DELHIVERY phonetically generic; cannot seek benefit of statutory rights: Delhi High Court forms prima facie opinion

The Delhi High Court has formed a prima facie opinion that the mark ‘DELHIVERY’ was a phonetically generic word and thus cannot be registered so as to seek the benefit of statutory rights. (Delhivery Pvt Ltd vs Treasure Vase Ventures Pvt Ltd) .The judgment was passed by a Single Judge Bench of Justice V Kameswar Rao..Delhivery Private Ltd (Plaintiff) had moved the High Court against Treasure Vase Ventures Pvt Ltd (Defendant), alleging infringement of its trademark ‘DELHIVERY’..The Plaintiff stated that it had been continuously and extensively using the trademark ‘DELHIVERY’ since the year 2011 for its logistics, transportation, management, etc and had 27 registrations in its name. .The Plaintiff moved the Court after the use of the mark 'Deliver-E' for identical services was noticed by its employees..On a previous occasion, the Court had granted an ex parte interim injunction in favour of the Plaintiff. .Seeking a vacation of the interim order, the Defendant argued that the mark ‘DELIVER-E’ was inspired by the use of electric vehicles for its passenger and last-mile goods delivery services. .Stating that mark had unique stylization, colour scheme etc, the Defendant argued that there was no visual or structural similarity between the two marks. .The Defendant also contended that the Plaintiff was creating a false impression that it was the only party in the field using a descriptive word as a trademark. .Vacation of the interim order was also sought on the ground of non-service of the plaint by the Plaintiff through e-mail..FINDINGS.At the outset, the Court noted that the service by speed post or e-mail was accepted by the Registry and service through e-mail was not a requirement for listing. .In the present case, since the service was shown to be done via speed post, the Court opined that the interim order could not be vacated on this ground of non-service alone. .Analysing the merits of the case, the Court observed that the Plaintiff's attempt was to read ‘DELHIVERY’ as ‘DELHI’ and ‘VERY’, thus asserting that the mark was different from the generic word ‘delivery’. .However, when the claim is that the ‘DELIVER-E’ is deceptively similar to ‘DELHIVERY’, the Plaintiff was relating its mark to the generic word ‘delivery', the Court stated. .Remarking that ‘DELHIVERY’, when pronounced in a routine manner, meant ‘delivery’, the Court opined that ‘DELHIVERY’ was phonetically a generic word..The attempt of the plaintiff is to tweak the word in the English language, which is clearly impermissible. Similar is the position with regard to the mark ‘DELIVER-E’ coined by the defendant, which also if pronounced in a routine manner means ‘delivery’... the marks phonetically are the generic English word ‘delivery’. The position of law is well settled that a generic word cannot be registered, that is, a generic word cannot be appropriated by one party to the exclusion of others..The Court also rejected the Plaintiff's contention that since the Defendant had itself applied for registration of mark ‘DELIVER-E’, it could not plead that the mark ‘DELHIVERY’ was a descriptive word. ."The plea .. looks appealing on a first blush but on a deeper consideration, when I have held the mark ‘DELHIVERY’ being phonetically the generic word ‘delivery’, cannot be registered, this plea..is liable to be rejected.".Refusing to consider ‘DELHIVERY as a suggestive mark, the Court further said, ...the mark which is phonetically similar to the English word ‘delivery’ do not require any imagination, thought and perception, more so for delivery services..Whether ‘DELHIVERY’ had achieved "distinctiveness", the Court held that it was a matter of trial. .The Court also considered that the clientele of both the parties was capable of differentiating between the two marks and were well informed about market realities. .The Court, in conclusion, held,...the mark ‘DELHIVERY’ is a phonetically generic word and cannot be registered so as to seek benefit of statutory rights. So, it follows, there cannot be any claim of passing off..In view of the above, the Court vacated the exparte order of interim injunction. .The Court, nonetheless, clarified that the above was only a prima-facie view and was not an expression on the merits of the suit..Advocate Neeraj Grover with Advocates Satish Kumar, Mahir Malhotra appeared for the Plaintiff. .Senior Advocate Chander M. Lall with Advocates Vivek Dhokalia, Saurabh Jain appeared for the Defendant..Read the Judgement: