Category: Law School Notes

You can grab other case briefs on other IPR topics from here.

Citation – 2003(27) PTC 422 (DEL)

Facts: There was a dispute regarding proprietary rights over the trade mark ‘TATA’ which defendant stated was assigned to M/s Tata Pressure Cooker Manufacturing Company and was being used by the company from 1981. The D then filed for an application for registration of trademark in the year 1994 and the application for registration was opposed by the plaintiff House of Tata.

Procedural History: Application for registration was filed by the Tata Pressure Cooker Manufacturing Company and opposition has been filed by M/s Tata Chemicals Ltd. challenging the impugned order passed by the Registrar of Trade Marks whereby he had allowed application for registration filed by in both the petitions and had disallowed the objections of the House of Tata. The same order has been challenged in this case.

Issues:
1) Whether the P could use the trade mark TATA to sell pressure cooker?
2) Whether P could then be given registration for the trade mark TATA?

Holding: The court held that TATA was the trade mark of the P group since the word TATA is a household expression. Since the P group had considerable of reputation, accrued to the trademark TATA, the use of an identical trade mark would cause confusion and deception. Since the Defendant had no evidence to prove he was an honest concurrent user, the application for registration of trade mark was quashed.

Rationale:
§ The P proved that House of Tata was in existence since the 19th Century founded by late Sir Jamshed Ji Tata. Since the name TATA was not descriptive it had limited protection under trade mark act of 1991 unless P could prove that it acquired distinctiveness.
§ The P could prove that manufacturing activities of the House of TATAS touched almost every aspect of day to day life from edible products to household products, automobile and computers.
§ The trade mark TATA is a “well known” trade mark and is exclusively associated in the minds of the public with THE HOUSE OF TATAS. By the year 1981, the House of TATAS had become a household name and various products under the mark TATA’ were available in every nook and corner of this country.
§ P showed that House of Tata consisted of over 50 companies, out of which, about seven are overseas companies and had an annual turnover of approximately Rs. 16,000/- crores.
§ P was able to prove that D company’s products were likely to deceive or cause confusion, and their trade mark was colourable imitation of the mark of the P.
§ Even though D showed evidence of user and reputation in respect of pressure cookers sold by them since 1981, their mark does not qualify for registration because TATA was not the surname of partners of the D company. How these persons picked up the word TATA as their trade mark remained a mystery.
§ Section 12 of Trade Marks Act, 1991 states that in a special circumstance the Registrar would allow one or more proprietor to use the same trade mark if the applicant for registration can prove he is an honest concurrent user. Even though the D used the trademark since 1981 he cannot register his trademark as it was not an honest user and the taint could not be purified by continuous user.

Rule: The term “well-known trade mark” refers to a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services.
Any trade mark with the status of a “well-known” substantially improves the extent of protection available to it, as it provides the owner of the brand, the exclusive right to the trade mark against all unlawful users, regardless of the differences in the field of business, goods or services. To make action successful, it is required to be established that the adoption of the brand by the unauthorized users is mala fide and without due cause.

You can grab other case briefs on other IPR topics from here.

Citation – 2010 (42) PTC 572 (Del.)

Facts: ITC is the company that owns the mark “WELCOME GROUP”. Under the same banner ITC owns 14 hotels which include ITC Maurya (Delhi), ITC sonar (Kolkata), ITC Windsor (Bengaluru) etc. ITC also claims that the same mark has been in extensive use for its series of products “Kitchens of India”, which are ready to eat.
Philip Morris is the company that owns the mark “Marlboro”, which is an established mark in the cigarette industry. In the year of 2010, Marlboro festive pack was introduced in India.
In this case, ITC alleges that Philip Morris has by launching its product, has diluted the mark owned by ITC called as the “Welcome group”. They allege that there is a high resemblance between the two logos and the well-established ITC logo is losing its distinctiveness that it has acquired over the years. They file for an injunction at the High Court of Delhi in order to stop Marlboro from trading under such a similar mark.

Issue: Whether the High Court of Delhi should grant such an injunction in favour of ITC based on its claim of distinctiveness for the “Welcome group” logo?

