Summary
In the case of Treasure Studio Inc. & Anr. v. Mohit Khungar & Anr., the Delhi High Court (“the Court”), granted relief to Treasure Studio Inc., the creators of the popular children’s YouTube channel COCOMELON, by passing an order for cancellation of the respondents’ trademark registration on the same name, which was found to be deceptively similar to the petitioner’s trademark.
Case Note
Treasure Studio Inc., the petitioner no.1, sought rectification and removal of the impugned trademark registered by the respondent no.1 bearing application no. 4072531, arguing that the respondents had fraudulently obtained registration of a mark ‘COCOMELON’ that closely resembled the distinctive and globally recognized trademark of the petitioners.
A comparison of the marks used by the Petitioners and Respondents is provided below.
The Court noted that the petitioners’ trademark COCOMELON was a well-known and inherently distinctive trademark with no dictionary meaning. It had gained international popularity, particularly in India, due to its wide-reaching children’s content and associated merchandise. The petitioners have obtained registration over the mark ‘COCOMELON’ across various classes in India and foreign countries namely United Kingdom, Canada, Israel, United States, New Zealand, Australia, UAE, Malaysia, Singapore, Cambodia, Philippines and the European Union.
Despite being served notices, the respondent did not appear and the Court proceeded
ex-parte. After reviewing the facts and evidences, the Court concluded that the respondents had copied the petitioners’ COCOMELON mark’s font, color scheme, and overall appearance, intending to deceive consumers by creating an association with the petitioners’ widely recognized brand. The Court held that even minor variations do not negate infringement if the resemblance of the marks is substantially similar.
The Court ordered the removal of the respondents’ trademark from the Trademark Register under Section 57 of the Trade Marks Act, 1999, finding it in violation of several provisions, including Sections 11(1),11(2) read with Sections 29(4), 11(3)(a), 11(3)(b), 11(10) and 18(4). The Court directed the Registrar of Trademarks to cancel the respondent no.1’s registration and update the register accordingly.
Relevant Paragraphs:
“20.The above comparison of the two marks clearly shows that the respondent no. 1 has adopted the impugned mark by copying the nearly identical font and colour combination, thereby, giving an overall impression of the petitioners’ trademark
21. It is not necessary that in order to constitute infringement, the impugned trademark should be an absolute replica of the registered trademark of the petitioner. It would be sufficient if the petitioner is able to show that the trademark adopted by the respondent resembles its trademark in a substantial degree, on account of extensive use of the main features found in his trademark. Minor variations or distinguishing features of the infringing mark would not be material, in case, resemblance in the two trademarks is found to be substantial to the extent that the impugned trademark is found to be similar to the registered trademark of the petitioner (See: Greaves Cotton Limited versus Mr. Mohammad Rafi & Ors.2011 C.O. (COMM.IPD-TM) 297/2023 Page 24 of 25 SCC OnLine Del 2596).
22. Thus, it is clear that the adoption of the impugned mark by the respondent no. 1 is dishonest, unfair and in bad faith. The adoption of the impugned mark is likely to induce an injurious association between the goods and business of the respondent no. 1, with those of the petitioners, in the minds of the members of the trade, consumers and relevant section of the public.
23. In view of the aforesaid detailed discussion, the adoption and registration of the identical impugned mark in a nearly identical font and colour combination by the respondent no. 1, cannot stand in the Register of Trade Mark and is liable to be removed. “
Citation:Treasure Studio Inc. & Anr. v. Mohit Khungar & Anr., C.O. (COMM.IPD-TM) 297/2023 (Delhi High Court, September 17, 2024). Available at https://indiankanoon.org/doc/169592831/.
Authored by Naika Salaria, Trademark Team
Disclaimer
The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
If you have any questions, or if you wish to speak with an IP expert/attorney, please reach us at: [email protected] or 91-80-26860414/24/34.
