Delhi High Court Grants Injunction in Trademark Dispute Over “SIGNATURE” Perfumes

Background

The Delhi High Court has restrained the Defendant, proprietor of Aero Care Industries, from manufacturing and selling perfumes and deodorants with the mark “SIGNATURE” as it is deceptively similar to the Plaintiff’s well established registered mark “SIGNATURE”. The Court found a Prima Facie case of triple identity identical mark, identical products, and identical trade channels. An ex-parte ad-interim injunction was granted, and a Local Commissioner was appointed to ensure enforcement by going to the Defendant’s premises and ensuring all and only the infringing goods are seized.

Issues Raised

1. Whether the Defendant’s use of “SIGNATURE” constitutes infringement of the Plaintiff’s registered trade mark.
2. Whether such use amounts to passing off by creating consumer confusion and unfairly exploiting Plaintiffs’ goodwill.
3. Whether urgent interim relief was justified to prevent further market dilution.

Plaintiffs’ Arguments

• Plaintiff No. 1 owns the trademark “SIGNATURE”; Plaintiff No. 2 is a licensee user.
• The trademark has been associated with several decades of exclusive use, extensive sales, goodwill, and online presence, which serve to confirm its acquired distinctiveness.
• It is within no doubt that the use of the same mark, as well as the same goods, was done with the intent to deceive and infringe upon the reputation of the Plaintiffs.
•  The use of other trade mark and branding elements which were similar to the Plaintiffs, caused confusion in the mind of the consumer, which resulted in the dilution of distinctiveness.
• The goodwill which was lost could not be justified by monetary compensation, as well as the reason for the resulting injunction.

Defendant’s Position

• In response to the Cease-and-Desist notice, the Defendant did not deny using the mark but argued:
  • The term ‘Signature’ is generic/descriptive, not distinctive.
  • The mark was used in combination with ‘Aerocare’, making it distinguishable.
• Defendant had also filed trade mark applications, which were objected to and opposed.

Judgment

• The Court held this to be a case of triple identity: identical mark, identical goods, identical trade channels.
• To an average consumer of imperfect recollection, the marks would appear identical, leading to confusion about the source.
• Accordingly, the Defendant, its agents, and distributors were restrained from using “SIGNATURE” or any deceptively similar mark in relation to perfumes, deodorants, and allied goods.
• A Local Commissioner was appointed with powers to seize infringing products, packaging, promotional materials, and commercial records. Goods were to be released on superdari after valuation.

Analysis

This order reflects the Court’s proactive stance in trade mark enforcement:

• Urgent interim relief: Exemption from pre-litigation mediation under Section 12A of the Commercial Courts Act was rightly granted in view of Yamini Manohar v. T.K.D. Krithi (2023).
• Consumer protection focus: By applying the triple identity test, the Court safeguarded unwary consumers from deception.
• Recognition of goodwill: The Plaintiffs’ long-standing market presence and investment in the “SIGNATURE” mark were key in establishing exclusivity.
• Judicial vigilance: Appointment of a Local Commissioner ensured immediate enforcement, preventing further circulation of infringing products.

Conclusion

This case shows the principle that descriptive or common words can still acquire strong protection if they develop secondary meaning and distinctiveness through extensive commercial use.