Introduction:

India, as a mixed market, has a diverse range of industries that function on a free-market basis. In the market system, there is fierce competition. Any business that wants to succeed in the free market must have brand recognition and value. Trademarks are the most straightforward way to accomplish this. However, the Squatting of trademarks and registering of identical and/or deceptively similar trademarks has been a never-ending problem for registered and prior users of trademarks in recent years. Any application for registration of a trademark that is identical or deceptively similar to an already registered brand in order to profit from goodwill and reputation is considered bad faith. Walmart Apollo LLC. Vs. Aayush Jain & Anr. (2021) is a recent case in which Walmart Apollo (Plaintiff) sued Aayush Jain & Anr. (Defendant) for trademark and copyright infringement over its marks in the Delhi High Court.

Factual Background:

Plaintiff is a wholly-owned subsidiary of Walmart Inc. and the world's largest retailer, with a global network of massive discount department stores, e-commerce stores, and brick-and-mortar retail and wholesale outlets selling a wide range of goods, including but not limited to home decor items. Under the corporate name and trading style "WAL-MART/WALMART," Plaintiff runs over 10500 outlets under 48 banners in 24 countries. Plaintiff describes their emblem as a yellow spark, which represents invention, creativity, and diversity. Plaintiff became aware of a trademark application for hosiery and ready made items, undergarments as defined in Class 25 under the name "WMART." Plaintiff has filed an opposition before the Registrar of Trademark, which is now pending.

Defendants have submitted another application for the identical mark "WMART" in Class 35, as stated. Defendants are in the business of brick-and-mortar stores as well as online clothing and home accessory sale, and they use the trademark "WMART" with the same spark logo as used by Plaintiff. Defendants operate a website at http://www.wmartretail.com, where they advertise and recruit customers using the Impugned Marks as well as on defendants' social media sites, and sell online through an e-commerce platform. Plaintiffs claimed that after receiving cease-and-desist letters, Defendants continued to use the infringed marks.The plaintiff's case was prima facie, and they filed a suit against the defendants under the Trade Marks Act, 1999, and the Copyright Act, 1957, seeking a permanent injunction, infringement of trademark, infringement of copyright, passing off, declaration of a well-known mark, and rendition of account of profits in relation to its trademark WALMART/WAL-MART.

Issues in the case:

  1. Whether there is a prima facie case under Trademark Protection for the plaintiff?
  2. Whether the application brought against the defendant legal?
  3. Whether a lawsuit involving a comparable trademark fit under the act's trademark infringement category?

Held:

Compliance of Order 39 Rule 3 of the Code of Civil Procedure (India), [Act No. 05 of 1908], was passed, and the court ordered and stated that the defendants, their successors, servants, agents, licensees, franchisees, representatives, sister concerns, assignees, and anyone acting for and/or on their behalf are restrained using the trademarks WMART and/or any other mark deceptively similar/identical to the Plaintiff's trademarks WAL-MART / WALMART, as a trademark/trade name/trading style/domain name with respect to their goods and/or services or in any manner whatsoever, which would amount to infringement of the registered trademark of the Plaintiff and passing off the goods/services of the defendants as the goods/services of the plaintiff.

Analysis

In the case of H&M Hennes &Mauritz AB Anr. v. HM Megabrands Pvt. Ltd. & Ors. (2018),the Plaintiff, a well-known fashion brand with hundreds of shops across the world, adopted the 'H&M' trademark in 1970 and registered it in India in 2005. The Plaintiff claimed that Defendant infringed on their trademark by representing their 'HM' mark with the same red and white colour scheme as the Plaintiff. The Defendant claimed that their use and adoption of the mark was lawful, and that the mark stood for the names of their directors. They also claimed that because the Plaintiff entered the Indian market much later, their mark had not yet established a reputation when they adopted their 'HM' mark in 2011.The Court found in favour of the Plaintiff, holding that a company with a global reputation does not need to open up shop in India in order for its trademark to be protected in India. As a result, the Defendant was barred from utilizing the 'HM' mark or any of its deceptive modifications.

In another case, the domain names owned by the Plaintiff and the Defendant, 'Yahoo!' and 'Yahoo India!' respectively, were practically same and comparable in the case of Yahoo!, Inc. v. Akash Arora & Anr. (1999). The complainant claimed that the similarities would cause consumers to be confused and deceived, leading them to believe that the two domain names were linked. The Delhi High Court ruled that a domain name serves the same purpose as a trademark and is therefore entitled to the same level of protection. According to the court, internet users would be misled and tricked into believing that both domain names are from the same source. The defendant claimed that a disclaimer was posted on its website.However, it was pointed out that a disclaimer alone was insufficient. The plaintiff's name gained individuality and uniqueness as a result of its association with him. The Court ruled in the Plaintiff's favour.

Similarly, the Supreme Court concluded in Neon Laboratories Limited vs. Medical Technologies Limited(2016), that the "first in the market test" has always had priority. Milmet Oftho Industries (2004) and N.R. Dongre v Whirlpool Corpn. (1996) both concluded that the worldwide prior user has priority and supremacy over the registered brand in India. It was decided that the visibility in India of web pages displaying the goods is adequate to prove that purchasers in India or Indians traveling overseas are aware of the product and are likely to identify it with plaintiffs for the purposes of establishing a reputation.

Conclusion

When choosing a trademark, it is critical for everyone to choose one that can easily differentiate their products from those of others. Copying logos and selling goods online and offline, particularly in the clothing and garments segment, has become very common. To avoid confusion and unhealthy competition, an independent and distinctive mark should be adopted so that the general public will not be confused between the two trademarks and can buy genuine and authentic goods.

Walmart Apollo Llc. Vs. Aayush Jain & Anr.: A Case Analysis

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.