By Sushant Arora, Partner, Mumbai Office
A registered Trade Mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with or deceptively similar to the said registered Trade Mark in relation to the goods or the services in respect of which the said Trade Mark is registered.
In view of the above, any such Infringement would mean that the user without any authority is using a mark which is
- Identical to the Registered Trade Mark – with similarity of goods / services covered by the said registered Trade Mark;
- Similar to the said Registered Trade Mark – with identity or similarity of goods / services covered by the said registered Trade Mark;
- Identical to the Registered Trade Mark – with identity of goods / services covered by the said registered Trade Mark;
- Identical with or similar to the Registered Trade Mark;
- Used in relation to such goods or services that are not similar to those for which the said Trade Mark is registered;
- A reputed Trade Mark per se, AND the user is deriving an Unfair Advantage of the same OR is using the mark in such a manner so as to cause detriment to the distinctive character of the said Registered Trade Mark.
And which use is such that is likely to cause confusion on the part of the public, OR which is likely to portray as it has an association with the said Registered Trade Mark (when the contrary is true).
On analysis of the above, we find that in order to establish a case of Infringement, it is certainly not necessary that the goods / services under the rival marks be similar / identical. (Ofcourse, if the said goods / services are identical / similar, it would be a good case for grant of Injunction).
It would also be sufficient if the Registered Trade Mark has a prior reputation and the Unauthorised User is deriving an unfair advantage in the course of trade OR is acting in such a manner so as to deceive the general public into believing that his mark is associated with the said Registered Trade Mark (when contrary is true).
In the alternative, the user is using the mark in such a manner so as to cause detriment to the Registered Trade Mark. Here the term detriment does not connote loss or defacement, but in fact de-valuation of the Registered Trade Mark in so far as it gets reduced to a generic word. It may be interesting to note that JEEP was Registered Trade Mark of Chrysler, but due to over-use or mis-use, it has now very commonly used to denote any Open Vehicle (without doors) with a 4-Wheel Drive. Similarly, the trade mark XEROX has lost its distinctive character and is now popularly used to connote photocopying.
Where a mark is a Well-Known Trade Mark, its reputation is deemed to transcend the physical boundaries of a geographical region and acquires a trans-border / extra-territorial / over-sees reputation even in the absence of goods, merely due to advertisement. This knowledge and awareness of the goods of a foreign trader and its trade mark is available even at a place where goods are NOT being marketed, and consequently, not being used. In this famous Whirlpool Case, it was held that the mark WHIRLPOOL is a Well-Known Trade Mark and its reputation & goodwill should necessarily be protected in India, despite the fact that goods under the said brand were not being marketed in India. [N.P. Dongre vs Whirlpool Corporation; 1995 PTR 154 : AIR 1995 DEL 300]
Where the defendant applied to the Registry for registration of the mark HITAISHI, it was held that its mark was deceptively similar to that of the plaintiffs mark HITACHI. As such, the defendant was directed to stop using its mark as it amounted to infringement. [Hitachi Ltd. vs Ajay Kumar Aggarwal; 1995 PTR 122 (Del)]
Where plaintiff was registered for the mark CIBA and CIBACA for various goods and where the defendant was using the mark CIBACA for manufacturing filters for motor vehicles (goods totally different from that of the plaintiffs mark), it was held that causing of actual confusion is not required to be proved by the plaintiff. It is sufficient if there exists a real likelihood of deception or confusion in the minds of the public at large. Injunction was accordingly granted. [Ciba-Geigy Ltd vs Surinder Singh; 1998 PTR 77]
In a similar vein, the mark LAKME (for cosmetics) was held to be similar to the defendants mark LIKE ME for Nail Enamel Polish and other cosmetics on account of Phonetic resemblance of the rival marks and as such Injunction was granted. [Lakme Limited vs Subhash Trading; 1996 PTR 202 (Del)]
Where the Plaintiff was a Registered Proprietor of a Trade Mark ROLAC for antacid tablets, and defendant was found manufacturing analgesic tablets under the mark TOROLAC, it was held that the marks are deceptively similar and the Injunction was accordingly granted [American Home Products Corporation vs Lupin Laboratories; 1996 PTR 7]
Similarly, the mark BARALAGAN for medicines was held similar to defendants mark BARAGAN and Injunction was consequently granted. [Hoechst AB vs Unisule Pvt Ltd; 1996 PTR 138 (Del)]
The law on Infringement continues to be developed through various case laws