Ipr-trademark Case Laws- Compendium

TRADEMARK CASE-LAWS SPECIFICATIONS OF GOODS 1. British Sugar v. James Robertson, [1996] RPC 281 The High Court of Justice, Chancery Division observed that the following factors must be relevant in considering whether there is or there is not similarity: 1) the respective uses of the respective goods or services; 2) the respective users of the respective goods or services; 3) the physical nature of the goods or acts of service; 4) the respective trade channels through which the goods or services reach the market; 5) In the case of self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves; 6) the extent to which the respective goods or services are competitive. This inquiry may take into account how those in trade classify goods, for instance whether market research companies, who of course act for industry, put the goods or services in the same or different sectors. TRADEMARK TAKEN AS A WHOLE 2. Micronix India Vs. Mr. J.R. Kapoor 2003(26) PTC 593(Del) It was held by the Honourable Delhi High Court that “the trademark has to be seen as a whole and not by splitting the words and therefore in the instant case the word `MICRO; cannot be separated while determining the similarities between the two trademarks.” 3. Prem Nath Mayor v. Registrar of Trade Marks Distinctiveness being primarily a matter of fact. Evidence can be given regarding distinctiveness in fact. There are no narrow or rigid rules about distinctiveness. Such distinctiveness may be either in individual feature or in general arrangement. A mark should therefore be considered as a whole on its total impression and as a general rule. Attempts to dissect a mark in order to destroy distinctiveness have been disapproved. Its totality of the impression, phonetically and visually which is the test. If that totality of impression is likely to cause deception or confusion, then the identity is established. If not, then they are dissimilar. 4. Schering Corporation & Ors. vs Alkem Laboratories [CS (OS)730/2007] The Delhi High Court held that “By virtue of Section 17 of the Act, it is the said marks and not parts of the said marks, which stand protected”. 5. Amritdhara Pharmacy vs. Satyadeo Gupta [AIR 1963 SC 449] The Supreme Court in the case stated that, “the trade mark is the whole thing-the whole word has to be considered”. 6. Himalaya Drug Company v. S.B.L. Limited, [2013 (53) PTC 1 (Del.) (DB)],

The Delhi High Court while laying down the test of infringement, held that, “the rival marks are to be compared as a whole”. 7. Cadila Laboratories Ltd. V. Dabur India Ltd., 1997 PTC (17) 417 As has been settled, while ascertaining two rival marks, as to whether they are deceptively similar or not, it is not permissible to dissect the words of the two marks. It is also held that the meticulous comparison of words, letter by letter and syllable by syllable, is not necessary and phonetic or visual similarity of the marks must be considered. 8. M/s South India Beverages Pvt. V. General Mills Marketing Inc 214 (2014) DLT 123 “A mark should not be dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof, that is important.” In this particular case It was decided that the device taken as a whole with its distinct style would not create confusion in the mind of an ordinary/prudent man with regards to the same.” VISUAL; PHONETIC SIMILARITY AND PASSING OFF 9. Roche and Co. Vs. Geoffrey Manners and Co. Pvt. Ltd. (AIR 1970 SC 2062) It was again observed in the above case that, it is necessary to apply both the visual and phonetic tests. It is also important that the marks must be compared as whole. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark 10. International Foodstuffs Co LLC v. Parle Products Private Limited and Anr. (Notice of Motion, No. 2624 of 2012 in Suit No. 2497 of 2012) In view of the above, the Bombay High Court order dated April 11, 2016 held that there is no law that says that a solitary test of pronunciation will suffice to defeat all else that weighs against or the visual, structural similarity, the attendant circumstances, lack of meaningful reputation or goodwill, the want of demonstration of deceit or misrepresentation or differences in color, trade dress, the goods and their pricing should be ignored only because of phonetic similarity. 11. Micronix India vs Mr. J.R. Kapoor 2003 IVAD Delhi 524, 105 (2003) DLT 239 That neither visually nor phonetically MICRONIX and MICROTEL have any similarity though name of both the trademarks starts with the word `MICRO’. Micro is a generic term as it refers to state of art technology and cannot be monopolised by any person as both the parties are in same trade using micro technology as in every electronic and electrical items, micro chips are used and that is why both the articles cannot be confused as to their source or origin by use of word `MICRO; as a prefix to the mark or trade name. Thus use of the word; in MICROTEL and MICRONIX as prefix does not involve the element of deceptive

