Case Note & Summary
The plaintiff, Hygienic Research Institute Private Limited, filed a suit for trademark infringement and passing off against the defendants, Chandan and Shah Trading LLP and its partner, alleging that the defendants' mark 'STREAK Street' infringed its registered trademark 'STREAX' used for cosmetics, hair care, and related products. The plaintiff had used 'STREAX' since 2002, with extensive sales (over ₹2,777 crores from 2004-2024) and advertising, and had obtained registrations in multiple classes and international jurisdictions, including a declaration as a well-known mark in Indonesia. The defendants, in the same trade of hair products, applied for registration of 'STREAK Street' in 2019 on a proposed-to-be-used basis, but after the plaintiff opposed, they withdrew and refiled claiming user since 2018, which the court found dishonest. The defendants argued that 'STREAK' was descriptive and that their mark was different in getup. The court, after hearing arguments, found that the essential feature of the defendants' mark was 'STREAK', which was phonetically and structurally similar to 'STREAX', and that the adoption was dishonest. The court granted an interim injunction restraining the defendants from using the mark 'STREAK Street' or any deceptively similar mark, pending disposal of the suit.
Headnote
A) Trade Marks Act, 1999 - Section 29 - Infringement - Deceptive Similarity - The plaintiff's registered word mark 'STREAX' and the defendants' mark 'STREAK Street' are phonetically and structurally similar, with the essential feature 'STREAK' being nearly identical to 'STREAX'. The court held that the defendants' adoption was dishonest, given the plaintiff's prior use and reputation, and that the use of 'STREAK' in a descriptive sense was not a valid defence as the mark as a whole was deceptively similar. (Paras 1-42)
B) Trade Marks Act, 1999 - Section 135 - Passing Off - Goodwill and Reputation - The plaintiff demonstrated extensive use, high sales turnover (over ₹2,777 crores over 20 years), and recognition as a well-known mark in Indonesia. The court held that the defendants' use of a deceptively similar mark in the same trade was likely to cause confusion and damage the plaintiff's goodwill, justifying an interim injunction. (Paras 1-42)
C) Trade Marks Act, 1999 - Section 11 - Honest and Concurrent Use - Dishonest Adoption - The defendants claimed user since 2018 but filed contradictory applications (proposed to be used in 2021, then claimed user from 2018 after opposition). The court held that this conduct demonstrated dishonesty and lack of bona fides, disentitling them to any defence of honest concurrent use. (Paras 12-42)
Issue of Consideration
Whether the defendants' use of the mark 'STREAK Street' infringes the plaintiff's registered trademark 'STREAX' and amounts to passing off, warranting interim relief.
Final Decision
The court allowed the interim application and granted an injunction restraining the defendants from using the mark 'STREAK Street' or any other mark deceptively similar to the plaintiff's registered trademark 'STREAX', pending disposal of the suit.
Law Points
- Trademark infringement
- passing off
- deceptive similarity
- dishonest adoption
- interim injunction
- descriptive mark
- phonetic similarity
- essential feature test
Case Details
2025 LawText (BOM) (3) 51
Interim Application No. 245 of 2025 in Commercial IP Suit (Lodging) No. 32628 of 2024
Mr. Hiren Kamod a/w Mr. Ramesh Gajria, Ms. Deepa Hate and Mr. Prem Khullar i/b Gajria & Co. for Applicant/Plaintiff; Mr. Ashish Kamat, Senior Counsel a/w Mr. Rashmin Khandekar and Mr. Pranshul Dube i/b Haseena Khan for Defendants.
Hygienic Research Institute Private Limited
Chandan and Shah Trading LLP & Anr.
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Nature of Litigation
Commercial Intellectual Property Suit for trademark infringement and passing off.
Remedy Sought
Interim injunction restraining the defendants from using the mark 'STREAK Street' or any deceptively similar mark.
Filing Reason
The plaintiff alleged that the defendants' use of 'STREAK Street' infringed its registered trademark 'STREAX' and amounted to passing off.
Previous Decisions
The plaintiff had previously obtained orders from this Court in its favour indicating vigilance in protecting its trademark. The District Court of Central Jakarta, Indonesia, declared 'STREAX' a well-known trademark on 13th June, 2016.
Issues
Whether the defendants' mark 'STREAK Street' is deceptively similar to the plaintiff's registered trademark 'STREAX'.
Whether the defendants' adoption of the mark was dishonest.
Whether the plaintiff is entitled to an interim injunction.
Submissions/Arguments
Plaintiff argued that 'STREAX' is a registered word mark since 2002 with extensive use and goodwill; the defendants' mark is phonetically and structurally similar; the defendants' conduct in filing contradictory applications shows dishonesty.
Defendants argued that 'STREAK' is descriptive of hair streaks; their mark 'STREAK Street' is different in getup and has gained its own goodwill; no confusion is likely.
Ratio Decidendi
The essential feature of the defendants' mark 'STREAK' is phonetically and structurally similar to the plaintiff's registered mark 'STREAX', and the defendants' adoption was dishonest given the plaintiff's prior use and reputation. Therefore, the plaintiff made out a strong prima facie case for infringement and passing off, and the balance of convenience favoured granting an interim injunction.
Judgment Excerpts
The plaintiff claims that the leading and essential feature of the impugned mark i.e. the word 'STREAK' is identical / deceptively similar to the registered trademark 'STREAX.'
The dishonesty of defendant No.1 becomes obvious from the fact that while in the application for the impugned trademark filed on 30th July, 2021, it was stated that it was proposed to be used, but, after withdrawing the said application and while filing a fresh application for the same impugned trademark in the very same class i.e. class 26 on 10th December, 2022, the defendant No.1 claimed user since 08th January, 2018.
Procedural History
The plaintiff filed Commercial IP Suit (Lodging) No. 32628 of 2024 and moved Interim Application No. 245 of 2025 for interim relief. The defendants filed an affidavit-in-reply, the plaintiff filed a rejoinder, and the defendants filed a sur-rejoinder. The application was heard and reserved on 13th February, 2025, and the order was pronounced on 5th March, 2025.
Acts & Sections
- Trade Marks Act, 1999: Section 29, Section 135, Section 11
- Companies Act, 1956:
