OPAL vs SHEOPAL’S: Delhi High Court Declines Interim Relief, Finds No Likelihood of Consumer Confusion

OPAL vs SHEOPAL’S: Delhi High Court Declines Interim Relief, Finds No Likelihood of Consumer Confusion

Introduction

The Delhi High Court has refused to grant interim injunctive relief to OPAL Cosmetics, holding that the mark “OPAL” is not deceptively similar to the mark “SHEOPAL’S” used by Sheopals Pvt. Ltd. The Court concluded that the essential requirement of likelihood of consumer confusion was not satisfied, notwithstanding a partial phonetic overlap between the two marks.

Factual Background

The appellant, Saurabh Gupta, is the proprietor of the trademark “OPAL,” which is used in relation to cosmetic products such as gels, soaps and allied goods. He claimed continuous use of the mark since 1992 and asserted statutory as well as common-law rights over it.

The respondent, Sheopals Pvt. Ltd., manufactures beauty and wellness products under the mark “SHEOPAL’S.” According to the respondent, the mark is derived from the name of the founder’s father and has been honestly adopted and used for its product range. The respondent had filed trademark applications for “SHEOPAL’S” in 2018 and again in 2022, which were opposed by the appellant before the Trade Marks Registry.

Procedural Background

In 2024, the appellant instituted a suit for trademark infringement and passing off against Sheopals Pvt. Ltd., alleging that the use of “SHEOPAL’S” created a likelihood of confusion with the mark “OPAL.” An ex-parte interim injunction was initially granted in favour of the appellant.

Subsequently, the Commercial Court vacated the injunction after hearing both parties, holding that the marks were not deceptively similar. Aggrieved by this decision, the appellant filed an appeal before the Delhi High Court seeking restoration of the injunction. The respondent also filed a cross-appeal challenging certain adverse observations made by the Commercial Court.

Issues

1. Whether the mark “SHEOPAL’S” is deceptively similar to the mark “OPAL.”

2. Whether the use of the impugned mark is likely to cause confusion or deception among consumers of average intelligence and imperfect recollection.

3. Whether OPAL Cosmetics was entitled to an interim injunction restraining the use of the “SHEOPAL’S” mark.

Contentions of the Parties

The appellant contended that “OPAL” constitutes a prominent and distinctive part of the mark “SHEOPAL’S” and that consumers were likely to associate the latter with the former. It was argued that phonetic similarity between the marks was sufficient to establish infringement, especially since both parties operated in the same product segment.

The respondent countered that “SHEOPAL’S” is a single, composite mark derived from a personal name and would not be dissected by consumers into “She” and “Opal.” It was further submitted that the overall visual and phonetic impression of the marks was distinct and that mere inclusion of the word “opal” within a longer mark could not, by itself, establish deceptive similarity.

Reasoning and Analysis

The Division Bench of Justice C. Hari Shankar and Justice Om Prakash Shukla held that the Commercial Court had erred in applying the anti-dissection rule and the dominant part test, noting that “OPAL” is itself a single-word mark. The Bench observed that in such circumstances, there was no occasion to dissect the rival mark or identify a dominant element within it.

Comparing the marks as a whole, the Court held that an average consumer would perceive “SHEOPAL’S” as a single expression and would not naturally break it into separate components or associate it with the mark “OPAL.” The Bench emphasised that the mere fact that a registered mark appears as part of another mark is insufficient to establish infringement unless it results in a real likelihood of confusion.

While acknowledging a degree of phonetic resemblance, the Court reiterated that phonetic similarity alone does not automatically result in infringement. What is determinative is whether such similarity is likely to confuse an average consumer exercising ordinary caution. On this test, the Court found that the threshold of confusion was not met.

The Court also disagreed with the Commercial Court’s finding of delay or acquiescence on the part of the appellant, noting that the appellant had actively opposed the respondent’s trademark applications. However, it clarified that even in the absence of delay, the grant of an injunction could not be justified unless the core requirement of deceptive similarity was established.

Decision

The Delhi High Court ultimately upheld the conclusion of the Commercial Court and refused to grant interim injunctive relief to OPAL Cosmetics. The appellant’s appeal seeking restoration of the injunction was dismissed, while the respondent’s cross-appeal was disposed of in view of the Court’s findings. The Court clarified that its observations were confined to the interim stage and would not prejudice the final adjudication of the suit.

In this case the appellant was represented by Mr. Manav Kumar, Manoj Kumar Sahu with Mr. Saurabh Gupta, Advocates. Meanwhile the respondent was represented by Mr. C.M. Lall, Senior Advocate with Mr. S.S. Rana, Ms. Rima Majumdar, Mr. Kashish Vij, Ms. Aashi Nema, Ms. Annanya Mehan, Advocates.