Judgment: The Court, in this case, took into the consideration arguments raised by both the Counsels for the plaintiffs and the defendants.
The gist of the plaintiff’s contention was that ITC had acquired distinctiveness over the years in the usage of the mark ‘Welcome group” as it had been in use in ITC’s hospitality services and food products.
The gist of the defendant’s contention is that the mark “Welcome group” was one of the many composite marks, which ITC owned. Further, though ITC has been involved in the manufacturing of cigarettes, it has never used this particular mark for the purposes of trade.
The Court laid down the following criterion to be satisfied for determining Dilution:
a) Impugned mark is either similar or identical to the senior mark
b) The senior mark is a well –known mark in India
c) The usage of the impugned mark in the trade is detrimental to the distinctiveness of the senior mark.
The Court then adopted a Global outlook in determining the case at hand. They said that the distinctiveness associated with a mark is based on its impression in its entirety, taking into consideration the principal constituents. They further said that the characteristic of the “Welcome group” logo might extend to the market of luxury goods, but not to the market for cigarettes.
They concluded that the Injunction could not be granted based on the above grounds and the introduction of the “Marlboro” mark will not dilute the “Welcome group” mark.

You can grab other case briefs on other IPR topics from here.

Citation – 2001 (21) PTC 541 SC

Facts:
§ The appellant and the respondent are pharmaceutical companies. They had taken over the assets and business of the erstwhile Cadila Group after its restructuring under Sections 391 and 394 of the Companies Act.
§ Under the restructuring scheme both the appellant and the respondent got the right to use the name “Cadila” as a corporate name.
§ The appellant manufactured a drug “Falcigo” containing artesunate for the treatment of cerebral malaria commonly known as “Falcipharum”. On 7-10-1996, the Drugs Controller General (India) granted permission to the appellant to market the said drug under the trademark of “Falcigo”.
§ On 10-4-1997, the respondent got permission from the Drugs Controller General (India) to manufacture a drug containing “Mefloquine Hydrochloride”. This drug was also used for the treatment of “Falcipharum Malaria” and was being sold by the respondent under the trademark of “Falcitab”.
§ The appellant filed a civil suit for injunction against the respondent from using the trademark “Falcitab” on the ground that the same would be passed off as the appellant’s drug “Falcigo” for the treatment of the same disease in view of confusing similarity and deception in the names and more so because the drugs were medicines of last resort.
§ The respondent contended, inter alia, that the two products in question were Schedule ‘L’ drugs which could be sold only to the hospitals and clinics with the result that there could not even be a remote chance of confusion and deception.

Procedural History:
§ The trial court refused to grant an interim injunction.
§ The High Court upheld the order of the trial court.

Laws Involved:
§ In the case of unregistered trade-marks, a passing-off action is maintainable. The passing off action depends upon the principle that nobody has a right to represent his goods as the goods of somebody. In other words, a man is not to sell his goods or services under the pretence that they are those of another person.
§ What has to be seen in the case of a passing-off action is the similarity between the competing marks and to determine whether there is the likelihood of deception or causing confusion. It is not correct to say that the difference in essential features is more relevant. The principle of phonetic similarity cannot be jettisoned when the manner in which the competing words are written are different.
§ Broadly stated, in an action for passing off on the basis of unregistered trade-mark generally for deciding the question of deceptive similarity the following factors are to be considered:
i. The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works.
ii. The degree of resemblance between the marks, phonetically similar and hence similar in idea.
iii. The nature of the goods in respect of which they are used as trade-marks.
iv. The similarity in the nature, character and performance of the goods of the rival traders.
v. The class of purchasers who are likely to buy the goods bearing the marks they require, their education and intelligence and the degree of care they are likely to exercise in purchasing and/or using the goods.
vi. The mode of purchasing the goods or placing orders for the goods.
vii. Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
Weightage to be given to each of the aforesaid factors depending upon facts of each case and the same weightage cannot be given to each factor in every case.

Issue: Whether the respondent’s trade-mark could be passed off as the appellant’s trade-mark?

