Category: Law School

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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.

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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.

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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.

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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.

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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.

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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.

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Citation – AIR 1968 Cal 582

Facts: The Appellant, in this case, i.e. the Imperial Tobacco Company made its first application for registration of a trademark before the Registrar applying for registration as a trademark of a label bearing the device of snow-clad hills in outline and the word “Simla” written prominently in various panels of the label. The specification of the goods in the application reads as “Manufactured tobacco”. “Word Simla’ which forms the essential and distinguishing feature of the mark is a famous geographical name and is not registerable except on the very strong evidence of distinctiveness. Its geographical signification was thus plain and unequivocal and the snow-clad hills in outline in the label made the geographical significance inescapable.

Procedural History: The Registrar of Trademark rejected the application. Registrar stated that in order to be registerable, the mark should have acquired distinctiveness on the date of making the application for registration. ITC filed a fresh application, 3 years later in 1963 for same trademark claiming that the trademark has achieved distinctiveness. This application was also rejected by the Registrar of Trademark. Hence the appeal.

Issue: Whether this geographical name “Simla” has acquired distinctiveness within such a short period between, April 1960(first application) and July 1963(Second Application) which is barely a period of 3 years?

Holding: The Registrar finds that the appellants have no branch at Simla and that tobacco is not grown nor is there any factory for manufacturing tobacco goods in the district or town of Simla. The Registrar took the view that informed smokers may not be deceived, but to an ordinary smoker, who had no special knowledge, Simla might not appear to be a totally unlikely place to be associated with the origin of the cigarettes, and he would, therefore, be deceived by the appellant’s mark. The court held that evidence of distinctiveness is necessary for granting trademark. It was held that the evidence provided by the appellant showing the sales of the cigarettes in the country is not a sufficient proof to establish distinctiveness. The court was of the view that if such trademark is granted, it will be a problem for someone who is from Shimla and wants to use the trademark if he plans to manufacture cigarettes or any other product in Shimla. Thus the Registrar’s decision to refuse the application was upheld.

Rationale:  Registration of a geographical name is not allowed unless it is proved that the mark has acquired distinctiveness because of its use or if it is a well-known mark. Distinctiveness cannot be proved by the sales of the product, financial proofs or popularity.

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Citation -2005 (30) PTC 336 IPAB

Facts:An application was filed by the respondent M/s Aggarwal Sweet Corner for the registration of trade mark ‘Aggarwal Sweet Corner’ in respect of sweets and namkeens. The mark was claimed to be used since 01.06.84. Applicant disclaimed the word ‘corner’ in its application. The appellant filed an appeal raising opposition that the mark is identical and deceptively similar to their mark and they have been manufacturing and namkeens under the trade mark Aggarwal Sweet Corner since the year 1986.

Issue:
Whether the applicant’s Trade Mark can be refused on the grounds of Sections 9 &11?.

Procedural History:The Assistant Registrar made a suggestion to the applicant that a disclaimer about the word ‘sweet’ and ‘corner’ besides the word ‘Aggarwal’ should also be added. Therefore, this was accepted by the applicant. But later, the Assistant Registrar disallowed the application for the registration. The Learned Deputy Registrar overruled the decision of assistant registrar on all the grounds. With respect to section 9 of the act it was held that the applicants have adduced sufficient evidence of user since 01.06.84 which is sufficient for the registration.
Evidence containing several documents namely, copies of purchase orders, copies of invoice, copies of advertisement, copies of sale tax, copies from bills from advertisers, copies of analysis report, copies of balance sheet and copies of orders received from customer. Hence these documents were enough evidence of user since 01.06.84. In matter it was said that the appellant have merely filed an affidavit with regard to evidence of user and reputation of the mark which is not enough to prove the case.
Lastly, in matter of opposition with section 18(1), it was held that since the applicant has proved evidence of user and reputation of the mark applied for, the applicant is entitled to the proprietorship of the mark under section 18(1) of the act. It was also said that the appellant claims to be trading in the name and style of M/s Aggarwal Sweet Corner, but however it does not show anywhere that its goods are being marketed with the said mark i.e ‘Aggarwal Sweet Corner’.
Hence the appellant have no trade Mark other than the trading style but that cannot be treated as the trade Mark as there are no evidences to prove it. Hence, the appeal was disallowed and the order to proceed with the registration was made in favor of applicant.
Additionally, Assistant Registrar also held that any surname can be registered as a Trade mark under section 9 (1)(a) of the act provided it meets the requirements of the act. However there is no evidence that proves the ‘Aggarwal’ is a commonly used word in that trade (i.e sweets and namkeens). Therefore in view of the evidence and the use and publicity filed by the applicant, Assistant registrar came to a conclusion that despite the fact “Aggarwal” being a surname, the word acquires distinctiveness and as such qualifies for registration. He also held that the appellant has failed to provide the evidence to prove that “Aggarwal” is a commonly used expression in this trade and thus the objection is overruled.

