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);

 The degree of resemblance between the marks;

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

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

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

 The method of purchasing the goods or placing orders; and

 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 predecessor-
in-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.