Analysis:
§ Drugs have a marked difference in the compositions with completely different side effects, and therefore, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. The courts need to be particularly vigilant where the defendant’s drug, of which passing off is alleged, is meant for curing the same ailment as the plaintiff’s medicine but the compositions are different. The confusion is more likely in such cases and the incorrect intake of medicine may even result in loss of life or other serious health problems. Schedule ‘H’ drugs are those which can be sold by the chemist only on the prescription of the doctor but Schedule ‘L’ drugs are not sold across the counter but are sold only to the hospitals and clinics. Nevertheless, it is not uncommon that because of lack of competence or otherwise, mistakes can arise especially where the trade-marks are deceptively similar.
§ In the present case, although both the drugs are sold under prescription this fact alone is not sufficient to prevent confusion which is otherwise likely to occur. In view of the varying infrastructure for supervision of physicians and pharmacists of the medical profession in India due to linguistic, urban, semi-urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict measures to prevent any confusion arising from similarity of marks among medicines are required to be taken.
§ Trademark is essentially adopted to advertise one’s product and to make it known to the purchaser. It attempts to portray the nature and, if possible, the quality of the product and over a period of time the mark may become popular. It is usually at that stage that other people are tempted to pass off their products as that of the original owner of the mark. That is why it is said that in a passing-off action, the plaintiff’s right is against the conduct of the defendant which leads to or is intended or calculated to lead to deception.
§ Public interest would support a lesser degree of proof showing confusing similarity in the case of the trademark in respect of medicinal products as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life-threatening, not merely inconvenient. Noting the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them.
§ The decisions of English courts would be relevant in a country where literacy is high and the marks used are in the language which the purchaser can understand.
§ While examining such cases in India, what has to be kept in mind is the purchaser of such goods in India who may have absolutely no knowledge of English language or of the language in which the trademark is written and to whom different words with a slight difference in spellings may sound phonetically the same. While dealing with cases relating to passing off, one of the important test which has to be applied in each case is whether the misrepresentation made by the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product for another due to the similarity of marks and other surrounding factors. What is likely to cause confusion would vary from case to case. A stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer. Stringent measures should be adopted especially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to the identity of the product itself could have dire effects on the public health.
§ Keeping in view the provisions of Section 17-B of the Drugs and Cosmetics Act, 1940, it is but proper that before granting permission to manufacture a drug under a brand name the authority under that Act is satisfied that there will be no confusion or deception in the market. The authorities should consider requiring such an applicant to submit an official search report from the Trade Mark Office pertaining to the trademark in question which will enable the Drug Authority to arrive at a correct conclusion.

Conclusion: The Supreme Court refused to interfere with the orders of the courts below but gave directions for expeditious disposal of the suit. In the instant judgment, the Supreme Court gave the reasons for non-interference with the impugned orders while setting out the principles which are to be kept in mind when dealing with an action for infringement or passing off, especially in the cases relating to medicinal products.

You can grab other case briefs on other IPR topics from here.

Citation – [2004] All ER (D) 301

Facts: The petitioner is Philips Electronic, which had presented a shaver in 1966. The shaver had a plate with three rotational shavers orchestrated in an equilateral triangle. It had enlisted its trademark for the shaver. The imprint was a plate of three turning razor-sharp edges in an equilateral triangle. The other producer i.e., Remington then concocted shavers that were sold in the American market. Philips asserted that Remington had encroached its trademark by utilizing the characteristic of a shaver with three turning sharpened pieces of steels orchestrated in an equilateral triangle which made disarray in the psyches of the customer as they thought it was an item produced by Philips. Remington then again denies that it is trademark infringement and actually the enlistment of the imprint for Philips ought to be denied.
Remington battled that only on the grounds that the imprint has gained a distinctive character in light of the fact that Philips concocted the shaver, to begin with, the trademark law does not permit him to enrol such stamps. The enlistment of such checks ought not to be permitted in light of the fact that it is important to acquire a fundamental specialized result and in this way such enrolment is invalid.

Issue: Whether the shape of the mark should be necessary in order to obtain a specific technical result?

Holding: Philips had not obtained a particular character despite the fact that it was the dealer that presented the shaver with such a shape in the business. The courts held that it couldn’t enrol as it was a shape, which is important to get a specialized result, and consequently, enlistment of such an imprint is invalid. Hence it was held that Remington has not encroached the trademark of Philips, since it was never a legitimate trademark and Philips had neglected to demonstrate that it had obtained distinctive attributes.

