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SpicyIP Tidbit: The “Evergreen” Conundrum: DHC Grants Interim Injunction to Evergreen Sweet House in a Trademark Dispute

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[This post has been authored by SpicyIP intern Aditi Agrawal. Aditi is a final-year B.A., LL.B (IPR Hons.) student at The ICFAI University, Dehradun. Her previous posts can be accessed here.]

Images from here and here

In a recent trademark dispute between Evergreen Sweet House v. JV Evergreen Sweets and Treats & Ors., the Delhi High Court on December 23 restrained the defendants from using “JV Evergreen Sweets & Treats” mark or any similar mark which is identical to the mark “Evergreen”.  In this post, I will briefly outline the factual matrix of the case, and judicial findings in the instant matter. Notably, I spotlight two aspects where the Court’s rationale could have been more detailed.

Brief Facts and Contentions of the Parties

Evergreen Sweet House, the plaintiff, instituted a suit for trademark infringement and passing off against JV Evergreen Sweets & Treats and others.  Dispute arose when in May 2024, Evergreen Sweet received complaints from customers about a similarly named establishment operating in Lajpat Nagar. They argued that the use of “JV Evergreen Sweets and Treats” mark was an attempt to pass off their registered mark “Evergreen”, which has been in use since 1963 for selling sweets and namkeens. Per contra, JV Evergreen claimed that “Evergreen” is a generic term and cannot be monopolized. It contended that its mark, including the prefix “JV” and suffix “Sweets & Treats,” distinguishes it from Evergreen Sweet’s marks.

Judicial Findings

While deciding the passing off claim in the present suit, the Court noted that the remedy of passing off is broader in its ambit than infringement. As per the speech of Lord Oliver laid down in Reckitt Colman Products Ltd. V. Borden Inc. (popularly known as the ‘Jif Lemon’ case), goodwill (and reputation attained by the plaintiff), misrepresentation (by the defendant), and the likelihood of damage constitute the classical trinity under the law of passing off. Applying the said test, the Court held that Evergreen Sweet demonstrated substantial goodwill through evidence of long-standing use and market recognition. It found that JV Evergreen had misrepresented its mark by copying the distinctive “Evergreen” element, creating a likelihood of damage and consumer confusion. Further, it rejected JV Evergreen’s argument that “Evergreen” was generic, citing its distinctive and arbitrary nature in the context of sweets. It also dismissed the claim of acquiescence, noting  Evergreen Sweet’s timely legal response.

Online Platforms & TM Disputes 

Justice Bansal acknowledged the growing role of online food delivery platforms like Zomato and Swiggy in the modern marketplace. Both parties operated on these platforms, exacerbating the likelihood of consumer confusion and harm to Evergreen Sweet’s reputation. The Court directed Zomato, Swiggy, and Meta to delist/block infringing marks and associated accounts of the defendant. This decision aligns with Rule 3(1)(b) of the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021, which mandates intermediaries to prevent content infringing intellectual property rights. 

Room for More: What the Court Could Have Elaborated

Roslyn Atkinson, J., Supreme Court of Queensland, in her speech once stated that there are four purposes for any judgment that is written: i) to spell out judges’ own thoughts; ii) to explain your decision to the parties; iii) to communicate the reasons for the decision to the public; and iv) to provide reasons for an appeal court to consider. 

In light of this, while the Court reached the right decision, and its rationale behind the maintainability of passing off claim dehors the trademark registration is commendable, I think certain areas of the judgment could have been more detailed.

First, the Court’s decision in some way hinged on the dominant feature principle. It held that “Evergreen” was the most prominent part of both marks, rendering JV Evergreen’s prefix “JV” and suffix “Sweets & Treats” inconsequential. I think the Court here could have provided more clarity on how it determined the dominance of “Evergreen” and what specific factors or rules it applied to reach this conclusion. A notable example of orders determining the dominance of a mark is the Delhi High Court’s decision in Under Armour v. Aditya Birla.  Second, the Court rejected JV Evergreen’s argument that “Evergreen” was a generic term, citing JV Evergreen’s contradictory stance in its trademark applications. However, the Court could have further discussed the distinction between generic and descriptive terms, particularly in the context of widespread usage. For instance, in M/S Teleecare Network India Pvt Ltd vs M/S Asus Technology Pvt Ltd & Ors, the Court went on to discuss types of marks and the meaning of generic marks, and held that though ZEN is a generic word qua a school of Buddhism, it is not a generic mark with regard to mobile phones and tablets. Similarly, the Court in this case could have examined whether the alleged widespread use of “Evergreen” by others diluted its distinctiveness or if the Evergreen Sweet’s long-standing use established it as a unique identifier. Though readers might have different views on this; please feel free to share your thoughts in the comments below.

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