Mr. Akhil Sibal, Sr. Adv. with Mr. Gaurav Miglani, Ms. Archana Sahadeva, Mr. Sharabh v. IMAGINE MARKETING PVT LTD

Judgment

1. The order impugned in the present appeal has been rendered by a learned Single Judge of this Court in IA 13041/2019 and IA Signature Not Verified FAO(OS) (COMM) 20/2020 Digitally Signed By:AJIT KUMAR Signing Date:15.09.2025 16:26:38 14039/2019. Both applications were filed in CS (Comm) 519/20191, in which the respondent Imagine Marketing Pvt Ltd2 is the plaintiff and the appellant Exotic Mile3 is the defendant. IA 13041/2019 was preferred by IMPL under Order XXXIX Rules 1 and 2 of the CPC4, seeking interim injunction, pending disposal of the suit, against EM using the marks BOULT, , , or any other mark which, according to IMPL, was deceptively similar to IMPL’s registered trade marks . IA 14039/2019, preferred by EM, sought vacation of the ex parte ad interim order of injunction already granted.

2. The learned Single Judge has, in the impugned order, injuncted EM from using the marks , , pending disposal of the suit. Additionally, though there was no such prayer in the suit or in IA 13041/2019, the impugned order also injuncts EM from using the tag line “UNPLUG YOURSELF”.

3. The learned Single Judge has not, however, injuncted EM from using the mark BOULT, or from using any mark which may be similar to the marks , . The 1 “the suit” hereinafter 2 “IMPL” hereinafter 3 “EM” hereinafter 4 Civil Procedure Code Signature Not Verified FAO(OS) (COMM) 20/2020 Digitally Signed By:AJIT KUMAR Signing Date:15.09.2025 16:26:38 order is expressly restricted to the marks , and to the tag line “UNPLUG YOURSELF”.

4. No application was filed by IMPL, seeking any modification or clarification of the impugned order passed by the learned Single Judge. Nor has any cross-appeal filed by IMPL, either, before us.

5. EM has challenged the impugned order in toto. Additionally, it has submitted that it has, in fact, discontinued use of the marks , , and the tag line “UNPLUG YOURSELF”. It is, instead, proposing to use the mark GOBOULT which, according to EM, does not violate any intellectual property rights held by IMPL in its registered trade marks.

6. IMPL has defended the impugned order. It has also opposed the proposed use, by EM, of the mark GOBOULT.

7. Our conclusions are as under: (i) IMPL never sought any injunction against the use of the tag line UNPLUG YOURSELF by EM. The learned Single Judge could not, therefore, have granted such an injunction. The impugned order, to the extent it injuncts EM from using the tag line UNPLUG YOURSELF is, therefore, quashed. Signature Not Verified FAO(OS) (COMM) 20/2020 Digitally Signed By:AJIT KUMAR Signing Date:15.09.2025 16:26:38 (ii) To the extent injuncts EM from using the marks , , the impugned order is upheld. (iii) Apropos the mark GOBOULT, the impugned order does not injunct EM from using the said mark. It does not even extend the injunction to marks which may be similar to the , . The injunction specifically restricted the marks , . There is no cross- appeal or cross-objection by IMPL praying that the learned Single Judge ought to have extended the injunction to all marks which are similar to , . In the absence of any injunction, direct or indirect, in that regard, in the impugned order, EM can obviously not be restrained from using the mark GOBOULT. (iv) Inasmuch as it never formed subject matter of the lis before the learned Single Judge, no occasion arises for us to adjudicate on whether the use of the mark GOBOULT, by EM is, or is not, liable to be injuncted. We, therefore, make no observations thereon. We merely clarify that, as on date, there is no operating injunction against EM using the mark GOBOULT. Signature Not Verified FAO(OS) (COMM) 20/2020 Digitally Signed By:AJIT KUMAR Signing Date:15.09.2025 16:26:38 The rival contentions in that regard are, therefore, not required to be considered by us. In case IMPL has any reservation against EM using the mark GOBOULT, that would constitute a distinct cause of action, for which IMPL would be at liberty to institute separate original proceedings, in accordance with law. We say nothing on the merits thereof.