Ratio: The trademark law goes for keeping and shielding a proprietor from being allowed imposing business model over specialized and utilitarian arrangements. It ought not to turn into a deterrent to alternate contenders who need to enter and uninhibitedly offer their items and administrations. Shapes that give specialized result ought to be openly accessible and accessible to all. Regardless of the possibility that different shapes can give the same specialized result, the law does not give the privilege to exchange check a shape, which gives a specialized result. If a shape has obtained a distinctive character from being utilized over a time of time, it can be permitted to be enrolled. At the same time, the imprint utilized by Philips did not gain any distinctive attributes. The shape utilized by Philips was one, which was important to get that specialized result i.e., the route in which the hair would be trimmed. In this way, such check was to be rejected enrolment. If one needs to enrol their imprint then it is basic that there ought to be an impulsive expansion to the shape, which can’t be credited to perform some useful reason.

You can grab other case briefs on other IPR topics from here.

Citation – 2009 (6) RAJ 489 (Del.)

Facts:The plaintiff (Rolex) is a company incorporated under the laws of Switzerland and is engaged in the business of manufacture and distribution of premium quality watches. The plaintiff is aggrieved by the action of the defendant (Alex) carrying on business at Mumbai of manufacturing, selling, distributing and trading in artificial jewellery under the mark ROLEX. The Plaintiff had also come across a website of defendant which was registered as www.rolexjewelleryhouse.com and it was brought to light with further investigation that defendant was indeed manufacturing artificial jewellery in the name of ROLEX which was in turn being retailed
The plaintiff (Rolex) claimed the following:
a) Adoption of the trademark ROLEX and the first registration thereof in Switzerland in 1908.
b) Use of that trademark for trading around the world
c) That in India also it is registered in class 14 relating to Horological and chronometric instruments
d) That the plaintiff on 24th April, 2001 also got ROLEX in Hindi registered in class 14 with respect, to chains, charms, diamond earrings, jewel cases, medallions, necklaces, ornaments etc.
e) Have used the trademark ROLEX in India since 1912 i.e., even prior to the registration thereof in 1949
f) It is the case of the plaintiff that ROLEX is a well known trade mark as defined under Article 6 of the Paris Convention to which India is a signatory
The defendant argues that law of limitation bars the suit. The defendant also claims protection under S. 34 and 29 (4)(c) of the Trademarks Act.

Issues:
1) Whether the plaintiff’s mark can be categorized as a well-known mark.
2) Whether S.34 and 29 (4) (c) can be used as a valid defense by the defendant

Rule:
§ Section 33 of the Trademarks Act presents the rule of acquiesce which states that the proprietor of an earlier mark cannot oppose the latter trademark or claim to be invalid where the proprietor of the first trademark has accepted the latter trademark without a protest for a continuous period of five years. Knowledge of the existing latter mark and the unwillingness to oppose is what accounts for acquiesce.
§ Section 34 being a non obstante clause protects the proprietor of marks who (1) holds the first use of the mark in trade in relation to the predecessor in his title or (2) used the mark before the first register of trademark in respect of the goods of his predecessor.
§ Section 29 (4)(c) of the said act protects well-known marks, meaning those whose reputation in India is prominent enough to cause unfair advantage to those who use it in trade, which could also cause detriment to the respect and distinctiveness of their own mark.

Analysis:The court justifies in its holding that:
§ Section 34 cannot be used as a defense as the defendant could not prove continuous use of the mark since their claim in 1993.
§ For section 33 to apply, the defendant must have registered trademark Rolex in relation to artificial jeweller in 1993. As they had not, they cannot contend for the plaintiff to not follow through with the suit. While they were also unable to present the paperwork relating to the intent to trade until after registration which was in 2001.
§ The defendants must disprove that the plaintiff is well known mark in India, which does not have to be only in regards of jewellery.

Holding:The Court held that “Rolex” was a well-known trademark since it has been registered in more than 140 districts and also has a reputation in India and therefore, the defendant was restrained under Section 29(4)(c) of the Trade Marks Act from using the trademark “Rolex” in any way and was ordered to take down the website as well. The goods of the plaintiff would cease to be a status symbol if it had continued, which would prove to be detrimental to the plaintiff.

You can grab other case briefs on other IPR topics from here.

Citation – 2007 (109) Bom L R 306

Facts:
§ Defendant 1- Nando’s- company registered in Ireland
§ Defendant 2 – Nando’s Indage Restaurants Private Limited, is a franchisee.
§ Plaintiff – Nandu’s.

