The Hon’ble High Court of Delhi in the case of Zenith Dance Institute Pvt. Ltd. vs. Zenith Dancing And Music held that the principle of estoppel also has legitimate boundaries. Granting an order of interlocutory injunction, the High Court held that even though the term “ZENITH” is a common English word it still holds distinctiveness. Further, the same being the prominent element in both parties' marks which are being used for allied services, would lead to confusion/association in the minds of the public with imperfect recollection.
The present case was filed by Zenith Dance Institute Pvt. Ltd. (hereinafter referred to as the ‘Plaintiff’). The Plaintiff sought an injunction order against Zenith Dancing And Music (hereinafter referred to as the ‘Defendant’) to restrain the Defendant from providing services under the mark “ZENITH” or any other deceptively similar mark.
The Delhi High Court in January 2021, had already issued an ex parte ad interim injunction order, restraining the Defendant from using the mark “ZENITH” or deceptively similar marks. The said order has been in force since then.
The Plaintiff alleged that it opened the dance institute in 1997 using the term “ZENITH” and has been continuously and exclusively using the same since then. The Plaintiff submitted that it is the registered owner of the device mark “” and “ZENITH ARTS” (hereinafter referred to as the ‘said marks’) with effect from 2007 and 2014 respectively. The Plaintiff has been providing education in relation to various forms of dance under the said marks. It further submitted that it also holds a copyright registration for the device mark “” since 2014.
The Plaintiff further asserted that it came across the Defendant’s mark “” registered for services under class 41 in May 2014, wherein it had claimed use since May 1999. The Plaintiff thus applied for the removal of the Defendant’s mark from the Trademarks Register, which was allowed by the IPAB vide its order dated May 01, 2018. The Plaintiff alleged that despite the order of IPAB, the Defendant kept on running its dance studios under the marks “” and “” having “ZENITH” as the prominent element. Thus, use of such marks for similar services would lead to the likelihood of confusion/association.
The Defendant argued that it has been using the term “ZENITH” in its mark since 1999. Further, it asserted that the Plaintiff in its response to examination report filed for the mark “ZENITH ART” had claimed difference from the Defendant’s “” mark. The Defendant thus submitted that the Plaintiff is estopped from claiming similarity between the marks on the basis of the term “ZENITH”.
Analysis and Findings
The High Court after consideration of the arguments and submissions of both parties noted that:
- Estoppel: The Plaintiff having pleaded dissimilarity from the Defendant’s “” mark cannot plead now that it is similar to the “ZENITH ARTS” mark of the Plaintiff or injunct the Defendant from using the same. However, the Court mentioned that the principle of estoppel should also have legitimate boundaries. Court explained with an example mentioning “applicant seeks to register mark A, and pleads, to obtain registration, that mark A is dissimilar to a cited mark B of the defendant, then, having obtained registration, the applicant stands estopped, in future, from contending that mark B is, in fact, similar to mark A. The estoppel can extend only to this extent. It cannot envelop any other marks X, Y or Z, be they of the plaintiff or the defendant.” Thus, the estoppel would only apply to the mark “” of the Defendant and not to others.
- Confusion/Association: The Court agreed with the Plaintiff and ruled that “ZENITH” is the prominent element of the Defendant's mark. Thereby, mentioning that the same will have an impression in the psyche of the customer of average intelligence and imperfect recollection. It further mentioned that difference in overall design and layout “cannot efface the possibility of confusion”. Further, it mentioned that since both marks are being used for providing education in dance, customer overlap is also bound to happen. Hence, “The use of ―Zenith‖ as part of the mark of the defendant is bound, therefore, to create confusion in the mind of a customer of average intelligence and imperfect recollection.”
- “ZENITH”, a common English word: The Court held that the term “ZENITH” is not descriptive of the dance services provided thereunder. Thus, can be easily distinguished in respect of the goods/services it is being used for from those of others. “It cannot, therefore, be treated as a mark which is lacking in distinctive character, such as to disentitle itself to any claim to monopoly.”
- Lastly, based on the evidence submitted by the parties, the Court opined that the Plaintiff is the prior user of its marks comprising the term “ZENITH”.
The Learned High Court thus granted an interlocutory injunction order as the Defendant’s marks infringed the rights of the Plaintiff in its mark “”.
The decision highlights that a common English term can also be distinctive if the term in question suffices to distinguish the goods or services in respect of which it is used from the goods or services of another. Further, the similarity in the dominant part of the mark can overshadow the overall difference in marks if used for allied goods/services.