The Delhi High Court recently ruled that Competing Trademarks must be evaluated in their entirety rather than by dissecting individual elements. This decision was made in an appeal by L’Oreal India Pvt Ltd against Rajesh Kumar Taneja Trading.
The court, led by Justice Vibhu Bakhru and Justice Tara Vitasta Ganju, emphasised that trademarks should be assessed as a whole, and comparing parts of competing trademarks is not permissible.
L’Oreal India, a subsidiary of M/s L’Oreal, produces and sells beauty and personal care products. Rajesh Kumar Taneja Trading, operating under the name Innovative Derma Care, was the registered owner of the disputed trademark. Taneja Trading applied for trademark registration in Class 03 on 16 April 2010, claiming use since 16 November 2009. However, the initial examination report mistakenly referred to the trademark as CHARIWASH instead of CLARIWASH. The trademark was correctly published in the Trademark Journal on 16 January 2012, and a registration certificate was issued on 18 May 2012, though it was incorrectly named CHARIWASH. A rectification application corrected this to CLARIWASH.
L’Oreal India sought to cancel the trademark through the Intellectual Property Appellate Board (IPAB), which was later transferred to the court and rejected. L’Oreal argued that its predecessor, CCPL, had legitimately used CLARI formative marks, including CLARIWASH, since around 2010-11.
The Single Judge dismissed the cancellation request, finding no significant similarity between CLARI-FI and the contested trademark to cause confusion. Advocate Shravan Kumar Bansal, representing L’Oreal, argued that the flawed examination invalidated the trademark registration and that the CLARI marks were deceptively similar to the contested trademark.
The court noted that while the examination report contained a mistake by using ‘CHARIWASH’ instead of ‘CLARIWASH,’ the Registrar had followed Rule 33 of the Trademarks Rules, 2017, in searching for similar marks. It concluded that the registration was valid and that the minor procedural error did not warrant overturning the registration after almost 14 years. Thus, the appeal was dismissed.
The Delhi High Court’s decision to dismiss L’Oreal India’s appeal and uphold the validity of Rajesh Kumar Taneja Trading’s trademark emphasises the importance of evaluating trademarks in their entirety. This ruling highlights the court’s stance that minor procedural errors do not undermine the overall integrity of a trademark registration.
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