Nandu’s owner is Mr. Nandakumar. He is known to family and business associates as NANDU and they referred to his business as Nandu’s business. Nandu’s was formed in 1977, and registered in 1989 under Class 29 to the Schedule to the Trade Marks Rules in respect of processed and frozen meat products falling in Class 29. Plaintiff also owned the copyright in respect of the artistic work consisting of the said trademark. Nandu’s business started as poultry farm but slowly extended to selling frozen chicken, kebabs, biryani, in ready to eat form. They have not yet opened restaurants but plan to. Plaintiff registered another trademark in 2005. The word “Nandu’s” is a prominent feature in the said trademark as well.
In 2001, Nando’s (def) filed an application for registration of their trademark. But plaintiff’s registered trademark was cited as a conflicting mark by the registrar. Plaintiff filed for an injunction to prohibit defendants to use their mark on similar products as well as their restaurants.

Issue: Whether the court should grant injunction to prohibit defendant to open a restaurant under the name Nando’s?
Sub issues-
1. Whether Nandu’s and Nando’s are similar marks?
2. Whether the goods and service they provide are identical or similar?

Holding:
§ It has been established that NANDU’s is a very famous trademark and have a huge reputation. Yes, visually, the two marks are not only deceptively similar but virtually identical. Even phonetically, the two marks are similar. The similarity is enhanced taking into consideration the possible pronunciation of the Defendant’s mark in our country.
§ There can be a little doubt that, as far as the packaged food is concerned, the plaintiffs are entitled to the injunctions sought. Packaged food, if sold by the Defendants would undoubtedly be similar to the goods dealt in by the Plaintiffs.
§ To find whether the restaurant business is similar to the business of the Plaintiffs following points must be taken into consideration:
a) The respective uses of the respective goods or services: Nandu’s sells frozen and processed meat products whereas Nando’s provides cooked food along with hospitality services;
b) The respective users of the respective goods or services: Nandu’s targets shoppers who buy their products to be cooked and consumed at home whereas Nando’s is meant for those who want to go outside for a social activity to a specialized restaurant;
c) The physical nature of the goods or acts or service: Processed and frozen meats are not the same as or similar to restaurant services;
d) The respective trade channels through which the goods or services reach the market: Nandu’s sells its product through cold storages and supermarkets whereas Nando’s serves food chosen from a menu;
e) 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;
f) The extent to which the respective goods or services are competitive. The question to be asked is “is there a likelihood of confusion? :  Frozen and processed meats are not in competition with Nando’s restaurant services in any way.
“The marketing practices of today are such that a customer who attends a banquet which he knows is catered by the Appellant would, when he encounters a food product in the grocery store under an almost identical mark, naturally assumes that it came from the catering firm. The difference between a service for the catering of food and the actual sale of food is a rather fine legal distinction not likely to be drawn by laymen.”
This allows us to put in perspective the following criteria to decide whether or not there was infringement when the goods/services are not similar:
a) Identical/similar marks: The names are only slightly phonetically similar;
b) Reputation: Nando’s as an internationally established brand already has a vast reputation and does not need to infringe on another mark to exploit its distinctiveness;
c) Trademark has distinctive character: Both Nando’s and Nandu’s are dissimilar marks as they are inherently distinctive and are even pronounced differently;
d) Taking unfair advantage: Due to a prior international reputation, Nando’s does not need to take advantage of another mark, and because of the dissimilarity of goods and services and the marks themselves, it was observed that Nando’s was not taking unfair advantage.

Conclusion: For the above reasons, the perpetual injunction was not granted as it was held that Nando’s was not infringing upon the trademark, Nandu’s.

You can grab other case briefs on other IPR topics from here.

Citation – AIR 1994 Delhi 239

Facts: The plaintiff, Daimler Benz, having a three-pointed star in a ring as its trademark and a manufacturer of one of the finest engineered cars in the world filed a lawsuit asking for a permanent injunction against the defendants for the infringement of their Trademark. The defendant was using the trademark ‘Benz’ and ‘three-pointed human being in a ring’ as a mark for his business of undergarments.

Issue: Should injunction be granted against the use of the trademark of Benz by Hybo for its undergarment business? Would a delay in filing of the suit take away the right of the plaintiff?

Holding: The defendant was restrained by an injunction from using the name of Benz and the three pointed human in a ring to carry on its business of undergarments.

