plywood Pvt. Ltd. and Ors., (2001) 5 SCC 95.

26. In rejoinder, the plaintiff’s counsel stated that the defendants CA Certificate showing turnover was not of the mark but of the company. Reliance was placed on the decision in Under Armour, INC vs Aditya Birla Fashion & Retail Ltd., 2023 SCC OnLine Del 2269.

27. On co-existence, Section 34 of the Trademark Act, 1999 was adverted to, to state that both conditions must be met: firstly, use by defendant of its trademark must be prior to use by the plaintiff, and secondly, the use by defendants of their trademark must be prior to date of registration for plaintiff’s mark.

28. To this, counsel for defendants stated that Section 34 was a guideline for the Registrar while registering a mark and not for marks to be assessed for the purposes of a suit for infringement.

29. Furthermore, relying on the decision in Pankaj Goel v. Dabur India Ltd., 2008 SCC OnLine Del 1744, plaintiff’s counsel submitted that the argument of that the mark ‘BROS’ is common to trade cannot be taken until the defendants are able to substantiate the claim of third-party use.

30. Counsel for plaintiff further substantiated these submissions by placing reliance on Zydus Wellness Products Limited vs. Cipla Health Ltd. and Anr., 2023: DHC: 4344; Under Armour, INC vs. Aditya Birla Fashion &Retail Ltd., 2023: DHC: 002711; Foot Locker Retail INC vs. Geet Kewalani, 2023/DHC/000802; Neon Laboratories Ltd. vs. Medical Technologies Ltd. and Ors., (2016) 2 SCC 672; Raj Kumar Prasad vs. Abbott Healthcare Pvt. Ltd., 2014: DHC: 4538; Worknest Business Centre LLP & Anr. vs. Ms. Worknests Through Sh Rajesh Goyal, 2023:DHC:2023; Toyota Jidosha Kabushiki Kaisha vs. Prius Auto Industries Ltd. and Ors., 2018 2 SCC 1.

Analysis.

31. Having considered the submissions of counsel for parties and having perused the documents on record, this Court is of the view that plaintiff is not entitled to an injunction in its favour to restrain the defendant from using the impugned mark ‘NEBROS’ for, inter alia, the following reasons.

32. Firstly, there is no distinct phonetic similarity in both the marks and certainly no visual or structural similarity, particularly, in the way the marks have been represented; secondly, the defendants have submitted proof of their user since September 2020, whereas the plaintiff’s first invoice to show their use is since 2021; thirdly, the plaintiff’s submission that it’s mark was used by M/s. Narmada Polymers earlier, since 2017, has not been substantiated by any document on record. In any event, in the written statement, this aspect has been specifically denied and it has been stated that the M/s. Narmada Polymers was merely a manufacturer of soles of shoes. To this there is no specific denial in the replication. Fourthly, the balance of convenience is not in the favour of plaintiff, considering that the defendants have been selling goods since 2020; fifthly, there was also no opposition by the plaintiff to the defendants’ registration and the cited marks in the Examination Report also did not throw up plaintiff’s mark; sixthly, in all cases of infringement, the Trademark Act invites a comparative assessment of two competing marks. In respect of this, reliance may be placed on the exposition by the Court in Swiss Bike VertriebsGmbh Subsidiary of Accell Group v. Reliance Brands Ltd. (RBL), 2024: DHC:1884, relevant paragraphs thereof are extracted as under:

“11. The word ‘identical’ is used usually as an adjective or as a noun. It derives its source from the word ‘identity’, which is etymologically derived from the Latin ‘idem’. ‘Identity’ is defined by the Oxford English Dictionary as “the quality or condition of being identical in every detail; absolute sameness”. The word ‘similar’, on the other hand, is also used as an adjective and as a noun, deriving its source from the French ‘similaire’ or Latin ‘similaris’, and as per the Oxford English Dictionary, means “having a resemblance or likeness; of the same nature or kind”. These are the two operative words which imbue trademark jurisprudence, particularly, Section 29 of the Act.

12. In all cases of infringement, the Act invites a comparative assessment of two competing marks. Such comparison is based on concepts of ‘identity’ and ‘similarity’. If ‘identical’ is taken to mean “absolutely the same” then any mark which is marginally different from the other competing mark would naturally be assessed in the silo of ‘similarity’. While ‘identity/identical’ would be an objective criterion, ‘similar/similarity’ necessitates subjective analysis.

13. In the realm of subjective analysis, Section 29 of the Act further introduces three more concepts to guide in assessment viz. “deceptively similar”, “likely to cause confusion” and “likely to have an association”. Shorn of the verbiage used in Section 29 of the Act, the three concepts can be usefully synopsized as under:

(i) Deceptive similarity: This entails an “intent to deceive”; requires that facts presented by parties be sifted to arrive at a conclusion that defendant adopted a very similar mark to deceive consumers; and is defined under Section 2(h) of the Act as “near resemblance likely to deceive or cause confusion”.

(ii) Confusion: ‘Confusion’ is a state of mind which obliterates the distinction of elements presented before a person.

(iii) Association: ‘Association’ involves a mental connection between related ideas.

14. These aspects have been extensively elaborated upon and discussed in numerous decisions of the Courts as well as in commentaries on trademark law. The attempt here is to understand these concepts fundamentally. Simply put, an assessment of similarity will involve the support of either of these three concepts of ‘deceptive similarity’, ‘confusion’ and ‘association’.

15. Without splitting hairs on the exact placement of these concepts in Section 29 of the Act, it is evident that each of these concepts used for an assessment of similarity will, necessarily, give color to the other, and will not be mutually exclusive to each other.

16. A useful articulation of these inextricably intertwined principles and concepts is found in the opinion of N. Rajagopala Ayyangar, J. in Kaviraj Pandit (supra), which continues to be cited and relied upon by Courts. Relevant paragraphs thereof are extracted below:

…

17. Principles enunciated in the above paragraphs are summarized below:

(a) An action for infringement is a statutory remedy conferred on the registered proprietor of a trademark for vindication of the exclusive right to the use of the trademark in relation to those goods.

(b) In an action for infringement, plaintiff must make out that use of defendant's mark is likely to deceive, but where the similarity between plaintiff's and defendant's mark is so close either visually, phonetically, or otherwise, and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that plaintiff's rights are violated.

(c) If defendant adopts the essential features of plaintiff's trademark, that the get-up, packing and other writing or marks on the goods or on the packets in which goods for sale are offered show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark, would be immaterial.

(d) Once use by defendant of the mark which is claimed to infringe plaintiff's mark is shown to be “in the course of trade”, the question whether there has been an infringement is to be decided by comparison of the two marks.

(e) Where the two marks are identical, no further questions arise, for then the infringement is made out.

(f) When the two marks are not identical, plaintiff would have to establish that the mark used by defendant so nearly resembles plaintiff's registered trademark as is likely to deceive or cause confusion in relation to goods in respect of which it is registered.

(g) A point has sometimes been raised as to whether the words “or cause confusion” introduce any element which is not already covered by the words “likely to deceive” and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words “likely to deceive”.

(h) In an action for infringement, the onus would be on plaintiff to establish that the trade mark used by defendant, in the course of trade in the goods in respect of which his mark is registered, is deceptively similar.

(i) This is necessarily to be ascertained by a comparison of the two marks - the degree of resemblance which is necessary to exist to cause deception is not capable of definition by laying down objective standards.

18. All these elements articulated by Ayyangar, J., continue to form the fundamental bedrock of an assessment of trademark infringement. Embellishments, analysis, articulation, substantiation aside, the assessment is in a well-defined matrix. It is the element of subjectivity which invites these additional supplementations by Courts. However, as most case law on the subject would bear out, the final plank is always that matters need to be assessed on a case-to-case basis, therefore, the dive now into the facts of the matter.”

(emphasis added)."

33. It is reiterated that there is no visual/structural/phonetic similarity between the two marks, the commonality of word ‘BROS’ would not trigger any confusion, even in a person of average intelligence and imperfect recollection. Further, these two marks are used by both parties in different forms, with different devices/logos by both the parties.

34. In this regard, reliance by defendant on para 27 of S. Syed Mohideen (supra) is apposite, in that, between two registered proprietors, the issue would essentially be of passing off, and the threshold will be higher for the plaintiff. Furthermore, plaintiff’s case, in case of a prior user by defendant, would not subsist even assuming there is deceptive similarity. The relevant extract from S. Syed Mohideen (supra) is produced below:

“27. Sub-section (3) of Section 28 with which we are directly concerned, contemplates a situation where two or more persons are registered proprietors of the trade marks which are identical with or nearly resemble each other. It, thus, postulates a situation where same or similar trade mark can be registered in favour of more than one person. On a plain stand-alone reading of this Section, it is clear that the exclusive right to use of any of those trade marks shall not be deemed to have been acquired by one registrant as against other registered owner of the trade mark (though at the same time they have the same rights as against third person). Thus, between the two persons who are the registered owners of the trade marks, there is no exclusive right to use the said trade mark against each other, which means this provision gives concurrent right to both the persons to use the registered trade mark in their favour. Otherwise also, it is a matter of common sense that the plaintiff cannot say that its registered trade mark is infringed when the defendant is also enjoying registration in the trade mark and such registration gives the defendant as well right to use the same, as provided in Section 28(1) of the Act.”

(emphasis added)."

