In a fairly straightforward case of trademark infringement and passing off, Justice S.C. Gupte of the Bombay High Court dismissed the plaintiff’s application for interim relief on the ground that there was no concrete likelihood of deception or confusion.
While the case is otherwise quite unexceptional, the judgment makes for interesting reading because of the court’s lucid enunciation of the difference between a descriptive mark and a prominent/essential mark and the discussion on the rights of owners of registered trademarks as regards parts of the registered mark. We have covered important judgments on descriptive marks here, here, and here.
The second plaintiff is the registered proprietor of a large array of marks bearing the word ultra, such as Ultratech Cement, UlTRATECH WHITE CEMENT, Ultratech Concrete, etc. On the basis of their sales record, the plaintiffs contended that the UltraTech marks have been used openly and exclusively by them since 2003 and that the marks have attained substantial goodwill and reputation in India and abroad.
In September 2013, the plaintiffs learned of the defendant’s use of the marks ‘Dalmia ULTRA’ and ‘DALMIA ULTRA’ which, in their opinion, contained the word ‘ULTRA’ as a central feature. In its trademark registration application, the defendant contended that it has been using the word Dalmia since 1939 and that the phrase ‘Dalmia ULTRA’ is proposed to be used from the date of the application.
Arguments of the plaintiffs
The case of the plaintiffs rested on 4 broad arguments.
First, the word Ultra is an integral element of the plaintiffs’ registered trademarks. If a word is integrally linked to a mark, the plaintiffs argued, the use of that word constitutes trademark infringement even if the defendants do not use the entire mark.
Second, since the defendant has itself applied for the registration of the trademark bearing the word Ultra, the plaintiffs argued, it does not lie in its mouth to argue that the word Ultra does not possess any distinctive significance.
Third, Section 17
in the Trade Marks Act, 1999, the plaintiffs argued, should be construed in such a way as to mean that if a word forming part of a trademark can be separately registered, the use of that word by the defendant constitutes trademark infringement.
Fourth, owing to long and continuous usage, the plaintiffs argued, the word Ultra has, ipso facto, come to acquire a secondary meaning. Since there is no impediment to obtaining relief for infringement that is founded on the use of a word in contradistinction to a mark, they argued, they were entitled to claim relief in this case.
Arguments of the defendant
The defendant’s case rested on 3 central arguments.
First, the word Ultra, it argued, is of a laudatory and descriptive character. Since it does not have any distinctive features, the plaintiffs were not entitled to claim any relief.
Second, the registration of the Ultratech marks by the plaintiffs, the defendant argued, rests on the premise that the word Ultra is only a component/part of the combination of words that constitutes the mark. Since the word Ultra per se has not been registered, it argued, the plaintiffs could not claim any relief for its use.
Finally, the use of the word ‘Dalmia’ in its mark, the defendant argued, is sufficient and adequate for making the public aware of the distinctive origin of the defendant’s goods and for putting to rest any possibility of deception.
Holding of the court
Rejecting the plaintiffs’ arguments, the court refused to grant any interim relief. It advanced 4 broad reasons in support of its conclusion.
First, based on the dictionary definitions of the term Ultra, the court held that it is amply clear that the word is generally used to denote an extra-ordinary or exceptional quality of the thing being described. This being the case, no trader can monopolize the term Ultra per se as the word does not have anything to do with a particular trader’s business.
Second, while no one can cavil at the proposition that the word Ultra is a crucial component of the plaintiffs’ marks, the court held, the word merely serves as a prefix in the mark and has not been registered as a distinct mark. The court’s conclusion was further fortified by the fact that, in response to the objections raised by the registry on the descriptive nature of the plaintiffs’ mark, the plaintiffs’ defence was that the word Ultratech has to be viewed in combination with the rest of the mark. On this basis, the court held that the registration of the marks was made on the express footing that the word Ultra was merely a component of the entire combination.
Third, rejecting the plaintiffs’ interpretation of Section 17, the court held that a close scrutiny of Section 17(2) gives rise to the inexorable conclusion that anything forming part of the registered mark cannot be protected by the trademark proprietor. Since the court’s analysis had clearly revealed that the word ultra was only a part of the registered mark, the embargo put by Section 17(2) would apply on all fours.
Finally, pointing out the differences between the cases cited by the plaintiffs and the case at hand, the court held that it was amply clear that the chief reason why plaintiffs were granted interim relief in those cases was because the essential or distinguishing feature/idea of the mark in question was sought to be copied by the defendants. In this case, however, the word Ultra was not a prominent or essential feature of the plaintiffs’ mark, principally because the word was never used as a standalone mark and was always subsumed in the word ‘Ultratech’.
In the final analysis, the judgment is very well-reasoned and is founded on an accurate understanding of the legal and factual issues that the court was called upon to deal with. It will hopefully compel plaintiffs to reconsider their decision to seek legal relief for the use of words or marks whose sole object is to describe the product in question.
A hat-tip to Vaibhav Keni for bringing this case to our notice!