The case of NYKAA vs. OYKAA revolves around a dispute concerning the use of a
similar trademark, which has raised concerns about the protection of established
brand identities. In this analytical legal article, we will delve into the
details of the case, examining the key elements of trademark infringement and
the application of the "triple identity" test, as seen in the judgment by the
Hon'ble High Court of Delhi.
Background of the case:
The Plaintiff, NYKAA, has been engaged in the manufacturing, sale, and
distribution of a wide range of cosmetic and wellness products under the
trademark 'NYKAA' since 2012. They have secured trademark registrations for 'NYKAA'
in various classes, not only in India but also in several other countries,
including Singapore, UAE, United Kingdom, Bangladesh, Kuwait, and Qatar. The
Plaintiff's extensive presence in the cosmetics industry, both in terms of
products and geographic reach, highlights the significance of their brand
On the other hand, the Defendants filed an application for the trademark 'OYKAA'
for a substantial array of cosmetic products in class 3. Furthermore, the
Defendants are actively marketing these products and maintain an online presence
through the website www.oykaa.com. This situation gave rise to concerns
regarding trademark infringement, necessitating a legal intervention to protect
the Plaintiff's rights.
Application of the "Triple Identity" Test:
The Hon'ble High Court of Delhi relied upon the precedent set in the case of
"Ahmed Oomerbhoy Vs. Gautam Tank (2007 SCC OnLine Del 1685)" to assess the case.
In the aforementioned case, the word 'Postman' and the device mark 'Postman'
were registered trademarks. The Court in that case held that since the impugned
mark, 'Super Postman,' was similar, the goods were the same, and the area in
trade was common, the test of "triple identity" was satisfied, establishing a
case for infringement and passing off.
In the NYKAA vs. OYKAA case, the Court made a similar observation. It was
determined that the services and goods offered by both parties were identical.
The trade channels and the customer base also overlapped significantly. The
Defendant's mark, 'OYKAA,' was found to be not just similar but almost imitative
and identical to that of the Plaintiff's mark, 'NYKAA.' These observations
collectively indicated the fulfillment of the "triple identity test" in favor of
With the "triple identity" test satisfied, the Hon'ble High Court of Delhi
granted interim injunctive relief in favor of the Plaintiff and against the
Defendant. This relief effectively prevents the Defendant from using the
infringing mark, 'OYKAA,' for their cosmetic products. This decision underscores
the court's commitment to protecting the Plaintiff's established brand identity
and preventing consumer confusion in the marketplace.
The Concluding Note:
Trademark infringement cases such as NYKAA vs. OYKAA serve as crucial legal
mechanisms for protecting brand identities and ensuring fair competition in the
marketplace. The application of the "triple identity" test, as established in
legal precedents, provides a clear framework for assessing infringement cases.
The Case Law Discussed:
Case Titled: Fsn E-Commerce Ventures Ltd Vs Nykaa E-Retail Pvt. Ltd.
Date of Judgement/Order:12/10/2023
Case No. CS(COMM) 726/2023,
Neutral Citation No: NA
Name of Hon'ble Court: High Court of Delhi
Name of Hon'ble Judge: Prathiba M Singh, H.J.
Information and discussion contained herein is being shared in the public
Interest. The same should not be treated as substitute for expert advice as it
is subject to my subjectivity and may contain human errors in perception,
interpretation and presentation of the fact and issue involved herein.
Written By: Advocate Ajay Amitabh Suman
, IP Adjutor - Patent and
Email: [email protected]
, Ph no: 9990389539