8. We now proceed to advert in greater detail to the controversy, and adduce reasons for our conclusions. The lis

9. The suit stands instituted by IMPL against EM. IMPL has alleged, in the suit, that EM had, by adopting the mark BOULT, as well as the logos , , infringed IMPL’s registered trademarks and had also sought to pass off their products as the products of IMPL. Predicated on this allegation, IMPL has sought, in the suit, a decree of permanent injunction, restraining EM from using the allegedly infringing BOULT, , and from passing off their products as the products of IMPL.

10. The suit is presently pending before a learned Single Judge of this Court. Signature Not Verified FAO(OS) (COMM) 20/2020 Digitally Signed By:AJIT KUMAR Signing Date:15.09.2025 16:26:38

11. IMPL filed, in the suit, IA 13041/2019 under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 19085, seeking an interim injunction, restraining EM from using the allegedly infringing marks during the pendency of the suit. By order dated 25 September 2019, the learned Single Judge, while issuing summons in the suit and notice in IA 13041/2019, granted ex parte ad interim injunction, restraining EM from using the allegedly infringing marks till the next date of hearing. EM, thereupon, filed IA 14039/20196 under Order XXXIX Rule 4 of the CPC, for vacation of the ad interim order of stay. By order dated 21 January 2020, the learned Single Judge has allowed IA 13041/2019 and dismissed IA 14039/2019. The operative paragraph of the impugned judgment reads thus:

“24. Consequently, the applications are disposed of and an interim injunction in respect of infringement of the plaintiffs registered trademark 3456800, passing off in respect of plaintiffs registered trademarks 2828749, 2828750, 2828752, 4038057, 3456800 and 3907213, infringement of the copyright of the plaintiff’s marks, dilution of the mark is granted in favour of the plaintiff and against the defendants and the defendants, their agents are restrained from using the marks suit.” and 'UNPLUG YOURSELF' till the disposal of the

12. Aggrieved by the aforesaid order, EM has approached this Court by means of the present appeal, under Section 13 of the Commercial Courts Act, 2015. 5 “CPC” hereinafter 6 Wrongly cited, in para 10 of the impugned order as IA 1043/2019 Signature Not Verified FAO(OS) (COMM) 20/2020 Digitally Signed By:AJIT KUMAR Signing Date:15.09.2025 16:26:38

13. We have heard Mr. Akhil Sibal, learned Senior Counsel for the appellant and Mr. Mukul Rohatgi, Mr. Jayant Mehta and Mr. J. Sai Deepak, learned Senior Counsel the respondent, at length. Learned Counsel have also filed written statements which have been duly considered. Facts Pleadings before the learned Single Judge The plaint