similarities in respect of electronic goods and goods with micro-chip technology. The word or prefix `MICRO; cannot be monopolised as there are international and national trade names in respect of technology where microchips are used. The prominent instance is Microsoft. 12. Keshav Kumar Aggarwal vs M/s NIITLtd [2013 (199) DLT 242] “The two competing marks must be judged both by their look and by their sound. All the surrounding circumstances must be considered”. 13. Encore Electronics Ltd. v. Anchor Electronics and Electricals Pvt. Ltd [2007 (35) PTC 714] It was held that “phonetic similarity constitutes an important index of whether a mark bears a deceptive or misleading similarity to another”. 14. K. R. Chinna Krishna Chettiar vs Sri Ambal & Co., Madras & Anr “The resemblance between the two marks must be considered with reference to the ear as well as the eye.” 15. Zaruj Enterprises vs Ici India Ltd. 2003 (26) PTC 583 Reg.; Vinayak Tea Co. vs Kothari Products Ltd A simple similarity in the name in the trade mark alone is not sufficient to make out a case either of infringement or of passing off for in both the cases confusion or deception is the essential element. For ascertaining confusion, one has to examine (a) the nature of the two marks including the letters used, the style of using the letters, the device in which they have been used, the colour combination of the trade mark (b) the class of customers (c) the extent of reputation (d) the trade channels (e) the existence of any connection in the course of trade and (f) all other surrounding circumstances.” 16. At Madras M/s. Murugan Idli Shop Rep. By its Proprietor S. Manoharan v/s M/s. Sri Murugan Idli Shop, A.Nos.1313 & 1314 of 2010 in A.Nos.1099 & 1100 of 2009 in C.S.No.952 of 2009 “The trade mark is the whole thing, the whole word has to be considered namely the overall structural and phonetic similarity, visual and phonetic similarity and broad and essential features are the tests to be applied for considering the similarity.” Therefore, the Registrar found that there was no structural or overall or visual similarity, though there was a phonetic similarity in so far as the first part of the word was concerned. The said phonetic similarity in the first part of the word also vanished when the word was taken as a whole along with the second part of the word. Therefore, the Registrar as well as the learned Judge was right in coming to the conclusion that the marks were not identical or deceptively similar to each other.

17. Re Sandow Ltd (1914) 31 RPC 196 It was held that identity of the figure in the centre is immaterial, the overall similarity between the two marks being the touchstone. 18. James C. & Bros. V. N. S. T. Co., It was held by the Division Bench that it is important to find out what is the distinguishing or essential feature of the trade mark already registered and what is the main feature or the main idea underlying that tread mark and ascertain if the trade mark whose registration is sought contains the same distinguishing or essential facture or conveys the same idea. The question to be asked is what would be the salient feature of the mark which in future would lead the purchaser to associate the particular goods with that trade mark 19. Corn products v. Shangrila Food Products, Holding that Glucovita and Gluvita were deceptively similar, it was observed that in deciding the question of similarity between the question of similarity between the two marks the approach must be from the point of view of a man of average intelligence and of a man of average intelligence and of imperfect recollection and to such a person the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause confusion between them. 20. Amritdhara Pharmacy v. Satya Deo. Coming to the conclusion that to an unwary purchaser of average intelligence and imperfect recollection, the overall structure and phonetic similarity between the two names Amritdhara; and Lakshmandhara; was likely to deceive or cause confusion, it was held that if a person is put in a state of wonderment it is sufficient to hold that the mark is likely to deceive or cause confusion. The Supreme Court held in the case that, 1. A trade mark is likely to deceive or cause confusion by its resemblance to another mark if it is likely to do so in the course of its legitimate use in a market the two marks are assumed to be in use by traders in that market. In considering the matter, all the circumstances of the case must be considered. 2. For deceptive resemblance two important questions are: (1) who are the persons whom the resemblance must be likely to deceive or confusion, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion it is perhaps an appropriate description of the state of mind of a customer, who, on seeing the mark, thinks that it differs from the mark on goods which he had previously bought, but is doubtful whether that impression is not due to imperfect recollection. 3. The question has to be approached from the point of view of a man of average intelligence and imperfect recollection who would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar

