Triple Identity Test: NYKAA VS OYKAA
Nykaa E-Retail Pvt. Ltd., one of India’s leading e-commerce platforms, is recognized for its extensive range of products tailored primarily for women. The brand offers makeup, skincare, and wellness products and also manufactures its own line of goods. Recently, the company filed a lawsuit seeking an injunction against the alleged infringement of its registered trademark ‘NYKAA.’
Nykaa’s Trademark and Global Presence
Nykaa holds trademark registrations under various classes, both in India and internationally, including countries like Singapore, the UAE, the UK, Bangladesh, and Kuwait. The brand name ‘Nykaa’ is derived from the Hindi word ‘Nayaka,’ symbolizing an actress or someone in the spotlight. As a distinctive mark without a dictionary definition, the trademark ‘Nykaa’ enjoys a unique identity in the marketplace. FSN E-Commerce Ventures Ltd. holds the licensing rights for the mark.
The Allegation Against ‘Oykaa’
The legal dispute arose when a company under the name ‘Oykaa’ entered the market, offering similar products such as makeup, skincare, and wellness goods. The defendant also operates a website, www.oykaa.com, which closely resembles Nykaa’s platform.
Nykaa argued that Oykaa not only adopted a similar name but also mirrored the design of its website, potentially causing significant confusion among consumers. The blatant similarities extended to the defendant copying the terms and conditions of Nykaa’s website without any alterations.
Timeline of Events
The domain for Oykaa was registered on October 7, 2021, and its trademark application was filed on a ‘proposed to be used’ basis in 2022. In stark contrast, Nykaa adopted its mark in 2012 and has applied for recognition as a well-known trademark before the Trademark Registry.
Legal Issue
The central question before the court was whether the defendant’s use of the mark ‘Oykaa’ constituted trademark infringement against Nykaa’s established brand.
Court Observation: The Triple Identity Test
The court applied the ‘Triple Identity Test’ to assess the infringement claim. This test evaluates three critical factors:
- Identical Goods and Services: Whether the products or services offered by both parties are the same.
- Identical Trade Channels and Customers: Whether the target market and distribution channels overlap.
- Imitative or Identical Marks: Whether the defendant’s mark closely resembles the plaintiff’s mark.
The court found that all these conditions were met in this case.
Reference to Previous Cases
The court referenced several notable cases to support its decision:
- Ahmed Oomerbhoy v. Gautam Tank: In this case, the use of the term ‘Super Postman’ alongside the registered ‘Postman’ trademark was deemed an infringement as the goods and trade channels were identical. The Triple Identity Test was satisfied, leading to a successful passing-off claim.
- Kalyani Breweries v. Khoday Brewing and Distilleries Industries Ltd.: The Calcutta High Court emphasized that when essential features of a trademark are copied, minor differences in product packaging or getup do not prevent confusion. The court ruled that the second manufacturer cannot use a similar trade name.
Read Meanwhile: Please Follow us for Trademark Registration Services
Judgment
Based on the evidence and legal precedents, the court determined that the defendant was attempting to capitalize on Nykaa’s reputation and goodwill. The court concluded that allowing the defendant to continue using the mark ‘Oykaa’ would cause irreparable harm to Nykaa’s business and mislead consumers.
Consequently, the court granted an ex-parte interim injunction, restraining the defendant from using the name, mark, or logo ‘OYKAA’ or any other mark resembling ‘NYKAA.’ This prohibition extended to all related products, website listings, and e-commerce platforms. The court further ordered the immediate removal of the Oykaa website and product listings.
Conclusion
The Nykaa-Oykaa trademark dispute underscores the significance of the Triple Identity Test in identifying and addressing trademark infringements. The case highlights the importance of protecting a brand’s reputation, goodwill, and customer trust in an increasingly competitive e-commerce landscape.
The ruling also draws parallels with the Dream11 v. Dreamz11 case, where the court found a conscious attempt by the defendant to imitate the logo, mark, and website of Dream11. By adopting the Triple Identity Test, the court confirmed that the second mark aimed to confuse consumers and induce them to use the defendant’s services.
As the e-commerce sector continues to expand, safeguarding digital trademarks becomes crucial. The Nykaa case sets a strong precedent, emphasizing the need for strict measures to protect online brands from deceptive practices and maintain consumer trust.
NYKAA VS OYKAA, NYKAA VS OYKAA, NYKAA VS OYKAA, NYKAA VS OYKAA, NYKAA VS OYKAA, NYKAA VS OYKAA, NYKAA VS OYKAA