Holding:The Board held that for entitlement of trade mark under section 9, the one who contest for the mark should be the prior user in time and in-fact should be using the mark consistently from the date so claimed. The respondent in this case filed the application on 30.04.86 and has claimed to be using the mark since 01.06.84. Therefore, he has reproduced sufficient evidence to prove his claim he had been extensively and consistently making use of both the marks from 01.06.84. The Board says, we believe that so much of the documentary evidence for this period is enough to establish that there was a user as from the date claimed in the application and it was a consistent user. Therefore, there is no merit in changing the decision of the learned Deputy Registrar or the Assistant Registrar, as the case may be, in all of these appeals. Hence, the appeals stand dismissed.

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Citation – 305 U.S. 111 (1938)

Facts:Inventor Henry Perky developed a shredded wheat machine and introduced the cereal in 1893; he was issued utility patents in 1895 on both the shredded wheat and on the machine. The cereal became successful, and Perky’s company, the Shredded Wheat Company, continued to manufacture the product after he retired.
The Kellogg Company started manufacturing shredded wheat cereal in 1912 after Perky’s patents expired. After the Shredded Wheat Company objected, Kellogg stopped manufacturing their version in 1919. In 1927, the Kellogg Company resumed manufacturing shredded wheat, prompting a lawsuit from the Shredded Wheat Company. In 1930, the Shredded Wheat Company was acquired by the National Biscuit Company (later Nabisco), which again sued Kellogg, both in Canada and in the United States, for unfair competition. Nabisco complained in its lawsuit about Kellogg’s use of the term “Shredded Wheat”; the similarity of its cereal biscuits’ shape to the Nabisco cereal biscuits and Kellogg’s use on the product box of a picture of two of the pillow-shaped cereal biscuits submerged in milk.

Procedural History:In 1928 National Biscuit Co. sued Kelllogg for unfair competition. In 1932 another suit was brought. In 1935 the suit was dismissed by the district court stating no ‘passing off’ or deception had been shown and that the product had passed into public domain upon the expiration of its patent. This decision was appealed and reversed by the District Court with a decree that enjoined Kellogg from advertising its product as shredded wheat as well as producing it in the same ‘pillow shaped’ form as well as apportioned damages. In 1938 National Biscuit Co. requested clarification of the injunction because Kellogg insisted that it was only forbid from using the term ‘shredded wheat’ in conjunction with the “pillow-shaped’ product and not otherwise. Circuit court granted appeal for interpretation and amended it to forbidding use of both the term and the shape independently of one another as well as together. Supreme Court granted certificate this time to both.

Issue: Whether Kellogg Company has infringed the rights of Nabiasco by manufacturing “Shredded Wheat”, a product of Nabiasco, for which trademark was rejected and it had passed into the public domain upon the expiration of its patent?

Holding:Supreme Court reversed with directions to dismiss.

Rationale: The court uses the doctrine of genericide to explain that the term “shredded wheat” is now generic and therefore secondary meaning is irrelevant. Further the court explains that the term brings to mind in the public the product more so than the product’s origin. Then the court explained that with regards to the trademark rights associated with the pillow shape, it was not protected because the goodwill created by such a form had been established due to its monopoly that had been allowed for by the patent, which has now expired. To hold that it is protectable would fly in the face of the entire purpose of patent law, it is now allowed as part of the public domain. Finally, the court alludes to what would be termed as trade dress with regards to the packaging of the product, and explains that Kellogg’s packaging and marketing was substantially unique so as not to create confusion as to the source or to trade off the goodwill of National Biscuit’s trade dress. For all these reasons, the Supreme Court reversed with directions to dismiss.

Rule:This case helps to establish the doctrine of genericide and probably lays the groundwork to future cases with regards to trade dress and how it is to be treated. Most importantly however it indicates the significance of trying to take a product previously protected by patent and later using another form of intellectual property protection to protect it going forward and how in most instances this is not going to stand.