name. He would consider the word as a whole without splitting the name into its component parts and not going to its etymological meaning. 21. F. Hoffimann-La Roche & Co. Ltd. v. Geoffirey Manners & Co. Pvt. Ltd., It was held that marks must be compared as a whole, the true test being whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark Microscopic examinations not called for. Both visual and phonetic tests must be applied. 22. Parle Prodjucts v. J. P.; Co. It was held that what must be considered are the broad and essential features of the two marks which should not be placed side by side in order to find out the differences in design. It is enough if the impugned mark bears an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. Each case must be judged on its own features and it would be of no use to note on how many points there was similarity and in how many others there was absence of it. 23. K. R. Chinna Krishna Chettiar v. Sri Ambal and Co. AIR 1970 SC 146 A snuff manufacturer got AMBAL; registered as the trade-mark and later on, another snuff manufacturer wanted ANDAL as the trade-mark. It was held that although visually the packings, labels etc. were dissimilar, yet there was close affinity of sound. Due to phonetic resemblance, the use of name ANDAL; was disallowed. 24. De Cordova v. Vick Chemical Coy., (1951) 68 R. P. C. 103 The registered trade-mark was Vapo Rub; and another concern started selling similar ointment in the name of;Karsote Vapour Rub and it was held as follows: That the word Vapo Rub was an essential feature of the first mark, that the words Vapour Rub; so closely resembled that word as to be likely to deceive and that the mark was infringed. 25. Ruston and Hornby, Ltd. v. Zamindara Engineering Co. AIR 1970 SC 1649 The Company had RUSTON as its registered trade-mark. Another concern wanted to manufacture similar items under the name of RUSTAM. It was held that the two names were visually and phonetically similar and, therefore, the other concern was not permitted to use RUSTAM as the trade-mark on its goods. 26. Stadmed Private Ltd case (AIR 1965 Punj 17) In relation to two phonetically similar trademarks, a Division Bench of the Punjab High Court held that it did not amount to passing off as the two marks were used in relation to doctor-prescribed medicines which will prospectively be sold by pharmacists who are reasonably expected to be capable of differentiating the two medicines. Therefore, there is no likelihood of confusion. We are not called upon to decide whether ENTROZYME and

ENTOZINE; are phonetically and visually similar, but if we had a case like this before us, we might have taken the view that the two names are visually and phonetically similar. 27. DM entertainment v Baby Gift House and ors. [MANU/DE/2043/2010] Passing off would occur when the mark is not only being used deceptively similar to the mark of another but it is being used to create confusion in the minds of the consumer that results in the damage or loss of business for the person or company who/which is the lawful owner of the trademark. 28. Cadila Health Care v Cadila Pharmaceutical Ltd [2001 PTC (SC) 561] In this case the Supreme Court held that It is immaterial whether the plaintiff and defendant trade in the same field or in the same or similar products. It identified the following criteria in order to decide an action of passing off on the basis of unregistered trademark : 

The nature of the marks (i.e. whether they are word, label or composite marks);

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The degree of resemblance between the marks;

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The nature of the goods for which they are used as trademarks;

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Similarities in the nature, character and performance of goods of rival traders;

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The class of purchasers who are likely to buy goods bearing the marks;

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The method of purchasing the goods or placing orders; and

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Other circumstances that may be relevant.

SECTION 27 ON PASSING OFF The Trademark Act, 1999 under Section 27 provides for the remedy of passing off for misuse of an unregistered trademark by the Defendant. It enumerates that no person shall be entitled to institute any proceeding to prevent infringement of an unregistered trademark. The law further entails that the provision shall not affect the rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof. Section 27 of the Act recognizes common law rights of the trademark owner to take action against any person for passing of goods as the goods of another person or as services provided by another person or remedies thereof. The remedy made available under Section 27 protects the rights of the proprietor of an unregistered trademark to register complaint against another person for passing off his goods as goods the goods of proprietor. 29. Kaviraj Pandit Durga Dut Sharma v. Navratna Pharmaceutical Laboratories, AIR 1965 SC 980 An unregistered proprietor of trademark can also oppose an application for registration on grounds as enumerated under Section 11 of the Act.

