Trademark Infringement and Passing Off of “STREAX” vs. “STREAK Street”

The Bombay High Court, granted interim reliefs in favor of the plaintiff, restraining the defendants from using the mark “STREAK Street” or any other mark deceptively similar to the plaintiff’s registered trademark “STREAX.” The court held that:

1. The plaintiff’s trademark “STREAX” had acquired distinctiveness and goodwill, and was entitled to statutory protection under the Trade Marks Act, 1999.

2. The defendants’ mark “STREAK Street” was deceptively similar to the plaintiff’s mark, and the adoption of the mark by the defendants appeared to be dishonest.

3. The defendants’ defense of descriptiveness was rejected, as the word “STREAK” was not solely descriptive and had been used by the defendants as a trademark.

4. The balance of convenience was in favor of the plaintiff, as the plaintiff had established a strong prima facie case of infringement and passing off, and the defendants had failed to provide sufficient evidence of their sales or market presence.

Major Acts:

1. Trade Marks Act, 1999 – Sections 9(1), 17, 29, 32, 35 – Trademark Infringement, Passing Off, Distinctiveness, and Protection of Registered Trademarks.

2. Code of Civil Procedure, 1908 (CPC) – Interim Injunction, Balance of Convenience, Irreparable Loss.

3. Companies Act, 1956 – Conversion of Proprietorship to Private Limited Company.

Subjects:

Trademark Infringement – Passing Off – Deceptive Similarity – Interim Injunction – Distinctiveness – Goodwill – Balance of Convenience – Irreparable Loss – Statutory Protection – Phonetic Similarity – Dishonest Adoption.

Facts:

1. Nature of the Litigation: The plaintiff, Hygienic Research Institute Pvt. Ltd., filed a suit for trademark infringement and passing off against the defendants, Chandan and Shah Trading LLP & Anr., alleging that the defendants’ use of the mark “STREAK Street” was deceptively similar to the plaintiff’s registered trademark “STREAX.”

2. Plaintiff’s Claim: The plaintiff, a well-established company in the hair care and cosmetic products industry since 1950, claimed that the defendants’ mark “STREAK Street” was phonetically and visually similar to their registered trademark “STREAX,” leading to consumer confusion and dilution of their brand’s goodwill.

3. Defendants’ Defense: The defendants argued that the word “STREAK” was descriptive in nature, commonly used in the hair care industry, and that their mark “STREAK Street” was distinct from the plaintiff’s mark. They also claimed that the plaintiff’s trademark was weak and lacked inherent distinctiveness.

4. Previous Proceedings: The plaintiff had issued cease and desist notices to the defendants in November 2022, which were contested by the defendants. The plaintiff then filed the present application seeking interim reliefs to restrain the defendants from using the impugned mark.

Issues:

1. Whether the defendants’ mark “STREAK Street” was deceptively similar to the plaintiff’s registered trademark “STREAX,” leading to trademark infringement and passing off?

2. Whether the plaintiff’s trademark “STREAX” had acquired distinctiveness and goodwill, entitling it to statutory protection under the Trade Marks Act, 1999?

3. Whether the defendants’ use of the word “STREAK” was descriptive or suggestive, and whether it could be considered a valid defense against the plaintiff’s claim of infringement?

4. Whether the plaintiff was entitled to interim injunctive reliefs to prevent irreparable loss and maintain the balance of convenience?

Submissions/Arguments:

1. Plaintiff’s Submissions:
   a. The plaintiff argued that “STREAX” was a registered trademark since 2002, with 44 registrations across various classes, and had acquired significant goodwill and distinctiveness over the years.
   b. The plaintiff contended that the defendants’ mark “STREAK Street” was phonetically and visually similar to “STREAX,” leading to consumer confusion.
   c. The plaintiff relied on the principle of statutory protection under Section 32 of the Trade Marks Act, 1999, which protects registered trademarks even if they were registered in breach of Section 9(1).
   d. The plaintiff also argued that the defendants’ adoption of the mark was dishonest, as they had applied for registration of the mark after the plaintiff had already established its presence in the market.

2. Defendants’ Submissions:
   a. The defendants argued that the word “STREAK” was descriptive and commonly used in the hair care industry, and therefore, the plaintiff could not claim exclusivity over it.
   b. The defendants contended that their mark “STREAK Street” was distinct from the plaintiff’s mark, as it included additional elements such as the phrase “quirk up your hair” and a design.
   c. The defendants also raised the defense of delay and acquiescence, arguing that the plaintiff had not taken timely action against their use of the mark.

Ratio:

1. Distinctiveness and Goodwill: A registered trademark that has acquired distinctiveness and goodwill over a long period of time is entitled to statutory protection, even if it was registered in breach of Section 9(1) of the Trade Marks Act, 1999.

2. Deceptive Similarity: The court must consider the leading, essential, and central features of the impugned mark when determining deceptive similarity. Merely adding a prefix or suffix to a similar mark does not eliminate the risk of confusion.

3. Interim Injunction: In cases of trademark infringement and passing off, interim injunctive reliefs may be granted if the plaintiff establishes a strong prima facie case, balance of convenience, and the likelihood of irreparable loss.