Jewellery brand's NIMA mark to be washed away from Register of Trademarks after Nirma moves Delhi High Court

The Delhi High Court recently directed the removal of a trademark belonging to a metal alloy jewellery brand called 'Nima' from the Register of Trade Marks for being deceptively similar to that of the well-known detergent company, Nirma. [Nirma Limited v. Purnima Gupta & Anr].While allowing the rectification petition filed by the detergent company, Justice Navin Chawla held,"The registration of the mark ‘NIMA’ in favour of the respondent no.1 is not only likely to cause deception in the mind of unwary consumer of its association with the petitioner but would also hamper any future plan of the petitioner to expand its business to other goods, especially the goods being manufactured or marketed by the respondent no.1.".Besides hampering Nirma's possible plans of expansion to other industries and causing deception in the minds of unwary consumers, the use of the trademark under challenge could lead to a dilution of Nirma's mark, the Court reasoned.Thus, it held that the registration of Nima's mark cannot be allowed and is liable to be cancelled..Nirma's case was that its predecessor in-title had coined and adopted the trademarks ‘NIRMA’ and ‘NIMA’ in 1969 and 1982 respectively.Thereafter, the company had been using the trademarks ‘NIRMA’ and ‘NIMA’ for various trade segments such as toilet soaps, detergents, liquid blue, scouring bar, shampoo, toothpaste, and other chemicals, tea, salt, spices, and other food supplements.It came to know of a jewellery brand being granted registration for its trademark, ‘NIMA’, and the same was published in the Trade Marks Journal in November 2003. Further, the respondents claimed to be users of the mark ‘NIMA’ since the year 2000..In its order, the Court held,"The mark of the petitioner ‘NIMA’ is identical to that of the respondent no.1. Though registered as a device mark, the word ‘NIMA’ is the only and pre-dominant part of the mark of the respondent no. 1, excepting that it is in a stylized version," the Court observed.It also noted that the respondent's mark ‘NIMA’ was also phonetically and deceptively similar to the petitioner’s mark ‘NIRMA’.Further, the Court acknowledged that the petitioner's mark ‘NIRMA’ had been declared as a "well-known trade mark‟ under Section 2(1)(zg) of the Trade Marks Act.With regards to the question of prior use and adoption of the mark, the Court said,"The petitioner is also a prior adopter and user of the mark ‘NIMA’ and ‘NIRMA’ as compared to the respondent no.1."Thus, the Court held that Nirma is the prior, uninterrupted user as also prior registration holder of the marks ‘NIRMA’ and ‘NIMA’, and found that it was able to establish the goodwill and reputation of its marks..Advocates Jatin Trivedi, Anay Amin and Bhav Arora appeared for Nirma..[Read order]