35. Aside from infringement, if the rival marks are to be tested on grounds of passing off, the distinguishing features would be determinative and significant. Differences in physical appearance of goods or the manner in which they are packaged, the get up, or the presentation of the marks, all become relevant for assessment. Further, the plaintiff has not presented any evidence to show that there is actual confusion in any section of consumers, i.e. the nature and extent of any actual confusion. This has been considered as a relevant consideration by a Division Bench of this Court in Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers Pvt. Ltd., 2015 SCC OnLine Del 10164, in Para 4(iii), as also in Para 9 (where the Court lists out the Du Pont factors, Polaroid factors, Sleekcraft factors, which had been articulated by the Courts in the United States of America and have been cited with approval by Indian Courts). Para 4 of Shree Nath Heritage (supra) is extracted below, for ease of reference:

“4. It would be profitable to quickly summarize the general principles applicable in trademark cases, and we could do no better than distillate them from McCarthy on Trademarks and Unfair Competition, Ed. IV:

i. Likelihood of confusion (i.e. confusion is probable and not simply possible) is the standard for both trademark infringement and passing off.

ii. Priority of use needs to be considered.

iii. To establish trademark infringement and/or passing off in most cases (we discuss one statutory exception where confusion is presumed by court below) it needs to be shown that an appreciable number of buyers and not the majority of buyers are likely to be confused. Even 1% of India's population will be an appreciable number of buyers.

iv. Likelihood of confusion may be proved in many ways, such as:

• Through survey evidence;
• By showing actual confusion;
• Through arguments based on a clear inference arising from a comparison of the marks in question and the context in which the marks are used;
• Under Section 29 of the Trademarks Act, 1999, confusion is presumed if the marks are identical and are used for identical goods/services.”

(emphasis added)."

36. Further, the following relevant observation has been made in Para 11 of the Shree Nath Heritage (supra):

“11. The Supreme Court has cautioned that weightage to be given to each of the above factors should depend upon the facts of each case and same weightage cannot be given to each factor in every case. The above Cadila factors for passing off have not been specifically applied to trademark infringement cases.”

(emphasis added)."

37. Essentially, the Division Bench, in relying on the principles enunciated by the Hon’ble Supreme Court in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, and the factors laid down by the American Courts, was underscoring that a holistic global consideration and assessment needs to be made rather than giving excessive weightage only to isolated factors for assessment of infringement and/or passing off. This theme of integrated, holistic assessment, rather than a compartmentalized approach is echoed by a Single Judge of this Court in AMPM Fashions (P) Ltd. v. Akash Anil Mehta, 2021 SCC OnLine Del 4945, in particular in para 61, 62, where the Court while applying the “global appreciation” test held as under:

“61. When applying the test, one has to make a “global appreciation”. The “global appreciation” test requires one to examine, inter alia, the following facets, albeit, holistically as they are inter-dependent:

(i) The degree of visual, aural and/or conceptual similarity between the marks.

(ii) The overall impression created by the marks.

(iii) The impact that the impugned marks have on the relevant public i.e., the matter should be considered through the eyes of an average consumer, who would buy or receive the goods or services.

(iv) The distinctive character that the infringed mark has acquired i.e. either because of the mark per se or on account of reputation that it has enjoyed in the public space.

(v) That the average consumer has an imperfect recollection.

(vi) The degree of similarity between the goods or services, which are purveyed under the rival marks.

62. It needs to be emphasized that, while evaluating the aforesaid facets, one has to bear in mind the global/composite appreciation test, which enjoins that each of them is inter-connected and explicable, as a whole. In other words, an integrated rather than a compartmentalized approach is required to be adopted. The proclivity of giving weight to one facet as against the other facet(s) is to be abjured. It is only an overall evaluation of all facets which helps in ascertaining, whether or not there is a likelihood of confusion. Likelihood of confusion would arise, if there is a risk of the relevant consumers/public believing that the goods or services offered by the defendants originate from the plaintiff or in some way, are economically or commercially linked to the plaintiff.”

(emphasis added)."

38. This Court resonates with the “global appreciation” test, in other words, a “holistic assessment” than a skewed weightage to an isolated factor or test. Adversarial submissions by parties are prone to focus on one or the other factor to rest substantiate their case. But this should not preclude the Court from inviting an encouraging, a wider, composite assessment. This will also be in consonance and, in fact, is the theme embedded in the much quoted, cited, and approved exposition by Parker J. in Pianotist Co. Application, (1906) 23 RPC 774, and extracted hereunder:

“You must take the two words. You must Judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.”

Conclusion.

39. For these and other reasons as stated above, the plaintiff is not entitled to an injunction, at least at this prima facie stage. If the injunction as prayed for is granted, serious prejudice would be caused to defendants, who have already established their business under the impugned mark ‘NEBROS’ after due registration, without any opposition from the plaintiff.

40. In view of the facts and circumstances stated above, the instant application being I.A. 16555/2022 under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 is dismissed and, accordingly, disposed of. The interim direction, as extracted in paragraph 2 above, shall no longer operate on the defendants.

CS(COMM) 702/2022, I.A. 10189/2023 & I.A. 10190/2023.

1. List on 15th July, 2024 before the Joint Registrar.

2. Judgment be uploaded on the website of this Court.