A Nuanced Trademark Distinction: 29(1) vs 29(2)? – Part I by Eashan Ghosh

Eashan Ghosh graduated as a gold medalist from NLSIU, Bangalore and with distinction honours from the University of Oxford. He has been in practice as an intellectual property advocate and consultant in New Delhi since 2011, and has taught intellectual property law at NLU Delhi and NLSIU, Bangalore. He has published articles in international journals including the European Intellectual Property Review, World Trademark Review, the Journal of Intellectual Property Law & Practice and the Queen Mary Journal of Intellectual Property. He has also written on Indian intellectual property issues for the Journal of Intellectual Property Rights, Indian Journal of Law & Technology and the NUJS Law Review.

In these posts, Eashan systematically analyses the contours of Sections 29(1) and 29(2) of Trademarks Act, 1999. It is quite an interesting read as it entails both logic and coherence. Eashan was in the news when the Delhi High Court boldly admitted (inadvertent) plagiarism of his co-authored article in Queen Mary Journal of Intellectual Property and initiated ‘corrective actions’. SpicyIP had covered it here and here.

So here goes:

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Sections 29(1) and 29(2) of Trademarks Act – I: Guest Post by Eashan Ghosh

Introduction

Last month, an order by Justice Patel of the Bombay High Court in Ajanta Pharma v. Theon Pharmaceuticals dismissed an application for interim relief in a trademark infringement suit. The case was written about on these pages.

One of the defences raised insisted upon a distinction between a trademark infringement action under Section 29(1) of the Trade Marks Act and one under Section 29(2). The distinction argued was that Section 29(1) is mark-centric, while Section 29(2) is effect-centric. To put it simply, under Section 29(1), if a trademark rights holder establishes identity or deceptive similarity with the rival trademark, there ends the infringement inquiry. However, under Section 29(2), an infringement inquiry involves first comparing the competing trademarks for similarity and then requiring the rights holder to demonstrate that the similarity is likely to cause public confusion.

Given how central these provisions are to any trademark infringement inquiry under Indian law, it is a distinction well worth considering. I proceed to do so now. References to authority will be integrated.

Sections 29(1), (2) and (3) of the Trade Marks Act run as follows (emphasis mine):

Section 29: Infringement of Registered Trade Marks

(1) 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 trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

(2) 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 because of:

(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or

(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or

(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark,

is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.

(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.

Activity-Comparison-Condition

Section 28(1) of the Act gives a rights holder two rights in a registered trademark – the right to use the trademark and the right to sue for infringement. It is similar in structure to Section 29(1). Superimpose Section 29(1) onto Section 28(1), and it becomes clear that trademark infringement is to be understood as use of a trademark identical or deceptively similar to the rights holder’s trademark.

To this extent, the distinction argued by the defence in Ajanta is accurate. However, Section 29(1) is not just mark-centric. It specifies an activity (“use in the course of trade”), a specific point of comparison (“identical or deceptively similar in respect of the goods or services for which the trademark is registered”) and a further condition / effect (“in such manner as to render the use of the mark likely to be taken as being used as a trademark”). The activity, point of comparison and further condition / effect are, evidently, cumulative conditions. Break the activity-comparison-condition chain, and the Section 29(1) case for infringement falls apart.

Similarly, Section 29(2) requires the rights holder to establish the same activity (“use in the course of trade”),one of a wider range of comparisons[sub-sections (a), (b) and (c)] and one of two effects (“likely to cause confusion in the minds of the public or likely to have an association with the registered trademark”). The activity-comparison-effect chain is more unwieldy with Section 29(2) but one option from each category would still set up a Section 29(2) case for infringement. Section 29(3), meanwhile, says that the effect of the likelihood of public confusion is to be presumed where the comparison under Section 29(2) is between identical trademarks for identical goods or services.

