The REAL case

6 February 2014
  • Dr. Mohan Dewan & Advocate Vinay Dwarkadas

In the case of Dabur India Ltd vs. Real Drinks Pvt. Ltd, the High Court of Delhi was required to decide on the issues of passing-off, infringement, jurisdiction and maintainability of a suit where the Plaintiff and the Defendant were both registered proprietors of trademarks containing the word “REAL”.     
The Plaintiff is the registered proprietor of a label, the prominent feature of which is the word “REAL”. The Plaintiff’s mark is in use extensively for fruit juices since 1994. The Defendant adopted and started using the mark “REAL” and also obtained registration of the mark “REAL MANIK” for aerated and fruit flavored drinks. The Defendant also obtained registration for the mark “CAFÉ REAL” for services in Class 42 and for the label mark “REAL’S” for goods in Class 33.          
Dabur filed a suit against the Defendant and contended that the adoption by the Defendant of an identical mark “REAL” was dishonest, with a view to cash in on the goodwill and reputation of the Plaintiff’s “REAL” marks and was bound to cause confusion and deception and infringed the Plaintiff’s registered mark.  
The Defendant contended that:
It was not open for the Plaintiff to interfere with or restrain the Defendant from using the “REAL” marks on account of the Defendant being the registered proprietor and prior user of an identical trademark for the same goods.     
The suit was not maintainable for infringement. The Plaintiff was not entitled to seek protection of the word “REAL” although it formed a part of the registered label mark.   
It was the prior user of the mark “REAL” in Goa; and as it was not carrying on business at Delhi and its products were also not available in Delhi, no action for passing-off could lie in Delhi.          
After considering the contentions of the parties, the Court was of the following view:
1. It was not disputed that the Plaintiff had an office in Delhi and its products were widely available in Delhi. The Plaintiff held registration for the label mark “REAL” of which the prominent feature was the word “REAL”. The Plaintiff was not precluded from claiming protection of the word “REAL” as there was no limitation imposed in the registration it had for the composite label mark “REAL”. The suit for infringement was maintainable and the Defendant’s contention challenging the jurisdiction of the Court to entertain the suit for infringement was negated.  
2. The Plaintiff’s averments that the infringing goods bearing the mark “REAL” were found at Delhi-Haryana border were vague. It was unclear whether the goods were found on the Delhi side of the border. Hence the suit for passing-off was not maintainable. 
3. The mere fact that the Defendant was the registered proprietor and prior user of an identical trade mark for the same goods could not preclude the Plaintiff from restraining the Defendant from using the “REAL” marks. The overall conduct of the Defendant was taken in consideration.     
4. The Defendant’s use of the “REAL” trademark was only in part and not the whole for which it otherwise held registration. The Defendant had also changed the writing style of the word “REAL” to resemble it closely to the writing style of the Plaintiff and for which there was no satisfactory explanation from the Defendant. 
5. The invoices of the Defendant in support of prior use of the mark “REAL” pertained to sales predominantly of soda in Goa. The Defendant’s own repeated admission of not selling its products outside Goa and never in Delhi/Haryana was pertinent. As compared to the all-India sales of the Plaintiff, the sales of “REAL SODA” by the Defendant in Goa were also not substantial. The Plaintiff was entitled to restrain the Defendant from using “REAL” outside Goa. The balance of convenience restricting the sale of the Defendant’s product to Goa was clearly in favor of the Plaintiff.      
6. The marks being identical, permitting the Defendant to use the mark “REAL” outside Goa would adversely impact the distinctiveness, goodwill and reputation enjoyed by the Plaintiff and also dilute its registered trademark. Use of identical marks in relation to cognate goods would cause confusion/deception. 
By this order it is clear that a Plaintiff is not precluded from restraining a Defendant from using an identical mark for the same goods merely by virtue of the Defendant claiming to be the registered proprietor of an identical mark for the same goods and more so when it has been determined that its use is dishonest and is likely to cause confusion.


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