Naturals v. NIC Natural Ice Creams: How the Delhi High Court dealt with the trademark infringement case

The Delhi High Court recently passed a consent order with certain conditions in the trademark dispute between ice-cream brands NATURAL/NATURALS and NIC Natural Ice Creams..The terms in respect of which the order was passed are as follows:i. NIC will not use the words/marks “Natural” or “Naturals” in respect of frozen desserts either physically or online;ii. NIC is permitted to use the words/marks “NIC” or “nic” in respect of its products. However, the said words may be used in a vernacular language only on the side panels of the product packaging, whereas the top/cap portion should only be in English. Outside India, the packaging should bear reference to the said words in English;iii. NIC cannot use any packaging/label/ trade dress similar to that of Naturals;iv. NIC can distribute/ sell its existing (unexpired) stock of ice creams bearing the trademark ‘nic – Honestly Natural Ice Cream’ worth ₹5.81 crore (detailed in the order); and,v. NIC can use 50% of its unutilized existing stock of packaging/labelling under the trademark ‘nic – Honestly Natural Ice Cream’ till December 31, 2022, but not thereafter. Such products should not have an expiry date beyond February 20, 2022..Justice Jyoti Singh, however, clarified that the arrangement between the parties is only applicable during the pendency of the proceedings, and will not have an impact on the merits of the case..It also directed Zomato and Swiggy to ensure that except for the product pictures of the existing packaging provided by NIC (for the purpose of para iv and v above) having an expiry till February 20, 2023, they will not list any products, restaurants or outlets of NIC using the word/mark ‘Natural’/‘Naturals’ in any manner..The instant suit was filed by Siddhant Icecreams LLP (plaintiff) in connection with its Naturals trademarks, against the defendants, who were using the NIC marks in connection with identical goods, i.e., frozen desserts. The plaintiff averred that defendant No. 1 was a former Partner of one of the plaintiff’s franchisees and was illegally using the Natural family marks in related to frozen desserts. The plaintiff also argued that the defendant nos. 1 and 2 were using packaging which was similar to the plaintiff’s packaging for its Naturals products..On the first date of hearing on October 19, the Court had granted an ex-parte ad-interim injunction against the defendant nos. 1 and 2 from using the Natural marks either as trademarks, domains, or as metatags and/or as keywords on Google’s Ads programme..Thereafter, the plaintiff filed a contempt application against the defendants averring non-compliance of the injunction order. Defendant No. 2 then filed an application seeking vacation of the ex-parte ad-interim injunction order. After more than 15 hearings in quick succession, the Court passed the above-mentioned consent order which will bind the parties till the disposal of the suit..Natural Ice Creams and its owners were represented by Senior Advocates Sandeep Sethi and Chander Lall, along with Advocates Tejveer Bhatia, Kartik Nayar, Rohan Swarup, Krish Kalra and Kunal Vats.Walko Food Company, makers of NIC, was represented by Senior Advocate Akhil Sibal and Advocates Deepak Biswas, Kanti Mohan Rustagi, Harshit Gupta, Pranay Govil, Ruchika Rathi and Asavari Jain.Senior Advocate Rajshekhar Rao, along with Advocates Deepak Biswas, Kanti Mohan Rustagi, Mansi Sood, Areeb Amanullah and Yashraj Samant represented a Director of Walko.Advocate Tushar John appeared for Zomato, while Advocates Abhay Pratap Singh and Mitali Umat represented Swiggy.Advocates Aditya Gupta and Sauhard Alung appeared for Google..[Read order].Rohan Krishna Seth is a Senior Associate at Fidus Law Chambers.