Rationale: The court acknowledged that the mark and the word Benz and the three pointed star in a ring have for long been associated with luxury car maker, Mercedes Benz. Benz is no Indian’s surname and the defendants accepted that they did not name the brand after the city ‘Mercedes’. Any person who has even a very limited knowledge of the world of cars would be easily able to associate the name of Benz with the luxury car manufacturer, Mercedes Benz.
The court rejected the argument about delay in filing for injunction distinguishing the present case from the previous cases where injunction was not granted due to delay in filing for an injunction. However, the court rejected this old principle, saying that it cannot be applied to a well-known and reputed brand like Mercedes Benz.
The principle of ‘honest concurrent user’, as laid down in Amritdhara Pharmacy v Satya Deo Gupta is also inapplicable to a well known brand as Benz. “The trademarks law is not intended to protect a person who deliberately sets out to take the benefit of somebody else’s reputation with reference to goods, especially so when the reputation extends worldwide. By no stretch of imagination can it be said that use for any length of time of the name ‘Benz’ should not be objected to.”
None should be allowed to use a world-famed name to goods which have no connection with the type of goods which have generated the worldwide reputation and dilute the reputation of a very high priced and extremely well-engineered car brand by associating it with underwears.

You can grab other case briefs on other IPR topics from here.

Citation – AIR 1960 SC 142

Facts: The appellant is a corporation which had registered the mark “Glocovita” under the Trade Marks Act, 1940, in respect of a substance used as food or as an ingredient in food containing glucose powder mixed with vitamins. Seven years later, the respondent, a manufacturer of biscuits, made the application for registration of the mark “Gluvita” and it agreed to limit the registration only to biscuits. The appellant opposed the respondent’s application.

Procedural History:  On appeal the Deputy Registrar held that the respondent’s proposed trade mark registration could not be refused because, firstly, biscuits were not goods of the same description as glucose powder mixed with vitamins. Secondly, the words “Glucovita” and “Gluvita” were not visually or phonetically similar. On Appeal to the Bombay High Court, the court set aside the Deputy Registrar’s order and held that the respondent’s mark could not be registered. The Respondent appealed in the same High Court, which held that its mark cannot be refused to register. The appellant finally appealed to the Supreme Court.

Issues:
§ Whether the goods are of the same description as glucose powder mixed with vitamins in the two products was in the same class?
§ Whether the words ‘Glucovita’ and ‘Gluvita’ were not visually or phonetically similar and that there was no reasonable likelihood of any deception being caused by or any confusion arising from, the use of the respondent’s proposed mark?

Analysis:
§ The mark ‘Glucovita’ has acquired a reputation among the general buying public. Though the goods are not of the same description but there is evidence that glucose is used in the manufacture of biscuits. That would establish a trade connection between the two commodities, namely, glucose manufactured by the appellant and the biscuits produced by the respondent. An average purchaser would therefore be likely to think that the respondent’s ‘Gluvita biscuits’ were made with the appellant’s ‘Glucovita’ glucose.
§ Biscuits containing glucose are manufactured with liquid glucose whereas the appellant’s mark only concerns powder glucose. We will assume that only liquid glucose is used in the manufacture of biscuits with glucose. But there is nothing to show that an average buyer knows with what kind of glucose, biscuits containing glucose are or can be made with. That there is trade connection between glucose and biscuits and a likelihood of confusion or deception arising therefrom would appear from the fact stated by the appellant that it received from a tradesman an enquiry for biscuits manufactured by it under its mark ‘Glucovita’. The tradesman making the enquiry apparently thought that the manufacturer of ‘Glucovita’ glucose was likely to manufacture biscuits with glucose; he did not worry whether biscuits were made with powder or liquid glucose. The commodities concerned in the present case are so connected as to make confusion or deception likely in view of the similarity of the two trade-marks.
§ ‘Glucovita’ has acquired a reputation among the general buying public. The marks with which this case is concerned are similar. Apart from the syllable “co” in the appellant’s mark, the two marks are identical. That syllable is not such as would enable the buyers in our country to distinguish the one mark from the other.
Again, in deciding the question of similarity between the two marks we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them.

Rule: To determine the question of likelihood of deception or confusion between the identity of two competing marks or their close resemblance, the trade connection test should be applied. Therefore, a trade connection between glucose and biscuits would appear to be established as a result of which, the commodities concerned are so connected as likely to create confusion or deception in view of the similarity of the two trademarks.

Conclusion: The Court said that the two marks are so similar so as to cause confusion to the public and hence allowed the appeal.

You can grab other case briefs on other IPR topics from here.