30. Century Traders v. Roshan Lal Duggar & Co., AIR 1978 Delhi 250 In an action of passing off, the Plaintiff has to establish prior use to secure an injunction and that the registration of the mark or similar mark in point of time, is irrelevant. 31. Reckitt & Colman Products Ltd. v. Borden Inc. Three elements were enumerated for a successful passing off action: (1) Goodwill owned by a trader, (2) Misrepresentation and (3) Damage to goodwill. Thus, the passing action is essentially an action in deceit where the common law rule is that no person is entitled to carry on his or her business on pretext that the said business is of that of another DECEPTION 32. Thomas Bear And Sons (India) v. Prayag Narain It held that in judging the probability of deception, the test is not whether the ignorant the thoughtless, or the incautious purchaser is likely to be misled, but we have to consider the average purchaser buying with ordinary caution. EXTENT OF USE AND PRIOR-USER Section 34 of the Trademark Act, 1999 which enumerates that a registered proprietor or registered user of a trademark cannot interfere with the use of any identical or similar mark is a person has been using a mark from an earlier date. 33. Consolidated Foods Corporation v. Brandon and Company Private Ltd The Bombay High Court observed that for the purpose of claiming such proprietorship of a mark, it is not necessary that the mark should have been used for considerable length of time. As a matter of fact, a single actual use with intent to continue such use confers a right to such mark as a trademark. A mere casual, intermittent or experimental use may be insufficient to show an intention to adopt the mark as a trade mark for specific article or goods. 34. S. Syed Mohideen v. P. Sulochana Bai The Supreme Court had held that the scheme of the Act is such where rights of the prior user are recognised superior than that of the registration and even the registered proprietor cannot disturb interfere with the rights of the prior user. 35. Neon Laboratories Ltd. v. Medical Technologies Ltd. & Ors. The Supreme Court opined that a registered proprietor of a trademark does not possess the right to prevent use by another party of an identical mark if that use commenced prior to the use of the registered mark. 36. ITC Ltd. v. Britannia Industries The Delhi High Court has settled the principle regarding term of use by holding, that to acquire secondary meaning it is not necessary that product is in the market for number of

years. If a new idea is fascinating and appeals to the consumers, it can become a hit overnight. 37. East End Hosiery Mills Pvt. Ltd. v. Agarwal Textile Mills The Court stated that there can be no hard and fast rule, that any particular minimum period of time is required to acquire distinctiveness. In some cases the time to acquire distinctiveness may be larger than in others. 38. M/s R. J. Components and Shafts vs. M/s Deepak Industries Limited In this recent judgement passed by the Delhi High Court, the Court recognized the legal principle of Prior user of a mark. The Court’s verdict in the case has reiterated the law that prior user of a trademark will override the subsequent user even if the subsequent user has registered the trademark. Brief Facts of the case- The instant case was instituted by one, Rajeev Kumar who claimed to be the sole proprietor of M/s. R.J. Components & Shafts (Plaintiff Company) against the Defendants to restrain them from in any manner using the Plaintiff’s registered trademark NAW. The Plaintiff alleged that the Defendants in the case who are also engaged in a similar business have recently started manufacturing gears and have adopted an exactly similar trademark NAW of the plaintiff. Court’s Order As stated earlier, the Delhi High Court in this case recognized the prior user right as the superior right which also prevails over the registered proprietor of a similar or identical trademark. In view of the aforesaid facts, the Delhi High Court injuncted the Plaintiff from using the mark NAW and made the following observations: Lack of Evidence- In the case, the Court stated that in spite of several opportunities the Plaintiff had failed to produce any evidence and no credible evidence had been adduced by the Plaintiff to controvert the Defendants’ assertion that they were prior user of the mark NAW since 1971. Defendant is Prior User of the Mark- The Court found that on examination of evidentiary documents like cash memos and other documents pertaining to the period 1971 onwards on the letterheads the defendant, the trademark NAW has been prominently used. Such documents establish beyond doubt that the mark NAW was being used extensively by the Defendant since 1971 and hence Defendant is a prior user of the trademark NAW