14. The plaint, as instituted by IMPL, is predicated on the following assertions and allegations: (i) IMPL is a market leader in electronic gadgets such as earphones, headphones, speakers, sound bars and travel chargers, which are manufactured and sold under its flagship 7, which was coined and adopted by its directors in 2014. IMPL also adopted the tagline “PLUG INTO NIRVANA”. (ii) The logo is an original artistic work, of which IMPL is the copyright owner. In the said logo, the letter 7 “the boAt" mark hereinafter Signature Not Verified FAO(OS) (COMM) 20/2020 Digitally Signed By:AJIT KUMAR Signing Date:15.09.2025 16:26:38 is independently an artistic work, which depicts the image of a boat within the letter. The boAt device independently used by IMPL for its products. The various devices and marks used by IMPL are as under: (iii) The aforesaid boAt logos, as original artistic works, were created by Bharat Kumar Sharma in 2014 for consideration, and were transferred to IMPL vide No Objection Certificate dated 10 May 2014. As the owner of copyright in the boAt logos, IMPL had the exclusive right to use or reproduce the said logos. (iv) IMPL is also the registered proprietor of the following registrations, under Section 23 of the Trade Marks Act 1999: Registration No Class Trademarks 2828749 2828750 9 11 Signature Not Verified FAO(OS) (COMM) 20/2020 Digitally Signed By:AJIT KUMAR Signing Date:15.09.2025 16:26:38 Date of Application 16 October 2014 16 October 2014 2828752 35 3456800 4038057 4117864 9 9 9 16 October 2014 13 January 2017 boAt (WORD) 26 December 2018 14 March 2019 4117865 35 14 March 2019 3907213 3456799 4203500 9 9 9 4 August 2018 Plug Into Nirvana NIRVANAA 13 January 2017 11 June 2019 (v) Various assertions regarding the goodwill and reputation of IMPL in the aforesaid logos have also been made. As EM does not challenge the goodwill and reputation of IMPL, reference to these assertions is being eschewed. However, it may be noted that, to vouchsafe its reputation, IMPL has placed on record its turnover which increased from ₹ 5.5 crores in its Signature Not Verified FAO(OS) (COMM) 20/2020 Digitally Signed By:AJIT KUMAR Signing Date:15.09.2025 16:26:38 first year of production 2014-15 to over ₹ 330 crores in the year 2019-20. (vi) The boAt marks were, therefore, source identifiers of IMPL and had acquired enviable reputation in the market. (vii) In February 2019, IMPL received an email from online marketplace Myntra regarding a customer complaint, purportedly from a customer who had purchased EM’s product, believing it to be IMPL’s. Further enquiries revealed that EM was selling cheap and low quality gadgets under the brand name BOULT, which is deceptively similar to the boAt brand of IMPL. (viii) Moreover, EM is owned by Vinod Kumar Gupta, the father of Varun Gupta, who had approached IMPL in 2017, desiring to become its distributor. IMPL had initially allowed Varun Gupta to operate as its reseller but, owing to lack of professionalism on his part, had to end the relationship. (ix) The opening “B” and the closing “T” consonants resulted in the mark BOULT result in its becoming phonetically deceptively similar to IMPL’s mark BOAT. Signature Not Verified FAO(OS) (COMM) 20/2020 Digitally Signed By:AJIT KUMAR Signing Date:15.09.2025 16:26:38 (x) EM had also adopted the logo , which was also imitative of IMPL’s logo. (xi) By using a phonetically deceptively similar mark and a deceptively similar logo to that of IMPL, EM had created a situation in which there was every likelihood of confusion, among consumers, between the marks of EM and IMPL. (xii) It was conceded, however, the device mark stood registered in favour of EM in 2017 in class 9 for “electronics ear phones, head phones, smart watches, smart wearables, mobile & mobile accessories, laptops, scientific nautical, surveying electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments apparatus recording, transmission reproduction of sound or images, magnetic data carriers, recording discs; mechanisms for coin-operated apparatus: cash registers, calculating machines, data processing equipment and computers and fire extinguishing apparatus”. (xiii) To exacerbate the likelihood of confusion, EM also adopted the tagline “UNPLUG YOURSELF” which was Signature Not Verified FAO(OS) (COMM) 20/2020 Digitally Signed By:AJIT KUMAR Signing Date:15.09.2025 16:26:38 deceptively similar IMPL’s tagline “PLUG INTO NIRVANA”, and named one of its products as “Boult Bass Bud” which is deceptively similar to the name of IMPL’s corresponding products “boat Bass Heads”. (xiv) EM had also adopted a get-up and colour scheme for its products, as well as a mode of packaging, which was similar to that of IMPL.

15. Predicated on these assertions and allegations, IMPL alleged that EM had, by using the , marks, infringed registered BOAT/boat, marks of IMPL and had also sought to pass off its products as the products of IMPL.

