Aumirah

 TRIPLE IDENTITY TEST: NYKAA VS OYKAA

Nykaa E-Retail Pvt. Ltd. claims to be one of the most well-known e-commerce platforms with an extensive range of products, focusing on women and even manufacturing their products. They sell makeup, wellness, and skincare products. They filed a suit of injunction against the infringement of its registered trademark ‘NYKAA.’

Nykaa has obtained its trademark under various classes. They even have registrations all over the globe, in Singapore, UAE, United Kingdom, Bangladesh, Kuwait etc.

Their trademark is derived from the Hindi word ‘Nayaka,’ representing an actress or someone in the spotlight. Thus, the word ‘Nykaa’ is claimed to be a distinctive mark without any dictionary meaning. FSN E-Commerce Ventures Ltd has licensed the mark.

A defendant under the mark ‘OYKAA’ is involved in identical goods and services, i.e., makeup, skincare, and wellness products. They are marketing various cosmetic products  and run a website ‘www.oykaa.com’

The defendant has not only adopted a similar mark but also a similar website design.  Along with the similar name of the product, the similar design of the website can cause considerable confusion to the consumer.

Also, it is important to note that the domain for ‘Oykaa’ was registered on 7th October. 2021, and the trademark has been filled on a ‘proposed to be used’ basis in 2022. Hence, the adoption of this trademark is pretty recent. Meanwhile, Nykaa adopted its mark in 2012 and has even applied for a well-known trademark before the Trademark Registry.

Everything from the mark, use, and the website gives a clear image that there is a conscious attempt to imitate and copy the mark ‘NYKAA’ with the sole motive of gaining monetary benefits. A comparison of each of the aspects of the website gives a clear indication of the same.

The defendant has gone as far as to blatantly copy ‘the terms and conditions’ of the website. They have not even considered changing the ‘terms and conditions’ of the website.

Issue : Has the trademark of Nykaa been infringed by the other mark, i.e., ‘Oykaa’?


OBSERVATION

The Court used the ‘Triple Identity Test,’  wherein they looked into three factors;

1. Whether the services and goods are identical?

2. Whether the trade channel and customers are identical?

3. Is the mark also imitative and identical to the Plaintiff’s mark?

The above conditions are satisfied in the given case.

Further, the Court cited the case of Ahemed Ooomerbhoy v. Gautam Tank, where both the word and the device ‘Postman’ were registered. The cited mark ‘Super Postman’ was similar, goods were identical, and the area of trade was also common. The ‘Test of Triple Identity’ was satisfied, and a case of passing off was made out. Moreover, the Court observed that if the above three factors are satisfied, the second manufacturer should not be allowed to use the same name to sell its products.

This principle has been demonstrated in several cases.

The Calcutta High Court elaborated on this rule in Kalyani Breweries v. Khoday Brewing and Distilleries Industries Ltd. It clearly stated that where the marks were identified, the goods were identified, and the areas over which the goods were to be sold were identified. A second manufacturer cannot use or sell its product under the same trade name. If a prima facie comparison of marks shows that essential features have been adopted, the minor differences in getup and packing would not be considered substantive. The minor differences would not be enough to prevent confusion or deception.


JUDGEMENT

It is manifestly obvious from the above-stated cases, laws, and facts, that the defendant is using the mark ‘Oykaa’ to straddle on the goodwill and reputation created by ‘Nykaa’.

The Court concluded that a prima facie case is made out for grant of ex-parte interim injunction. If the Court does not take immediate action against the defendant, then Nykaa could suffer irreparable loss to its business and the customers who place their trust in the goodwill created by Nykaa.

Thus, the Court restrained the defendant from using the mark, name, or logo of ‘OYKAA,’ and this would even extend to the use of any mark identical or similar to ‘NYKAA,’ specifically in respect of cosmetic, healthcare products, accessories, or other allied goods. Further, the website and the listing shall be immediately taken down. Lastly, the products listed under ‘OYKAA’ on e-commerce websites shall also be taken down.

Conclusion

Triple Identity Test has also been used for trademark infringement of another popular website, i.e., Dream11, in the case of  Dream11 v. Dreamz11. The Court compared the logo, mark, and website of the company individually, along with the customer base, and they concluded that there was a significant intersection between the three. The second mark was consciously used to confuse people and induce them to use the defendant’s website. Thus, a case of passing off was made out.

The triple identity test has come across a comprehensive method for finding out if a trademark has been infringed. It aims to protect the trademark holder, their reputation, goodwill, and the customer base it has developed. It discourages others from piggybacking the reputation created by a business over the years.

This test is critical in the growing e-commerce world, where the reputation created by a website can be stolen by changing just a few letters in the original website. There is a more vital need to protect the identity of a website, which ultimately covers the trademark.

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Shivangi Singh
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