In practice, this type of activity-comparison-effect breakdown has been difficult to isolate. Serviceable distinctions between Sections 29(1) and (2) have been attempted by Indian Courts (RanaSteels v. Ran India Steels, 2008; Montblanc v. New Delhi Stationery Mart, 2008; Raymond v. Raymond Pharmaceuticals2010; Cipla v. Cipla Industries2017). There have also been murmurs about possibly splitting the effects in Section 29(1) into a subjective component, judged from the standpoint of the trademark user’s intention, and an objective component, judged from the standpoint of how likely the use would be to cause consumer confusion (Federal Brands v. Levi Strauss India, 2016). Overall, though, the impression is one of confusion as numerous instances predominate, both before and after the 1999 Act, of:

• The condition / effect of Sections 29(1) and (2) being treated as synonymous (Playboy Enterprises Bharat Malik, 2001)
• Reading conditions / effects from Section 29(1) into Section 29(2), and vice versa (Pepsi Co Hindustan Coca Cola, 2003)
• The condition / effect of Section 29(1) being left out entirely (Radico Khaitan Carlsberg, 2011)
• Section 29(1) and one of the sub-clauses of Section 29(2) finding infringement on the same facts (Symphony Ltd Godrej & Boyce Manufacturing, 2015)
• In summarizing Sections 29(1) to (3), the condition / effect identified as most dominant is the likelihood of public confusion tagged to Section 29(2) (Bloomberg Finance Prafull Saklecha, 2013).

The Outcome Table

Reduced into tabular form, however, the permutations emerging from Sections 29(1) and (2) look something like this:

Infringement Outcomes

There are a few things to say here.

First, all ten outcomes rest on the impugned use of the mark being “use in the course of trade”. What constitutes infringing use of a registered trademark is defined, almost to vanishing point, by the rest of Section 29, and sub-clauses (5) and (6) in particular. “Use in the course of trade” is, thus, not a point of distinction between Sections 29(1) and (2).

Second, in terms of points of comparison alone, outcomes 3 to 10 above emerge from Section 29(2). These outcomes are exhaustive of the possible permutations involving identity and similarity between the rival trademarks, and the goods or services to which they are applied.

Outcome 1, drawn from Section 29(1), presents identical marks over identical goods or services. This precise possibility is also covered by Outcomes 6 and 10 [Section 29(2)(c)]. Outcome 2 under Section 29(1) compares deceptively similar marks over identical goods or services. This possibility appears to be covered by Outcomes 4 and 8 [Section 29(2)(b)], which speak to similar marks over identical goods or services.

Indian Courts have argued that the term “deceptively similar”, being unique to Section 29(1),retains some value (Balkrishna Hatcheries v. Nandos International, 2007; Marico v. Pratik Goyal, 2014), even as they have started to admit that most similarity inquiries in infringement cases are likely to fall under Section 29(2) (Banana Brand Works v. KavanAntani, 2016).Taken at its best, this contention says that, on the spectrum of actionable similarity, “deceptively similar” is closer to “identical” [also found in Section 29(1)] than it is to “similar” [found in Section 29(2)]. Therefore, the threshold to trigger a finding of infringement under Section 29(1) is lower than the threshold for returning the same finding under Section 29(2).

While there is some appeal to this characterization, it immediately runs into trouble, for at least three reasons.

First, the word “identical” finds mention in Section 29(2) as well. In fact, Section 29(2)(c) and Section 29(1) (Outcomes 1 and 6 above) appear to cover the exact same scenario on the points of comparison alone.

Second, Section 29(1) does not so much prescribe a threshold as it prescribes a further condition on the type of use complained of(Outcomes 1 and 2 above). By contrast, Section 29(2) certainly requires one of two thresholds to be met by the comparison in question.

It could be said in defence of this characterization that perhaps the absence of a threshold is what distinguishes Section 29(1) actions from those under Section 29(2). However, in respect of identical marks applied to identical goods or services, this still returns us to the first objection (Outcome 1 vs Outcome 6). In respect of deceptively similar marks,it is of interest to see that the expression “deceptively similar” defined by Section 2(1)(h) and used in Section 29(1) is framed in terms of the effect of the likelihood of generating public confusion, which is a threshold required under Section 29(2), not Section 29(1).

Third, surely, “deceptively similar” under Section 29(1), by hypothesis, a subset of the term “similar” under Section 29(2).

Thus, on the points of comparison alone, there does not appear to be a possibility covered by Section 29(1) that is not also covered by Section 29(2).