The Evergreen Trademark Saga: Protecting Legacy And Preventing Consumer Confusion

Posted On - 24 January, 2025 • By - King Stubb & Kasiva

Sumamry:

The case Evergreen Sweet House v. JV Evergreen Sweets and Treats addresses trademark infringement and passing off. The Plaintiff, operating since 1963 in Green Park, New Delhi, claimed prior use and goodwill of the “Evergreen” trademark. The Defendants, who began in 2020 in Lajpat Nagar, used a similar mark, allegedly causing confusion and diluting the Plaintiff’s goodwill. The Court issued an interim injunction, restraining the Defendants from using the mark until final adjudication.

Case Timeline:

1963: Plaintiff began operations with the “Evergreen” trademark in Green Park, New Delhi.

1998: Trademark registration for the “Evergreen” device mark, claiming usage since 1963.

2019: The Plaintiff registered the domain name www.evergreensweethouse.net.

November 12, 2020: Defendants formed “JV Evergreen Sweets & Treats.”

January 11, 2021: Defendants applied for trademark registration in classes 35 and 43.

May 2024: Plaintiff received complaints about the Defendants’ use of “Evergreen” and issued a cease-and-desist notice. Defendants replied, claiming “Evergreen” was a generic term.

December 23, 2024: The Delhi High Court issued an interim injunction against the Defendants

Issues Raised:

1.Whether the Defendants infringed on the Plaintiff’s registered trademark and misled customers into associating their business with the Plaintiff.

3.Whether the term “Evergreen” is generic and incapable of exclusive appropriation.

4.Whether the Plaintiff has established prior use and goodwill over the trademark.

5.Whether the similarity in trademarks and trade practices is likely to confuse the public.

Plantiff’s Arguments:

The Plaintiff highlighted continuous use of the “Evergreen” mark since 1963, its trademark registration in 1998, and its goodwill. It accused the Defendants of copying its trade dress and logo, misleading customers, and diluting its brand. The Plaintiff argued that the Defendants’ claim of “Evergreen” being generic was inconsistent since they sought registration for the same mark.

Defendant’s Arguments:

The Defendants’ claimed “Evergreen” is a generic term and cited their distinctive use with “JV” and “Sweets & Treats.” They argued prior family background in sweets since 1950 and alleged the Plaintiff’s delayed legal action implied acquiescence. They pointed to positive customer reviews and argued that other users of “Evergreen” were ignored by the Plaintiff.

Judgement:

The Delhi High Court granted an interim injunction favouring the Plaintiff, barring the Defendants from using “Evergreen” or any deceptively similar mark. The Court relied on prior use, goodwill, and the likelihood of consumer confusion.

Analysis:

The Court emphasized that under Section 27(2) of the Trade Marks Act, 1999, earlier use takes precedence over later registration. Referring to S. Syed Mohideen v. P. Sulochana Bai (2016), it upheld common law rights of passing off over statutory registration rights.

The Plaintiff demonstrated continuous use of the “Evergreen” mark since 1963, while the Defendants adopted it in 2020 without valid justification. The Court applied the Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001) test for deceptive similarity, concluding that the marks and businesses were likely to mislead consumers.

The Defendants’ argument that “Evergreen” is generic was undermined by their own trademark registration attempts. The Court dismissed the acquiescence defence, noting prompt action by the Plaintiff after learning of the Defendants’ activities, as held in Power Control Appliances v. Sumeet Machines Pvt. Ltd. (1994). The Court also criticized the Defendants’ failure to conduct trademark searches, citing Wipro Enterprises v. Himalaya Wellness Company (2024) as indicative of bad faith.