Delhi High Court's Prima Facie Opinion of DELHIVERY: Phonetically Generic Word Cannot be Registered
The judgment was passed in Delhivery Pvt. Ltd. v. Treasure Vase Ventures Pvt. Ltd. by a Single Judge Bench of Justice V. Kameswar Rao.
While hearing a trademark infringement suit by Delhivery against Deliver-E, the Delhi High Court formed a prima facie opinion that the mark ‘DELHIVERY’ was a phonetically generic word and thus cannot be registered so as to seek the benefit of statutory rights.
Delhivery contends trademark usage since 2011
Delhivery Private Ltd. petitioned the High Court stating that Treasure Vase Ventures Pvt. Ltd. infringed its trademark, ‘DELHIVERY’. The company contended that it had been continuously and extensively using the trademark ‘DELHIVERY’ for its logistics, transportation, management, etc., since 2011.
Defendant claims mark DELIVER-E inspired from electric vehicles used in the goods delivery process
An ex parte interim injunction was passed by the court in the favor of the plaintiff. The defendant sought vacation of the interim order, the Defendant argued that the mark ‘DELIVER-E’ was inspired by the use of electric vehicles for its passenger and last-mile goods delivery services. Further, the mark had unique stylization, colour scheme etc, and there was no visual or structural similarity between the two marks. The Defendant also claimed that the Plaintiff was creating a false impression that it was the only party in the field using a descriptive word as a trademark.
Delhi HC disallows claim for passing off
The Court made the following observations:
Plaintiff's attempt was to read ‘DELHIVERY’ as ‘DELHI’ and ‘VERY’, thus the mark is different from the generic word ‘delivery’. But, when the claim is that the ‘DELIVER-E’ is deceptively similar to ‘DELHIVERY’, the Plaintiff was relating its mark to the generic word ‘delivery'.
‘DELHIVERY’, when pronounced in a routine manner, meant ‘delivery’, therefore ‘DELHIVERY’ was phonetically a generic word. The plaintiff's attempt to tweak the word in the English language is clearly impermissible. Similar is the position with regard to the mark ‘DELIVER-E’ coined by the defendant. The Court also stated, "...the mark which is phonetically similar to the English word ‘delivery’ does not require any imagination, thought and perception, more so for delivery services."
Whether ‘DELHIVERY’ had achieved "distinctiveness", was a matter of trial.
The clientele of both the parties was capable of differentiating between the two marks and were well informed about market realities.
While clarifying that this was only a prima-facie view and was not an expression on the merits of the suit. The court concluded that the mark ‘DELHIVERY’ is a phonetically generic word and cannot be registered so as to seek the benefit of statutory rights. So, it follows, there cannot be any claim of passing off.
In view of this, the Court vacated the exparte order of interim injunction against the defendant.
Disclaimer: The views expressed in the article above are those of the authors' and do not necessarily represent or reflect the views of this publishing house
Around The World