16. Accordingly, IMPL instituted the suit against EM, seeking injunctive reliefs as already noted in para 9 supra, along with delivery- up, rendition of accounts, damages and costs. Written statement

17. Responding to the assertions in IMPL’s plaint, EM contended, in its written statement, as under: Signature Not Verified FAO(OS) (COMM) 20/2020 Digitally Signed By:AJIT KUMAR Signing Date:15.09.2025 16:26:38 (i) EM was a proprietorship, engaged in the business of audio gadgets and specialised in speakers and head phones since 2017. It is presently one of the largest Indian owned audio brands. (ii) EM coined the marks BOULT and BOULT AUDIO and in 2017 and has been continuously and extensively using the said marks since then. (iii) BOULT is an arbitrary word, which has no etymological meaning. It was a derivative of “BOLT”. (iv) In order to strength its mark, EM also obtained registration of the device mark in 2017 in class 9. (v) The logo was also an inventive creation by joining the first letters of Boult and Audio, and was coined thus: Signature Not Verified FAO(OS) (COMM) 20/2020 Digitally Signed By:AJIT KUMAR Signing Date:15.09.2025 16:26:38 (vi) There is no similarity between the said mark and the IMPL’s mark, even if the marks are seen in red and white colour combination. (vii) EM had also considerable market exposure, with its sales turnover increasing from ₹ 2,96,19,290/- in 2017-2018 to ₹ 66,59,39, 394/- in April-September 2019. (viii) EM had also incurred promotional expenses, to promote and advertise its marks, which had increased from ₹ 4,18,882/- in 2017-2018 to ₹ 3,39,37,682/- in April-September 2019. (ix) The following comparative table makes it clear that there is no similarity between EM’s and IMPL’s marks: EM’s trade marks IMPL’s trade marks BOULT (word mark) boAt (word mark) Signature Not Verified FAO(OS) (COMM) 20/2020 Digitally Signed By:AJIT KUMAR Signing Date:15.09.2025 16:26:38 UNPLUG YOURSELF UNPLUG INTO (TAGLINE NIRVANA (TAGLINE) (x) IMPL was not using as a standalone mark, and it was only part of its logo. The standalone mark which was used by IMPL was the logo , which had no similarity either with IMPL’s or EM’s . (xi) Equally, there is no similarity between the tagline “UNPLUG YOURSELF” and “PLUG INTO NIRVANA”, the only common factor being “PLUG”, which is a term common to Signature Not Verified FAO(OS) (COMM) 20/2020 Digitally Signed By:AJIT KUMAR Signing Date:15.09.2025 16:26:38 the trade and over which no one can claim monopoly. Moreover, the meanings of the two taglines were opposed to each other. (xii) Similarly, it could not be said that the name “Boult Bass Buds” is similar to “boAt Bass Heads” The only common feature between the two names is “Bass”, which, again, is a term which is common to the trade.

18. For all these reasons, EM submitted that IMPL had not made out a prima facie case as would entitle it to any relief from the Court. Replication

19. In its replication, IMPL contested EM’s claim that it had been since 2017. It was pointed out that the application dated 18 October 2018 for registration of the said mark was filed on proposed to be used basis. The claim that the mark BOULT have been derived from “BOLT” was also denied as being an afterthought and without merit. The logos of IMPL and EM, it was submitted, both resembled the letter A, and the likelihood of confusion between them, in the mind of the consumer, was inevitable. The claims to reputation and goodwill, urged by EM, were also denied. It was submitted that the sales turnover of EM, in the years Signature Not Verified FAO(OS) (COMM) 20/2020 Digitally Signed By:AJIT KUMAR Signing Date:15.09.2025 16:26:38 2017-2018 and 2018-2019 was insignificant, and exponentially rose in 2019 after EM adopted the imitative mark.

