Dettol v. Devtol: Delhi HC imposed Rs.1 Lakh Cost On Devtol

RECKITT BENCKISER (INDIA) PVT. LTD v. MOHIT PETROCHEMICALS PVT. LTD. & ANR. [1]

Facts:

- The Plaintiff (“Dettol”) has by notice objected defendent (“Devtol”) to use infringe mark as of Plaintiff. Accordingly, Plaintiff approached the Delhi HC.
- The Cousel appearing for Defendant accepted the summons and notice of application sent by Plaintiff.

The Cousel appearing for Defendant said that defendant will not manufacture and/or sell the product i.e., the hand sanitizer under the infringing mark. Furthermore, he said that the defendant has already taken steps to withdraw the infringing mark.
The plaintiff said that he is a manufacturer of a well-known antiseptic which is sold under the registered trademark and logo “Dettol”. The plaintiff has approached this Court seeking various reliefs against the infringing mark and logo i.e. “Devtol”. Also, direction to permanently restrain the Defendant from infringing its trademark.

Decision:

The Court passed a decee of permanent injunction against the defendant with respect to the mark “Devtol” and ordered defendant to recall their present stock in the market. Therefore, The Delhi High Court directed defendants to deposit a sum of Rs. 1,00,000/- to the Juvenile Justice Fundmaintained in the name of the Registrar General, High Court of Delhi, New Delhi within one week from today.

Whether “Devtol” is deceptively similar to “Dettol”?

Where the infringing mark is similar to the registered mark the rules of comparison of marks would broadly be the same as those adopted for comparison of marks at the time of registration under Section 11(1).

Section 11(1) states as follows “a trade mark shall not be registered if, because of— -its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.”

The words “similarity to the registered trademark” will have to be taken as equivalent to the expression “deceptively similar” which has been defined in Section 2(1)(h), since sub-section (2) of section 29 also uses the expression “is likely to cause confusion on the part of the public”, therefore, the words “similarity to the registered trademark” will have to be read as “similarity to the registered trademark as is likely to cause confusion on the part of the public”. In all these cases, the judge must proceed upon evidence. You cannot put to any particular witness the question: “Is this article calculated to deceive?” That is for the judge to determine- it is a point in issue. You can only ask a witness: “would this decieve you?” And if he says “Yes”, he would then ask him “how it decieve him?” [2]

In the case of Cluette Peabody & Co. v. McIntyre Hogg Marsh & Co. Ltd. (1958) RPC 335, The court observed “a man infringes the mark of another if he seizes upon some essential feature of the plaintiff’s mark. That essential feature may be ascertained by the eye or by the ear in this sense, that the goods bearing that mark may be likely to become known by certain name.”
This case is clearly a issue of deceptively similar mark. Section 29 of Trade Marks Act, 1999 states the circumstances under which a person is deemed to Infringe a Registered Trademark. In this case, there is clear infringement by the defendant “Devtol” under Section 29 which are as follows:
Section 29(2) says that a person is deemed to infringe a registered trademark if not being a “registered proprietor” or “permitted user” of registered trade mark uses a trade mark:

i) which is identical or similar to the registered trade mark used in the course of trade for the similar goods or sevices; (Both products are of similar category soap & hand sanitizer)

ii) causes confusion to public; (Devtol may create confusion to public)

iii) the registered trade mark has reputation in India or which is likely to have an association with the registered trade mark.; (Dettol is well-known trademark and has reputation in India)

Further, there is also infringement by “Devtol” under Section 29(9) which says that where the distinctive elements of a registered trade mark consists of or includes words, the trade mark may be infringed:

i) the spoken use of those words; as well as

ii) the visual representation of those words.

In this case “Devtol” consist of similar words and visual representation as of “Dettol”.

Therefore, on the basis of this we can say that “Devtol” is deceptively similar to “Dettol”. However, in this case defendant has accepted to withdraw his trademark before the decision of the court.