CONTENTS

ACKNOWLEDGMENT..............................................................................................................3

CITATION...................................................................................................................................4

INTRODUCTION........................................................................................................................5

BRIEF FACTS OF THE CASE ...................................................................................................5

ISSUE............................................................................................................................................6

OVERVIEW OF THE JUDGEMENT..........................................................................................6

CASE ANALYSIS........................................................................................................................7

OTHER RELEVANT CASE LAWS…………………………………………………………....7

BIBLIOGRAPHY..........................................................................................................................9

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 CITATION

COURT- HIGH COURT OF DELHI AT NEW DELHI

CIVIL APPELLATE JURISDICTION

DATE OF JUDGMENT - 29-07-2022

BENCH - JUSTICE PRATHIBA M. SINGH

CITATION- CS (COMM) 565/2021 & I.A. 14673-14677/2021

APPELLANT - WALMART APOLLO LLC.

RESPONDENT - AAYUSH JAIN & ANR.

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BACKGROUND
As a composite market, India has a wide variety of markets that operate on a liberal basis. The
market place is characterised by intense competition. Anyone that wants to be successful in the
free economy needs to have a valuable and recognisable brand. The simplest way to do this is
through trademarks. For existing and prior users of trademarks, however, the squatting of
trademarks and the registering of identical and/or misleadingly similar trademarks has been an
ongoing issue in recent times. Any application for the registration of a trademark that is exact or
misleadingly similar to one that has already been registered in order to capitalise on goodwill and
reputation is regarded as having been made in ill faith. Walmart Apollo LLC. Vs. Aayush Jain &
Anr. (2021) is a recent case in which Walmart Apollo (Plaintiff) sued Aayush Jain & Anr.
(Defendant) for trademark and copyright infringement over its marks in the Delhi High Court.

FACTS OF THE CASE

Plaintiff is a fully-owned subsidiary of Walmart Inc. and the biggest retailer in the world,
operating a vast network of cheap department stores, online shops, and physical stores that sell a
variety of products, including but not restricted to home decor. Plaintiff operates over 10500
shops under 48 banners in 24 countries under the corporate name and business style "WAL-
MART/WALMART." A yellow spark, according to the plaintiff, serves as their logo and stands
for innovation, creativity, and diversity. Plaintiff learned of a trademark application for
"WMART" for hosiery and ready-made products, undergarments as specified in Class 25.
Currently pending before the Trademark Registrar is Plaintiff's opposition.
In connection to retail and wholesale services in Class 35, the plaintiff's trademark and trade
name WAL-MART/WALMART are registered in at least 90 countries throughout the world,
including India. Since 2008, the plaintiff has been using the WAL-MART/WALMART
trademark in India as both a trademark and a component of its business practises.
It is claimed that the yellow spark, which stands for innovation, creativity, and diversity, was
first used commercially in June 2008. The mark, whether it contains the word "WALMART" or
not, has become an essential component of the plaintiff's goodwill and is solely associated with
the plaintiff throughout the world. This is why para. No. 13 of the application includes the
plaintiff's sales amount in USD.
The trademark application for the mark WMART under Application no. 4411997 in Class 25
filed on January 18, 2020 about the use of the mark since 2019 and operating a website at
www.wmartretail.com created on January 24, 2020 where defendant are advertising and luring
customers using the Impugned mark was made known to the plaintiff in 2020.

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In response to a letter asking them to stop using the contested trademark, the defendants replied
that they would not stop using the mark and claimed that they had done so in good faith. Another
letter to the defendants stated that WMART is confusingly similar to the Plaintiff's registered and
well-known mark WALMART/WAL-MART and that consumers will be confused by both
marks since they are identical.
The objection procedures, which are still continuing before the Registrar of Trademarks, were
filed by the plaintiff.
The plaintiff's case was prima facie, and they filed a lawsuit against the defendants under the
Trade Marks Act of 1999 and the Copyright Act of 1957 for permanent injunction, trademark
infringement, copyright infringement, passing off, declaration of a well-known mark, and
rendering of account of profits with regard to their trademark WALMART/WAL-MART.

ISSUES
1. Whether the plaintiff has a prima facie case under Trademark Protection?
2. Whether the application filed against the defendant is lawful?
3. Whether the case of a similar trademark falls under the category of trademark
infringement under the act?

OVERVIEW OF THE JUDGEMENT

In light of the aforementioned arguments, a comparison of the two marks would demonstrate that
the plaintiff has a strong case and that, should the defendants not be ex parte prohibited from
using the trademark, they will suffer irreparable loss and harm.
The defendants, their successors, servants, agents, licensees, franchisees, representatives, sister
concerns, assignees, and anyone acting for and/or on their behalf are prohibited from using the
trademarks WMART and/or any other mark confusingly similar to or identical to the Plaintiff's
trademarks WAL-MART / WALMART as a trademark, trade name, trading style, or domain
name with respect to their goods and services, or in any other way that would constitute
infringement of the plaintiff's registered trademark and passing off the defendants' goods and
services as the plaintiff's.