You can grab other case briefs on other IPR topics from here.

Citation – AIR 1963 SC 449

Facts: The Respondent (Satyadeo Gupta) had applied for registration of the trade name of a medicinal preparation “Lakshmandhara” in relation to the medicinal preparation since 1923. It was admitted by the Respondent that the Respondent’s product was mainly sold in the State of Uttar Pradesh and there were only sporadic sales in other states. The Appellant (Amritdhara Pharmacy) opposed the registration of the mark ‘Lakshmandhara’ on the ground that it had an exclusive proprietary interest in the trademark “Amritdhara” in relation to a similar medicinal preparation which had acquired considerable reputation since 1901 and that the respondent’s trade name “Lakshmandhara” was likely to deceive and cause confusion and therefore the registration was prohibited. In response to the same the Respondent filed a counter affidavit, raising the defenses of honest concurrent user and acquiescence on part of the Appellant as the Respondent was using the mark ‘Lakshmandhara’ since 1923.

Issues:
1) Whether the name ‘Lakshmandhara‘ was likely to deceive the public or cause confusion to trade under the Act?
2) Whether there was Such, acquiescence on behalf of the appellant in the use of the name ‘Lakshmandhara‘ in the State of Uttar Pradesh as to bring it within the expression ‘special circumstances’ or ‘honest concurrent use’ under the Act?

Procedural History:
§ Registrar of Trade Marks: The Registrar of Trade Marks held that There was sufficient similarity between “Amritdhara‘ and “Lakshamandhara” so as to cause confusion and it was likely to deceive the public, but the acquiescence of the appellant in the use of the trade name “Lakshmandhara” by the respondent in the relation to his product for a long period to the knowledge of the appellant was special circumstance under S. 12 entitling the respondent to have his name registered along with the appellant’s trade name. Registrar, however, confined the registration to sales with the State of Uttar Pradesh only. As a result of this order, passed by the Registrar, two appeals were filed. One by the Appellant seeking cancellation of Registration of Respondent’s mark altogether and one by the Respondent seeking registration for other states apart from Uttar Pradesh.
§ High Court (Allahabad): The Hon’ble Allahabad High Court, rejected the appeal of the Appellant and allowed the appeal of the Respondent allowing the registration of the mark ‘Lakshmandhara’ for the whole of India. The Hon’ble High Court held that the marks ‘Amritdhara’ and ‘Lakshmandhara’ are dissimilar and the words ‘Amrit’ and ‘Dhara’ being of a common language cannot be made the monopoly of any individual and thus the Hon’ble High Court found no reason to disallow registration of the trademark ‘Lakshmandhara’.

On the question of honest concurrent use the Hon’ble High Court favoured the Respondent but on the question of acquiescence founded favour in the arguments of the Appellant and held in his favour. Then SLP was filed in the Supreme Court.

Holding: The Hon’ble Supreme Court held that the marks ‘Amritdhara’ and ‘Lakshmandhara’ are similar and thus overruled the decision of the Allahabad High Court and upheld the decision of the Registrar of Trade Marks. In coming to the said conclusion, the Court relied on:
§ The test of comparison of marks, which states that the question of comparison of two marks has to be approached from the point of view of a man or consumer of average intelligence and imperfect recollection.

The Court held that-
“A critical comparison of two names may disclose some points of difference but an unwary purchaser of average intelligence and imperfect recollection 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”;
and The court explained and summarized the test (taken from an old English Case-Pianotist Co.’s Application, 1906) applied consistently the courts in context of similar goods
“You must take the two words. You must Judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances and you must further consider what is likely to happen if each of those trademarks is used in a normal way as a trademark for the goods of the respective owners of the marks.”
It was held further that the two names as a whole should be considered for comparison and not merely the component words thereof separately.
On the point of ‘Honest Concurrent’ user the court found in favor of the Appellant (Amritdhara Pharmacy Co.) and held that there was Acquiescence by the Appellant to the use of the Respondent of the mark ‘Lakshmandhara’ as both the companies have been advertising through mediums which were common to both the appellant and the respondents.

Conclusion: The marks ‘Amritdhara’ and ‘Lakshmandhara’ are similar and thus overruled the decision of the Allahabad High Court and upheld the decision of the Registrar of Trade Marks. The Supreme Court allowed the appeal set aside the judgment of the high court and restored those of the registrar of trademarks.