Our Associate, Alvin Antony discusses “Everyone wants to be a YOGI!”
The word ‘YOGI’ has caught the attention of people from time to time. More often than not, parties who wish to provide an ‘ayurvedic’ outlook to their products tend to adopt the mark “YOGI” in some or other manner. Recently, Bombay High Court, in Yogi Ayurvedic Products Pvt. Ltd v. The Yogi & Ors. IP SUIT (L) No. 1604/2021, granted an ad-interim injunction against the defendant, The Yogi and Ors., restraining it from using the mark THE YOGI on and in relation to ayurvedic and herbal preparations.
The plaintiff, Yogi Ayurvedic Products Pvt. Ltd, relied on its statutory rights in the YOGI-formative marks in various classes, including, Classes 3 and 5. The Court noted that the expression YOGI was the essential, prominent, central, leading, and memorable feature of the plaintiff’s YOGI-formative marks. In a bid to assert its common law rights, goodwill and reputation in the YOGI-formative marks, the plaintiff presented evidence of its turnover under, and advertisement expenses incurred on, and in relation to ayurvedic preparations since 1999.
According to the plaintiff, the defendant had been using the mark THE YOGI as part of the domain name, THEYOGI.STORE, and was selling the goods bearing the mark THE YOGI through its e-commerce website. The defendant had also filed applications for the registration of the mark THE YOGI in Classes 3 and 5.
In its observation on the strength of distinctiveness of the plaintiff’s YOGI-formative marks, the Court noted that the word YOGI has a common meaning in most Indian vernacular languages. Nonetheless, this does not, on its own, make the word YOGI descriptive of the product. The conjunction of word YOGI and the name of the goods cannot be said to be one where the word describes the nature of the goods or even its origin. According to the Court, the plaintiff’s argument that the word YOGI used in conjunction with the “ayurvedic and herbal preparations” has attained distinctiveness within the plaintiff’s market segment and, therefore, the plaintiff can claim the exclusivity in the mark YOGI in relation to these goods.
The Court remarked that the plaintiff may never be able to get a restraint against the world at large from using the word YOGI in relation to goods, such as, laptops, computers, automobiles. However, the plaintiff can definitely enforce its rights in the mark YOGI within the class and the market segment that it occupies. According to the Court, there is no reason why the registration, once granted, should not be entitled to statutory protection.
On the point of comparison of rival marks and goods, the Court emphasised on the universal test of comparison and remarked that the confusion should be ascertained from the point of view of consumer of imperfect recollection and average intelligence. Accordingly, the Court concluded that there was sufficient similarity between the rival marks and goods.
Shedding light on the issue of passing-off, the Court made some important observations regarding ‘Classic Trinity Test’, that comprises of (a) goodwill owned by a claimant; (b) misrepresentation and (c) damage to the goodwill of the claimant. As per the Court, fraud on the part of defendant is not a mandatory element in passing-off action. The plaintiff is merely required to show the likelihood of false representation on the part of public that lead them to believe that the goods or services of the defendant are emanating from, and/or associated with the plaintiff. As regards the element of damage, the Court clarified that the plaintiff need not prove actual or special damage and a reasonable foreseeability of probable damage to the goodwill is sufficient to invoke the passing-off action.
In light of the aforesaid findings and observations, the Court held that the plaintiff has made out a prima facie case and the balance of convenience also lays in its favour. Accordingly, the Court granted an ex-parte ad-interim injunction against the defendant restraining it from using the mark THE YOGI and/or any other marks similar to the plaintiff’s mark in any manner whatsoever.
Citation: Yogi Ayurvedic Products Pvt. Ltd v. The Yogi & Ors. IP SUIT (L) No. 1604/2021, Order dt. 08.02.21 by Bombay High Court.