CASE ANALYSIS

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A trademark is a design, mark, symbol, word or any combination of things that differentiates a
product or service from the rest of the lot in the market. Trademark as a intellectual property is
protected under Trademarks Act, 1999. A trademark typically has a direct connection to the
goodwill that a specific company or manufacturer has built up through time. If anyone other than
the manufacturer is permitted to use that trademark, it will breach the manufacturer's rights and
lead to consumer confusion because the person using it will gain from the trademark's goodwill,
which took the authorised party so many years to establish in the first place.
According to Section 11(1) of the Trademark Act, 1999, “a trademark cannot be registered if it
is deceptively similar, or identical, with the existing trademark and goods and services, that is
likely to create confusion in the mind of the public at large”.1
It is a well-established legal concept that it is the applicant's responsibility to demonstrate that
the trademark they are attempting to register won't lead to confusion among consumers. He must
persuade the Registrar that the trademark application does not violate the prohibition and can,
therefore, be registered. When the names of the two items are compared, the proof of true
confusion should be convincing enough that the consumer can't tell the two apart at all or can
only do so with difficulty.
In the present case defendants made application for the mark WMART which is confusingly
similar to plaintiff’s trademark and which would make it difficult for the consumers to
differentiate between the two brands and will cause irreparable harm and injury to the plaintiff.
It can be said that it is essential for everyone to select a trademark that can clearly distinguish
their goods from those of competitors. It has become quite usual to copy logos and sell products
online and offline in almost every sector. An distinct and unique mark should be developed to
prevent confusion and unfavourable competition so that consumers may buy real and original
goods without being confused between the two trademarks.

OTHER RELEVANT CASE LAWS

1. Yahoo!, Inc. v. Akash Arora & Anr.2
Yahoo! and Yahoo India! were the domain names that the Plaintiff and the Defendant,
respectively, each possessed. The complainant contended that users would be misled and
deceived into thinking that the two domain names were related as a result of their similarities.
According to the Delhi High Court, a domain name performs the same purpose as a trademark
and is entitled to the same level of protection. According to the court, internet users would be
misled and duped into thinking that both domain names originated from the same source. The
defendant asserted that a disclaimer had been posted on its website. A simple disclaimer was
1
The Trademark Act, 1999
2
1999 IIAD Delhi 229, 78 (1999) DLT 285

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found to be insufficient, nevertheless. The moniker became distinctive and special, and it became
strongly linked to the plaintiff. The court decided in favour of plaintiff.
2. H&M Hennes & Mauritz AB Anr. v. HM Megabrands Pvt. Ltd. & Ors. 3
The "H&M" trademark was adopted by the Plaintiff, a well-known fashion company with
thousands of stores worldwide, in 1970, and it was registered in India in 2005. The Plaintiff
claimed that the Defendant had violated their trademark by using the identical red and white
colour scheme as the Plaintiff to portray the Defendant's "HM" mark. The defendant argued that
their use and adoption of the mark was lawful and that it stood for the names of their directors.
They also claimed that because the plaintiff entered the Indian market much later, their mark had
not yet gained any notoriety in India when they adopted their "HM" mark in 2011. The court
ruled in favour of the plaintiff and stated that a company with a global reputation does not need
to have an office in India in order for its trademark to be protected there. Because of this, the
Defendant was forbidden from using the HM mark or any other misleading variants of it.
3. Pidilite Industries Limited v. Poma-Ex Products & Ors 4
In this case, it was claimed that the Defendant had unfairly utilised the mark "KWIK," which is a
component of the Plaintiff's trademark. The product's packaging was identical to that of the
plaintiff's "FEVIKWIK" product and the defendant was utilising the trademark "KWIK HEAL."
The mark "KWIK," which is a dominant component of the Plaintiff's trademark, cannot be
adopted by the Defendant, according to the High Court of Bombay. The court additionally
determined that consumers would be easily misled and deceived by the marks' phonetic
resemblance. In order to prevent the Defendant from using "KWIK" as part of their trademark, it
was determined that it was a dominant feature of the Plaintiff's trademark.

BIBLIOGRAPHY
WEBSITES-
3
2018 (74) PTC 229 (Del)
4
2017 (72) PTC 1 (Bom)

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  WWW.SCCONLINE.COM
 WWW.MANUPATRAFAST.COM
 WWW.INDIANKANOON.COM
 WWW.IPRLAWINDIA.ORG
 WWW.MONDAQ.COM

CASES-
 Pidilite Industries Limited v. Poma-Ex Products & Ors 
 H&M Hennes & Mauritz AB Anr. v. HM Megabrands Pvt. Ltd. & Ors. 
 Yahoo!, Inc. v. Akash Arora & Anr.
 Walmart Apollo Llc. Vs. Aayush Jain & Anr.