• Dr. Mohan Dewan & Advocate Vinay Dwarkadas

In a recent case, Neo Foods Pvt. Ltd vs. Neo Milk Products Pvt. Ltd, the Delhi High Court had to decide on the issue of whether the products, milk and pickles, can be considered to be similar.          
The Plaintiff is the registered proprietor of a label mark in class 29 comprising the word “neo” and the device of a leaf in respect of pickles. In the registration, a condition was imposed that the Plaintiff would have no exclusive right over the device of a leaf. The Plaintiff’s products under the trademark “neo” have been available in the market since 2007. The Plaintiff has a substantial presence and reputation in India. The Defendant is engaged in the business of the manufacture and sale of milk products. It also registered a domain name www.neomilkfoods.com in August 2012 and applied for the registration of the trademark “neo” in respect of milk and milk based products in Class 29 in 2012.  
In the proceedings the Court was required to consider the following contentions of the Defendant:  
1. The registration of the Plaintiff’s mark was only in respect of pickles et al and not in respect of milk based products. The Plaintiff could not claim a right to use the word “neo” per se. The Defendant claimed to be using “neo” in respect of milk based products since 1997 and to have earned goodwill and reputation with respect to such products. 
2. “Neo” was an ordinary dictionary word. Hence the Plaintiff could not claim any exclusive ownership right over it. There were over five hundred companies with the name “neo” registered with the Registrar of Companies in India.  
3. No relief of passing-off could be claimed by the Plaintiff since the Defendant had been using the mark “neo” at least since 2006-2007 in respect of milk and milk products and the Plaintiff had not been able to establish goodwill, reputation and distinctiveness of the mark “neo”
4. The Registrar of Companies had permitted the Defendant to change its corporate name from Neo Anurena Tristar Food Products Pvt. Ltd to Neo Milk Products Pvt. Ltd. Therefore it could not be said to be mala fide or a deliberate change to come closer to the Plaintiff’s trade name.
5. The Defendant was the prior user of the trademark/trade name “neo” with respect to milk-based products.
6. The Plaintiff was required to show substantial reputation in India and was required to establish that the use of the impugned trademark by the Defendant gave an unfair advantage to it. It was submitted that a comparison of the Plaintiff’s label with that of the Defendant did not lead to any confusion or deception.  
  The Court came to the following conclusions:          
The Plaintiff was and continued to be the registered proprietor of the trademark (device) “neo” under Class 29. The Plaintiff’s use was from 9th October 2007 and the registration was valid.  Consequently the Plaintiff had an exclusive right to use the registered trademark “neo” (device). 
The only limitation of the registration of the Plaintiff’s mark was that it could not claim any exclusive right over the device of a leaf. Hence the Defendant’s plea that the Plaintiff could not claim an exclusive right over the word “neo” being a prominent feature of its device mark was rejected. 
In support of its claim of prior use of “neo” in relation to milk products, the Defendant produced invoices of Neo Anurena Tristar Food Products Pvt. Ltd showing sales of milk, sweet curd etc. for the year 2007 onwards. However these invoices did not by themselves indicate that the products were sold under the trademark “neo”
There was no satisfactory explanation for the change by the Defendant of its name in 2012 from Neo Anurena Tristar Food Products Pvt. Ltd to Neo Milk Products Pvt. Ltd., a change that brought the name closer to the Plaintiff’s name. The mere fact that the change of name was permitted by the ROC did not automatically mean that it was honest. No application was made by the Defendant for registration of its mark “neo” for milk products up until December 2012. The user date in the application filed by the Defendant states “1.5.2012”. If the Defendant was indeed using the mark since 2007 onwards it was not understood why it did not claim use since then. 
The Defendant’s submission that the Plaintiff had failed to show substantial retail sales of its goods in India and in particular in Delhi was countered by the Plaintiff by referring to several invoices showing sales of its goods in India, in Delhi and by way of export to other countries.  
The Defendant had itself applied for registration of “neo” label with “neo” being the prominent feature. It was therefore precluded from pleading lack of distinctiveness of the mark “neo”. The Defendant’s mark was identical to a prominent feature of the Plaintiff’s registered trademark and the use by it for milk products was likely to dilute the mark’s distinctive character. There was merit in the Plaintiff’s contention that there was likelihood that an average consumer would associate the goods of the Defendant as originating from the Plaintiff. The goods in question, milk products and pickles, were cognate goods.          

Despite the dissimilarity between the goods in question viz. milk and pickles, the Court restrained the Defendant from using “neo”, the prominent feature of the Plaintiff’s mark, preventing dilution of the mark and also the potential confusion that would have been caused in the minds of the consumers.


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