Case Note & Summary
The plaintiff, Aegon Life Insurance Company Limited, instituted a suit for passing off against Aviva Life Insurance Company India Limited, seeking an interim injunction to restrain the defendant from using the mark 'Aviva i-Term Smart' for its online term insurance policies. The plaintiff claimed to have coined the trade mark 'iTerm' in 2009 and used it continuously for its own online term insurance products, including Aegon Life iTerm Plus. It alleged that the mark was inherently distinctive, not descriptive, and had acquired substantial goodwill and secondary meaning in the market. The plaintiff had applied for registration of various iTerm marks in class 36 and secured registration for one variant post-suit. In May 2018, the plaintiff learned of the defendant's launch of Aviva i-Term Smart and sent a cease-and-desist notice, also petitioning the Insurance Regulatory and Development Authority of India (IRDAI), which declined jurisdiction. The defendant replied that 'iTerm' is a combination of common industry indicators—'i' for internet and 'Term' for term insurance—and thus no exclusive rights could be claimed. At the hearing of the notice of motion, the plaintiff argued that 'iTerm' is an invented, coined word with no dictionary meaning, and that the defendant's own registration of 'i-LIFE' and applications for 'i-Shield' and 'i-Secure' estopped it from arguing descriptiveness. The plaintiff also presented Google Trends data to show that public searches for 'iTerm' spiked only after its adoption, associating the term with the plaintiff's business. The defendant, though not fully detailed in the provided text, opposed on descriptiveness grounds. The court framed three key issues for determination: (A) whether 'iTerm' is inherently distinctive; (B) whether it has acquired secondary meaning; and (C) whether the defendant's use constitutes passing off through misrepresentation and likelihood of confusion. The court heard submissions on these points but the final decision and operative order are not included in the provided excerpt. The judgment was reserved on 3 May 2019 and pronounced on 19 August 2019.
Headnote
A) Trade Mark - Inherent Distinctiveness - Plaintiff claimed 'iTerm' is a coined and invented mark, not descriptive; defendant contended it is common trade usage with 'i' for internet and 'Term' for term insurance - Court considered submissions but final determination not fully recorded in provided text (Paras 7-8).
B) Trade Mark - Secondary Meaning - Plaintiff argued that extensive use since 2009 and Google Trends evidence established acquired goodwill and exclusivity, so mark connotes plaintiff's insurance products alone - Court noted the issue but decision incomplete in excerpt (Paras 3,8.1).
C) Passing Off - Likelihood of Confusion - Plaintiff alleged defendant's 'Aviva i-Term Smart' is deceptively similar to 'iTerm' and use on similar online platforms would mislead consumers, supported by cease-and-desist correspondence; defendant denied confusion citing descriptiveness - Court framed issue but final assessment not included in available judgment text (Paras 5-7).
Issue of Consideration
Whether the plaintiff's trade mark 'iTerm' is inherently distinctive or has acquired secondary meaning, and whether the defendant's use of 'Aviva i-Term Smart' constitutes passing off.
Law Points
- trade mark distinctiveness
- passing off
- secondary meaning
- inherent distinctiveness
- descriptive marks
- likelihood of confusion
- coined marks
- estoppel by conduct
Case Details
2019 LawText (BOM) (08) 122
Notice of Motion No. 622 of 2019 in Commercial Suit (IP) No. 298 of 2019
Virag Tulzapurkar, V.R.Dhond, Pooja Kshirsagar (for plaintiff); Veerendra Tulzapurkar, Manoj Mendha, Neeta Bhatta (for defendant)
Aegon Life Insurance Company Limited
Aviva Life Insurance Company India Ltd
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Nature of Litigation
Suit for passing off to restrain defendant from using the mark 'i-Term' for online term insurance products.
Remedy Sought
Plaintiff seeks interim injunction against defendant from using the mark 'Aviva i-Term Smart' or any mark containing 'iTerm'.
Filing Reason
Plaintiff discovered defendant launched its online term insurance product under 'Aviva i-Term Smart' in May 2018, which plaintiff believed infringed its prior trade mark 'iTerm'.
Issues
Whether the plaintiff's mark 'iTerm' is inherently distinctive for online term insurance policies.
Whether the plaintiff's mark 'iTerm' has acquired secondary meaning or goodwill such that it denotes the plaintiff's products exclusively.
Whether the defendant's use of 'Aviva i-Term Smart' is likely to cause misrepresentation, confusion, or deception, amounting to passing off.
Submissions/Arguments
Plaintiff: 'iTerm' is a coined, invented word that is not descriptive; it has no dictionary meaning and is inherently distinctive. The plaintiff was the first to adopt it in 2009 and has used it continuously, earning goodwill. Google Trends shows public association with the plaintiff. No one else in the insurance industry used the mark before the defendant.
Judgment Excerpts
This is an action for passing of which has been instituted by the Plaintif on the basis of its trade mark “iTerm” (Aegon Life iTerm Plus) seeking an order of injunction against the Defendant restraining it from using the mark “i-Term” (Aviva i-Term Smart) in respect of its insurance policies.
According to me, the moot question that requires consideration is whether the Plaintiffs trade mark “iTerm” is inherently distinctive of its products viz. term insurance policies which are sold over internet or that whether the Plaintif has acquired immense goodwill and reputation in its mark “iTerm” that such use of the said expression albeit with additional features by the Defendant in respect of its term insurance policies sold over internet is likely to lead to confusion or deception or misrepresentation and consequently damages?
The trade mark ‘iTerm’ is a coined and invented term and it is inherently distinctive; that it is capable of distinguishing the Plaintiffs product i.e. insurance policies sold over internet from those of the others; that the word ‘iTerm’ is not an ordinary English language word and there is no meaning assigned to the word ‘iTerm’ in the English language; that the word ‘iTerm’ is not found in any dictionary; that the individual meaning of ‘i’ is not internet or insurance and “term” is not term insurance, in any dictionary.
Procedural History
Plaintiff launched iTerm insurance policies online in 2009 and obtained IRDAI approval. In May 2018, plaintiff learned of defendant's launch of 'Aviva i-Term Smart' and sent a cease-and-desist notice on 22 May 2018, also approaching IRDAI which replied on 6 July 2018 declining jurisdiction. Defendant replied on 30 May 2018 denying claims. Plaintiff filed the present suit in June 2018 and took out the Notice of Motion. The matter was heard and judgment reserved on 3 May 2019, pronounced on 19 August 2019.
