Bombay High Court, ruled in a recent trademark dispute where both parties were operating in cosmetics sector. Hygienic Research Institute Pvt. Ltd. (Plaintiff) sought interim relief against Chandan and Shah Trading LLP (Defendant) and others alleging infringement and passing off of its well-established registered trademark STREAX, in use since 2002 for hair care and cosmetic products. This article discusses the key contentions and the Court's findings in the matter.

Background and Plaintiff’s Case

  1. The plaintiff adopted the trademark STREAX in 2002 and holds over 40 registrations under Class 3 for cosmetics and related products, including variants such as STREAX PRO and STREAX PROFESSIONAL.
  2. They have a strong market presence both in India and internationally, their products are sold widely on platforms like Amazon, Nykaa, and Flipkart.
  3. In March 2022, the plaintiff became aware of the defendant’s trademark application under Class 3. Further investigation revealed that the defendants had filed five applications between October 2019 and December 2022 under Classes 3, 26, 35, and 42—one of which was withdrawn, and the others were either opposed or objected.
  4. Despite being served a cease-and-desist notice, the defendants continued to promote their products via social media and their website.
  5. The plaintiff argued that the defendant's mark was deceptively similar to its registered mark, that the adoption of the mark appeared dishonest, and that the defendants had inconsistently claimed use of the mark in various filings.

Defendant’s Arguments

  1. The defendants opposed the injunction, arguing that the marks STREAX and STREAK Street are not similar.
  2. “STREAK” is a descriptive term commonly used in relation to hair products and cannot be monopolized.
  3. Their mark, inclusive of the tagline “quirk up your hair” and design elements, therefore, was distinct and had gained popularity and goodwill among consumers.
  4. They also claimed that the plaintiff acted dishonestly by failing to disclose the Registrar of Trademarks’ examination report during registration, where it was pointed out that STREAX was phonetically similar to “STREAK.”

Court’s Findings

  • The Court noted that the plaintiff owns 44 trademark registrations for STREAX and its variants across various classes since 2002.
  • The plaintiff submitted sufficient evidence of goodwill through sales data and advertising expenditure.
  • The Court rejected the defendants’ argument that “STREAX” was merely descriptive or common to trade, noting that while “STREAK” may have broader meanings, the defendants failed to provide concrete evidence of its widespread use as a trademark in similar trade channels.
  • The Court observed that the defendants’ position was contradictory—they simultaneously claimed the term “STREAK” lacked distinctiveness while also applying to register it.
  • The Court emphasized that the leading feature of the defendants' mark, STREAK, is deceptively similar to the plaintiff's mark STREAX, and that merely adding other words or phrases does not mitigate the potential for confusion among consumers.
  • The Court also found no merit in the assertion that the plaintiff suppressed the Registrar’s examination report, noting that the plaintiff’s response to the report was missing from official records and there was insufficient evidence to support the defendants’ claims.

Court Ruling

The High Court concluded that a strong prima facie case existed in favour of the plaintiff, both for trademark infringement and passing off. The balance of convenience was with the plaintiff, and irreparable harm would be caused if interim relief was not granted.

Accordingly, the Court issued an injunction restraining the defendants from using the mark STREAK Street or any other mark identical with or deceptively similar to STREAX, until the final disposal of the suit.