ACUIRED DISTINCTIVENESS 39. In re Leow’s Theatres, Inc. 769F.2d 764

Whether a trademark has established acquired distinctiveness or not is a question of fact and must be decided on a case-to-case basis. 40. United Iron and Steel Works v. Government of India, AIR 1967 P&H 64 The question whether a word is or is not capable of becoming distinctive of the gods of a particular maker is a question of fact and is not determined by its being or not being descriptive. SECONDARY SIGNIFICANCE The law stipulates that a trademark which has secured a secondary meaning or secondary significance shall not be refused registration even if it falls within the categories as enumerated under Section 9. It is settled law that in common language words and names cannot be exclusively appropriated by any trader unless and until such trade names have acquired such a great reputation and goodwill in the market that the common language word has assumed a secondary significance. 41. Vijay Kumar Ahuja v. Lalita Ahuja, 95 (2002) DLT 3 Secondary significance here would mean that other traders in that line of trade acknowledge that such common word has come to denote the goods belonging to a particular trade. 42. Globe Super Parts v. Blue Supra Flame Industries AIR 1986 DELHI 245 Even a common language word can be exclusively appropriated by a party as a trade mark if the said word has acquired a secondary significance but in the case of a word which is coined, fancy, new or meaningless the claim to exclusive appropriation is sustainable without the need to prove existence of secondary significance NON-USE Section 47 of Trademark Act, 1999 provides for removal of trademark from register on grounds of non-use of the mark. It provides that a registered trademark may be taken off the register in respect of goods or services in respect of which it is registered on application made in the prescribed manner. According to the statutory provision, any person who is aggrieved that a registered trademark has not been used for a continuous period of 5 years and 3 months from the date of which the mark was actually entered in the register of trademarks then he can make an application for removal of the trademark from the Register. 43. Milmet Oftho Industries and Others vs. Allergan Inc. It was held that multinational companies have no right to claim exclusivity of the trademark if they do not enter or intend in a reasonable time to enter into business in India. LAW OF ACQUIESCENCE

44. Makemytrip (India) Private Limited v. Orbit Corporate Leisure Travels In this case, the Delhi High Court delved into the law of acquiescence. In the case the Plaintiff was aware of the Defendant’s mark and still did not take any action for long. In view of the settled position of law of acquiescence, the Court did not restrain the Defendant from using the mark GETMYTRIP which Plaintiff alleged was deceptively similar to its mark MAKEMYTRIP. Background of the case- In the instant case the Plaintiff i.e. MakeMyTrip filed suit to restrain the defendants, from in any manner using the trademark GETMYTRIP that allegedly infringed the plaintiff’s trademark MakeMyTrip. Bench’s Verdict In the case, the Delhi High Court denied any relief to the Plaintiff in view of the following observations: Plaintiff had knowledge of GETMYTRIP mark- That though the defendant claimed user in the application since 2016, however the fact remained that plaintiff with the same trademark and domain name i.e. GETMYTRIP and www.getmytrip.com respectively had been dealing with the Hermes which is the predecessor-in-interest of the defendant at least since 2011, thus Plaintiff had knowledge of this trademark and domain name being used. The Delhi High Court opined that in the present case the issue was not of delay and latches only but of acquiescence where the plaintiff to its knowledge permitted continued user by Hermes of the trademark GETMYTRIP and domain name www.getmytrip.com , however now to its transferee-in-interest i.e. the plaintiff has objection to it on the sole ground that Hermes never operated in B2C domain but in B2B domain. In this regard it would be appropriate to note the documents filed by the defendant placing on record copies of the screenshot of websites of Hermes dated 10th January, 2012 showing its B2C user falsifying the claim of the plaintiff that Hermes was not operating in the B2C space. With reference to the instant case, the Court noted that the plaintiff was aware of the use of the trademark GETMYTRIP since 2011 and admittedly since 2013. Thus despite the use of the trademark GETMYTRIP plaintiff continued its business dealings with Hermes which is the predecessorin-interest of the defendant. That it is settled that the registered proprietor of trademark is not expected to pursue each and every insignificant infringer who is of no consequence to his business. In the present case, Hermes was holding a substantial share in the market place. It cannot be said that Hermes was an insignificant infringer. As noted above Hermes was also working in B2C space thus competing with plaintiff’s business. In view of the aforesaid legal proposition and the fact that the Plaintiff suppressed material facts, the Court stated that no case was made out against the Defendant

45. National Bell Co. v. Gupta Goods Manufacturing Co. (P) Ltd. & Anr. The Supreme Court held that if a registered proprietor of a mark ignores repeated infringements of its mark than it can even be considered as an abandonment of its mark. 46. Power Control Appliances v. Sumeet Machines (P) Ltd. It was observed that Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc. It implies positive acts; not merely silence or inaction such as is involved in laches. That Delay simpliciter may be no defence to a suit for infringement of a trade mark. That where a trader allows a rival trader to expend money over a considerable period in the building up of a business with the aid of a mark similar to his own he will not be allowed to stop his rival’s business. If he were permitted to do so great loss would be caused not only to the rival trader but to those who depend on his business for their livelihood.