Om Prakash Singhal Sole Proprietor Of M/S Babu Ram Om Prakash v. M/S Emami Limited

$~6 * IN THE HIGH COURT OF DELHI AT NEW DELHI + FAO(OS) (COMM) 87/2020 & CM APPL. 15737/2020 (stay) OM PRAKASH SINGHAL SOLE PROPRIETOR OF M/SBABU RAM OM PRAKASH .....Appellant Through:

Mr. Sahil Gupta, Advocate.

versus M/S EMAMI LIMITED .....Respondent Through:

Mr. Abhimanyu Bhandari, Ms.

Rooh-e-Hina Dua and Mr.

Sahib Kochhar, Advocates.

CORAM:

HON'BLE MR. JUSTICE YASHWANT VARMA HON'BLE MR. JUSTICE RAVINDER DUDEJA

O R D E R

% 06.11.2024 1.

This appeal is directed against the order dated 13 February 2020 passed by the learned Single Judge and in terms of which the prayer of the plaintiff-appellant for interim injunction has come to be refused. 2.

As is evident from the recordal of facts as they appear in the order impugned before us, the application for temporary injunction had come to be considered after issues had been settled in the original suit. The suit itself had been instituted in 2017 and had alleged that the defendant-respondent while using the tradename "EMAMI DIAMOND SHINE" on their products for hair colour amounted to an act of infringement and would be liable to be injuncted in light of the plaintiff-appellant being the prior adopter of the trademarks Black Diamond, Black Henna, Diamond Heena, Diamond Device and various others which are noticed in paragraph 1 of the order FAO(OS) (COMM) 87/2020 Page 1 of 4 The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

impugned.

3.

The registrations held by the appellant were also noticed in the order by way of a tabular representation and which is reproduced hereinbelow: - 4.

As is manifest from the recordal of facts, it would appear that the appellant had claimed an exclusive right to use the word "DIAMOND" as part of a label mark for its various products. Apart from the above, it had also relied upon various copyright registrations for its work. It was alleged that the respondent had sought to take advantage of the goodwill and reputation which had been earned by the appellant in the course of its business and had wrongfully adopted the word "DIAMOND" in their trademark.

FAO(OS) (COMM) 87/2020 Page 2 of 4 The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

5.

While dealing with the aforesaid, the learned Single Judge has taken note of the turnoverin business of the respondent, as well as the fact that it had, in the year 2009,coined the word mark "EMAMI DIAMOND FAIR" with respect to a range of cosmetic products. It has further been observed that as per the respondent, the mark "EMAMI DIAMOND SERUM" with respect to hair serumshad also come to be registered and was subsisting on the date when the application for injunction was taken up for consideration. 6.

The learned Single Judge while proceeding to identify the dominant parts of the marks adopted by the respondent has observed as follows:- "9. Claim of the defendant is that the term DIAMOND is publici juris on account of being common to trade and is used by the defendant in a descriptive sense. Further the word diamond is used for number of other products and is common to trade as is also evident by the response of the trademark Registry when the plaintiff applied for registration of the trademark "DIAMOND".

10. A perusal of the packaging of the defendant would clearly show that the defendant predominantly uses the word EMAMI which is its trademark and DIAMOND SHINE is a descriptive word and the plaintiff cannot claim any monopoly on the word DIAMOND as it has no registration of the word mark DIAMOND simplicitor in its favour."

7.

Proceeding then to take note of the salient principles which came to be recorded by the Court in Marico Limited vs. Agro Tech Foods Limited1, the learned Single Judge has come to conclude that the usage of the mark "DIAMOND" would not meet the test of distinctiveness, and which is essential for the purposes of evaluating whether the grant of an injunction was warranted. 8.

It is in the aforesaid conspectus that the learned Judge has 12010 SCC OnLine Del 3806 FAO(OS) (COMM) 87/2020 Page 3 of 4 The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

ultimately come to hold that since the word "DIAMOND" has been merely used as a descriptive word, the test of deceptive similarly would not be met.

9.

We are presently informed that the suit itself is at the stage of recordal of evidence. The ultimate conclusion which has come to be rendered by the learned Single Judge fails to meet the test of perversity and which may have warranted interference by us in appeal. 10.

The appeal consequently fails and shall stand dismissed. YASHWANT VARMA, J.

RAVINDER DUDEJA, J.

NOVEMBER 6, 2024/vp FAO(OS) (COMM) 87/2020 Page 4 of 4 The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.