20. The remaining assertions in the replication filed by IMPL were broadly reiterative of the assertions in the plaint. The impugned judgment

21. By judgment dated 21 January 2020, the learned Single Judge has allowed IA 13041/2019 filed by IMPL and dismissed IA 14039/2019 filed by EM. The learned Single Judge has, in arriving at her conclusion, reasoned thus: (i) IMPL was the prior user of the trademark BOAT. (ii) The rival marks were used for goods belonging to the same category with similar descriptions. (iii) IMPL already had an established market when Mr. Varun Gupta acted as a Consultant for EM, even as per EM’s own averment. Thus, EM was aware of the trademark of IMPL. (iv) BOAT and BOULT are phonetically similar, inter alia because of the fact that two words had the same first and last consonance, i.e., B and T. Signature Not Verified FAO(OS) (COMM) 20/2020 Digitally Signed By:AJIT KUMAR Signing Date:15.09.2025 16:26:38 (v) Thus even on this ground, a case of deceptive similarity of the mark BOULT with the mark BOAT is made out. Reliance has been placed, for this purpose, on the judgment of the Supreme Court in K.R. Chinna Krishna Chettiar v Shri Ambal & Co.8 and on the judgment of the High Court of Bombay in Encore Electricals Ltd v Anchor Electronics and Electricals Ltd9. (vi) The products of IMPL and EM sold under the rival marks were purchased by persons of all strata of society, including children. (vii) The logos adopted by EM and IMPL were similar. Both were in the form of a triangle. (viii) The use of the word PLUG in the tagline of EM was also designed to cause deception. (ix) Thus, as the adoption of its mark, logo and tagline was dishonest, the fact that EM had been using its mark since 2017, or had invested huge amounts in promotion and advertising, would not tilt the balance of convenience in its favour. (x) Apart from using a deceptively similar logo and name, even the name of the product of EM, i.e. “Boult Bass Buds”, 8 (1969) 2 SCC 131 9 2007 (35) PTC 714 Signature Not Verified FAO(OS) (COMM) 20/2020 Digitally Signed By:AJIT KUMAR Signing Date:15.09.2025 16:26:38 was similar to the name of IMPL’s corresponding product, i.e. “boAt Bass Heads”. (xi) Though, as EM’s mark was also registered, no action for infringement would lie, a prima facie case for passing off is made out.

22. On the basis of these findings, the learned Single Judge has granted an interim injunction, restraining EM from using the marks , and the tagline ‘UNPLUG YOURSELF’ till the disposal of the suit.

23. Aggrieved thereby, EM has filed the present appeal. Rival Contentions Submissions of Mr. Akhil Sibal, learned Senior Counsel for EM

24. Mr. Sibal submits, at the outset, that, even without any prayer for injunction against use of the tagline UNPLUG YOURSELF, the learned Single Judge has injuncted the use of the tagline. Even on this sole ground, it is submitted that the injunction against use of the tagline UNPLUG YOURSELF is liable to be set aside.

25. Equally, it is submitted that there is no relief sought qua the use, by EM, of “Boult Bass Bud” as the name of one of its products. There Signature Not Verified FAO(OS) (COMM) 20/2020 Digitally Signed By:AJIT KUMAR Signing Date:15.09.2025 16:26:38 is also no allegation of trade dress infringement. The impugned judgment of the learned Single Judge, however, significantly relies, to support its conclusions, on the similarity between IMPL’s “Boult Bass Bud” and EM’s “boAt Bass Heads”, as well as on the finding that the trade dress and colour combination of the rival logos of IMPL and EM was similar. In the absence of any such assertion in the plaint, it is submitted that the learned Single Judge could not have relied on similarity in the colour of the logos, their get-ups or the perceived similarity in the taglines UNPLUG YOURSELF and PLUG INTO NIRVANA, to support her findings. The learned Single Judge has, therefore, relied on irrelevant considerations, which also vitiates the impugned order.

