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Sunil Mittal v. Darzi on Call (19th April 2017) (Delhi HC)


Posted By Shrihar on 01 Aug 2017

Facts

  • Mr. Sunil Mittal and Darzi India LLP were registered proprietors of the label/ trade name ‘THE DARZI’ under class 24 for their tailoring services/ draping and marketing of all kinds of textile goods. The artistic work of the label/trade name was also registered under the Copyrights Act, 1957.   
  • The defendants were also engaged in the same business of tailoring and used the trade name “Darzi on Call” written in same style which is deceptively similar to that of the plaintiff.
  • When the case came up to the court for the first time on 5th October 2016, interim relief was granted to the plaintiffs and the defendants were stopped from using the tradename DARZI. They had also written the letter ‘D’ in a similar style as plaintiffs.
  • However, they were allowed to use the letter ’D’ by an order dated 7th December 2016.

 Defendant’s contentions                 

  • The defendants (Darzi on Call Private Limited / Darzi on Call Services Pvt. Ltd.) argued that the registered mark of the plaintiffs is the logo and label and not the word ‘Darzi’.
  • They also contended that the word Darzi alone cannot be registered as it is a generic/ descriptive word which is widely used.

Plaintiff’s contentions

  • The plaintiffs contended that the word ‘DARZI’ is an essential feature of the logo and can alone be protected. If a label is registered, it cannot be said that the word mark contained in it is unregistered.
  • ‘THE DARZI’ is not synonymous to stitching and is not generic to textile or garments.

Issues

  • Whether the word ‘DARZI’ is generic/ descriptive word incapable of being registered as trademark?
  • Whether infringement of only a part of a logo/ label can be challenged?

Judgment

The court adjudged that DARZI is not a generic or descriptive word for rendering tailoring services and thus can be registered. The court also decided that the word ‘DARZI’ forms an essential and integral part of the label/logo and its infringement can be challenged independently of other parts of the logo. Further, the court held that it cannot be expected from a person to file suit against each and every person who is using his trademark if it does not affect him.  

Observation

  The Court after considering the arguments from both sides, pointed out that the word tailor can be considered generic/ descriptive because it is used by the entities rendering tailoring services. However the urdu or hindi equivalent of it i.e. Darzi is not that common and the defendants failed to cite any other person using the word ‘Darzi’ for providing tailoring services. It further observed that if none else has in the past thought of adopting as a trade name / trademark, a word which till then has been used as descriptive of services, then the person who has this novel thought / idea deserves protection.  

The court also observed that the label barely contains anything except the word mark, therefore, the use of word DARZI alone can be challenged. 

The defendants contended that there are many others who use the word ‘Darzi’ and showed search reports from the online records of the Trade Marks Registry. Dealing with this, the court asserted it is not expected of a proprietor of a trademark to, instead of carrying on business under the trademark, make litigation a business by continuously being on the prowl for every use of that trademark, howsoever insignificant and inconsequential may be, and to take legal proceedings to prevent such use. A proprietor of a trademark is not expected to take legal proceedings if remains unaffected by use of the same trademark by others. 

Conclusion

The court distinguished the use of the word DARZI for an individual (tailor) from using it for the service rendered by a tailor i.e. tailoring thereby declaring it not to be descriptive /generic but the distinction is very thin. The court only considered the usage of the word in Delhi thereby limiting the scope of the judgement only to where the place of business of the plaintiff is located. The court also took a strong stance against trademark squatting and pointed out that litigation should not be made into a business.

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