Revisiting Delhivery: A Case of a Phonetically Generic Word
Trademark infringement has become very common with the advent of increasing business of diverse nature. The nature of a trademark is very important to understand and to assume how strong the case can be. In trademark registration, It is often suggested that the mark must not be generic and should be capable of distinguishing the goods from other goods or services. The generic and the descriptive mark are generally not strong and hence there is a lot of chance that the registration might be unsuccessful or if successful, it can invite oppositions/objections, as the case may be.
[Image Source: delhivery]
Delhivery is a famous delivery company providing courier and logistic services. Plaintiff has registered its trademark ‘DELHIVERY’ since 2011 and it has 27 registrations under various classes 35, 39, and 42 of the Trademark Act, 1999. They also experienced an appreciable increase in the sales revenue in the last couple of years. The plaintiff, relying on the exponential growth in the sales stated that the mark has acquired a secondary meaning and has become associated with it. This case arises when an employee of the plaintiff’s company saw a mark named DELIVER-E. The plaintiff claimed that the defendant was associated with the business of Delhivery and even executed a vendor agreement under the name of ‘SMART-E delivery services’ which afterward was changed to DELIVER-E. The plaintiff contended that the mark is similar to its logo and can affect the business of the plaintiff.
This case provides some interesting observations. After noticing the said mark, the plaintiff moved to the court where the court granted an interim injunction against the said use of the mark DELIVER-E. The defendant contended to vacate the injunction order. The plaintiff while making his case provides some of the arguments to prove the mark being not just generic. The plaintiff stated that the mark Delhivery is a descriptive word since the word adds up two different words which are ‘Delhi’ and ‘Very’. The addition of such words provides inherent distinctive character and not just a dictionary word. The plaintiff also contended that the registration of the mark is in itself the evidence of the validity of the trademark.
The contention also structured itself with the phonetic similarity in question. The word Delhivery has pronounced as DELHI-VERY while on the other hand the word Deliver-e will be pronounced as DELIVER-E. Both marks primarily focus on Delivery as both the company deals in the same business. Taking up the monopoly over the ordinary dictionary word which is descriptive, as in the case of Delivery, will give undue advantage to the plaintiff over the word despite being descriptive, the defendant contended. The defendant requested to set aside the injunction, therefore not giving Delhivery the monopoly.
The court observed that the trademark Delhivery is not a generic word and has a different connotation as compared to the word delivery. Meaning thereby, the plaintiff has the trademark over the said mark of Delhivery but not with the case of the word delivery. Since the word is coined by the combination of two words, it will not be generic. The court while observing it, states that the plaintiff cannot stop any other person to use the word which provides a similar connotation of delivery. The origin of the mark Deliver-E is different and does not provide any such identical and deceptive similarity with Delhivery. Even to the extent, the court observes that the mark Delhivery cannot be a suggestive mark since the person hearing this will immediately connect this with the delivery services.
Both the mark derives itself phonetically from the generic word delivery. The addition of the word H and replacing Y with E does not make it different from being a generic word. The plaintiff's claim over the word Delhi and Very does not rely upon the word delivery. Comparing it with the Deliver-E, the origin of the mark being different, the plaintiff cannot have an absolute claim over the word. If the mark Delhivery is similar to Deliver-E, then eventually the plaintiff’s mark will be generic to the word ‘delivery’. The court observes that both are structurally different. Regarding the phonetic similarity of the word, the court observes similarity but since the word, if pronounced will be 'delivery', and it being the generic word, cannot be registered. The court concluded that the word Delhivery connoted with the word delivery and providing the right with the plaintiff will lead to giving the monopoly of ‘delivery’ to the plaintiff.
Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur). In case of any queries please contact/write back Global Patent Filing us at email@example.com.