delhi high court declares itc’s bukhara as a well-known mark

Delhi High Court Restrains NIC Ice Cream from Using the Term ‘Natural’

The Delhi High Court (‘Court’) vide an interim order (dated October 19, 2022) in the case of Siddhant Icecreams LLP & Ors. vs Ameet Pahilani & Ors. [CS(COMM) 735/2022] restrained the defendants from use of the plaintiffs’ trademarks – Natural Ice Cream.

The grievance of the plaintiffs in the instant case concerned the infringement and passing off of its ‘NATURAL’ family of marks (‘NATURAL marks’) due to the defendants (viz. NIC Ice Cream) unauthorized use of such marks in respect of identical products (viz. ice creams) as those of the plaintiffs. 

The plaintiffs claimed prior use of the NATURAL marks in India (since 1984); and stated that such marks were ‘iconic’ and an ‘essential, distinct and prominent feature’ of the plaintiffs’ brand; and prominently associated with the artisanal ice cream products sold by the plaintiff throughout India (including in Delhi) under its award-winning NATURAL brand through various authorized franchisees. The plaintiff further claimed that it owned several trademark registrations (for the NATURAL marks); and that its rights in such marks had been acknowledged by the Indian courts in various cases.

Further, the plaintiff asserted that one of the defendants (viz. Ameet Pahilani, a former franchisee partner of the plaintiff and a proprietor of NIC Ice Cream) had dishonestly adopted and registered the mark ‘NIC Natural Ice Creams’ and the domain name ‘www.nicnaturalicecreams.com which were deceptively similar to the NATURAL marks for the defendants (viz. NIC Ice Cream) business [while having clear awareness that the term ‘NIC’ was an acronym for ‘Natural Ice Cream’]. The plaintiff alleged that the relevant defendants sought to dishonestly trade upon the plaintiffs’ reputation and goodwill in India and misrepresent / pass off their goods (as those of the plaintiffs) to Indian consumers.

The plaintiff also submitted various images to evidence that the defendants (viz. NIC Ice Cream) had employed use of deceptively similar packaging/containers for NIC Ice cream products (as those used by the plaintiff); and further claimed that they had colluded with other relevant defendants (including Google) by using images of the plaintiffs products for online marketing of their products, and by purchasing the keyword ‘Natural’ (notably, through Google’s ‘AdWords’ programme) to increase online traffic for their business – thereby causing harm to the plaintiffs brand.

The Court observed that the plaintiffs may suffer an ‘irreparable loss’ if the defendants’ actions were allowed to continue. Accordingly, the Court deemed fit to pass an order of ex-parte injunction inter-alia restraining the defendants (viz. NIC Ice Cream) from using the NATURAL marks (or any similar or identical marks) – including the use of such marks as part of the domain name ‘nicnaturalicecreams.com’ and as metatags or keywords (under the Adwords programme) – until the pendency of the instant case. The Court also directed the other relevant defendants to ‘ensure’ that no unauthorized use of the NATURAL marks occurred on their respective platforms.

 

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