26. It is further submitted that IMPL has sought to mislead the Court and has approached the Court with unclean hands. This, by itself, is submitted, is a factor which would disentitle it injunction. This argument is predicated on the reliance by IMPL on the e-mail dated 14 September 2019 of Ankit Kothari. On the strength of the said e-mail, IMPL seeks to contend that there was proof of actual customer confusion. The e-mail was, however, a fabricated email, as Ankit Kothari was, in fact, in regular touch with Varun Gupta much prior to sending the said email, regarding comparative pricing of the brands. Reliance on such a concocted and manufactured email, it is submitted, is sufficient to non-suit IMPL. It is further submitted that the learned Single Judge has completely missed this point, as is apparent from her observation, in para 22 of the impugned judgment, that the mere fact that Ankit Kothari was in constant touch Signature Not Verified FAO(OS) (COMM) 20/2020 Digitally Signed By:AJIT KUMAR Signing Date:15.09.2025 16:26:38 with EM would not mitigate the likelihood of confusion among the consuming public.

27. The assertion of IMPL that Varun Gupta was a distributor of IMPL is denied. It is emphasized that Varun Gupta had never been a distributor of IMPL, and that IMPL had never conducted any business with him.

28. The findings of the learned Single Judge regarding mala fides and dishonest adoption, as returned against EM, are, it is submitted, without any justification whatsoever. In arriving at the said findings, the learned Single Judge has completely ignored para 2(d) of the written statement filed by EM, in which EM had explained the reasoning for adopting the logo , thus: “2(d). That, further, in order to do the further branding of its products, the Defendant also designed and created it unique artistic logo . The said logo was created by the Defendant by joining the first alphabets of the Defendant's trade name/ trade mark "Boult Audio" which” is also written under the said logo. A visual representation of how the Defendant's trade was created is given hereinbelow: Signature Not Verified FAO(OS) (COMM) 20/2020 Digitally Signed By:AJIT KUMAR Signing Date:15.09.2025 16:26:38 ” It is submitted that the learned Single Judge has not appreciated the the adoption of the logo was, therefore, by combining the logos and that, therefore, the adoption was honest and not imitative in any way.

29. Mr. Sibal further submits that the learned Single Judge has erred in failing to take into account the nature of the consumer who would be dealing with the rival products. The finding of the learned Single Judge that the products would be purchased by persons of all strata of society, including children, is submitted, is palpably erroneous. The products in question are tech products and would be purchased only by persons who are aware of such products, and certainly not by children. As the consumer segment which purchases the products of the rival products of IMPL and EM are enlightened consumers, who are aware of what they are purchasing, the likelihood of confusion, if any, is minimized. This factor, it is submitted, has been overlooked by the learned Single Judge.

30. The learned Single Judge has herself held that the case cannot be of one of infringement, as EM’s mark is registered. The case is, therefore, only of passing off. In the case of passing off, submits Mr. Sibal, added matter is of relevance, as has been held by the Supreme Court in Kaviraj Pandit Durga Dutt Sharma v Navaratna Signature Not Verified FAO(OS) (COMM) 20/2020 Digitally Signed By:AJIT KUMAR Signing Date:15.09.2025 16:26:38 Pharmaceuticals Laboratories10. If, therefore, the defendant is able to point out that the added matter which is present in the plaintiff’s and defendant’s marks is sufficient to minimize the likelihood of confusion, no case of passing off can be said to have been made out. The rival marks in the present case, it is submitted, are completely dissimilar in appearance. The boAt mark of IMPL has no similarity whatsoever with the mark of EM. The finding of the learned Single Judge that there is deceptive similarity between the marks is, therefore, it is submitted, prima facie perverse and is liable to be set aside.

31. It is further submitted that the learned Single Judge has placed exaggerated and undue reliance on the perceived phonetic similarity between “BOAT” and “BOULT”. 90% of the sales of the products of IMPL and EM admittedly took place online, so that the possibility of consumers being confused between the products on account of any phonetic similarity between boAt and BOULT, it is submitted, hardly exists.

32. Moreover, the learned Single Judge has erroneously relied on the judgment of the Supreme Court in K.R. Chinna Krishna Chettiar v Shri Ambal & Co.11 to support her finding that phonetic similarity alone could also constitute a legitimate ground to grant injunction. K.R. Chinna Krishna Chettiar, it is submitted, was not a case which dealt with passing off but was an infringement suit. The learned Single