Trademark

The Intricacies of an Innocent Curve


The Bombay High Court in Reliance Industries Ltd v Concord Enviro Systems Private Limited recently dismissed a trademark infringement suit filed by Reliance against Concord Enviro Systems. Read on for a complete analysis by Akshata Ankolekar, an associate at Solomon and Roy, Intellectual Property Services .

FACTS

The Plaintiff, the largest private sector corporation in India is the registered owner of’Rel mark ’ (hereinafter referred to as the ‘R Logo’) under various classes including Classes 7, 9 and 11. The Defendant is using its impugned logo ‘CC Mark’ for services under Class 40. The Plaintiff claims that its mark is a well-known mark and that it has been rendering services under the mark since 1956 whereas the Defendant began using its mark only in the year 1999.

ARGUMENTS

 The decision essentially turned on whether or not the Defendant’s mark was deceptively similar to the Plaintiff’s mark and whether the Defendant was passing off the Plaintiff’s mark as its own. The Plaintiff also claimed violation of copyright in the mark.

Arguments on behalf of the Plaintiff

The case of the Plaintiff rested on 3 broad arguments.

Firstly, the Plaintiff argued that the Defendant is using and/or is intending to use its impugned logo in respect of goods falling under Classes 7, 9 and 11 and services falling under Class 40. The Plaintiff has already registered its logo under those particular classes. The Plaintiff further contended that the impugned logo is deceptively similar to the Plaintiff’s ‘R logo’, both visually and structurally.

Secondly, the Plaintiffs were averse to the idea of comparing the two trademarks side- by – side as the purchaser will seldom have the two marks before him when he makes the purchase. They argued that the marks are remembered by general impressions or by some significant detail, rather than by any photographic recollection of the whole. If the impugned mark  contains a feature, being the curve of the ‘R Logo’ in the present case, a case for infringement is made out under sections 28 and 29 (4) of the Trademark Act, 1999.

Thirdly, the Plaintiff contended that, the Defendant’s impugned logo has been taken wholly from the Plaintiff’s logo, which is an original artistic work and is registered as such under the Copyright Act, 1956. They further claimed that adding what the Defendant describes as a drop of water as a background to the essential feature and further using the essential feature of the Plaintiff’s logo in a reverse manner makes no difference as far as the question of colourable imitation or substantial reproduction is concerned.

Arguments on behalf of the Defendant

 On the other end of the spectrum, the Defendant advanced arguments in support of the proposition that the rival marks are as different as chalk and cheese and there is no similarity between the two in any manner whatsoever.

The Defendant stated that the Plaintiff’s claim is wholly misconceived and baseless and the differences between the rival marks even if one was to compare them, are as follows:

  • The impugned logo of the Defendant is in the shape of a drop, as contrasted with the circular shape of the logo of the Plaintiff;
  • The impugned logo symbolizes and/or conveys the idea of the Defendant’s initials being ‘c’ and ‘e’ that form the brand name Concord Enviro. This has been artistically depicted inside the drop. The logo is meant to be a symbol that the Defendant is contributing in creating a better and cleaner environment, which is a part of its mission statement as well, and
  • The Defendants further contended that it is impermissible in law to break up the rival logos into integers and compare the marks after such dissection. The Plaintiff’s argument that the water droplet which forms an essential feature of the Defendant’s logo should be ignored, or that its presence is irrelevant, is contrary to settled law. While the similarities are required to be considered, significant dissimilarities are certainly not be ignored, especially when such dissimilarities are essential features.

Monopoly on a Curve?

 The Defendants presented an in-depth argument that the marks are to be compared and assessed as a whole. However, even if the rival logos are dissected and only the multifaceted aspects of the rival ‘curves’ are compared they exhibit differences making them altogether different from the Plaintiff’s logo.

Lastly, the Defendants argued that it is important to consider the ‘idea’ conveyed by the rival marks. The idea conveyed by the Defendant’s impugned logo is that of a ‘water droplet’ which signifies conservation of water and the environment, which is the anti-thesis of the idea conveyed by the logo of the Plaintiff.

DECISION OF THE COURT

Justice Kathawalla relied on the judgment given in Cadila Healthcare Ltd. vs. Cadila Pharmaceuticals Ltd. which laid down several factors such as nature of the marks, degree of resemblance, nature of goods, class of purchasers likely to buy the goods, mode of purchasing the goods and any surrounding circumstances that may be relevant for comparison of the two marks.

 Firstly, he propounded that the test of comparison of the marks side- by-side is not a sound one, because it is unlikely that the purchaser will have the two marks before him.

Secondly, he held that there is no similarity between the Plaintiff’s logo (curve) and the curve used by the Defendant. There is a clear difference and/or distinction between the Plaintiff’s curve which is circular in shape and the curve used by the Defendant. Further, weightage is required to be given to each feature of the rival mark such that they are compared as a whole. In the present case the essential feature is a ‘water droplet’ which dominates the Defendant’s logo. Even the idea conveyed by the rival logos is ex-facie entirely distinct. While the similarities are required to be considered, significant dissimilarities cannot be ignored.

Lastly, he held that by no stretch of imagination could there be any question of confusion on account of the use of the rival logos. Therefore, no further enquiry is required and the Plaintiff is not entitled to claim any relief. The Defendant acted in good faith and their logo is honest and bona fide.

Conclusion

The judgment is like a breath of fresh air. It is very well reasoned and is founded on an accurate understanding of the legal as well as factual issues of the case.

One comment.

  1. Harshavardhan Ganesan

    I have a bit of difficulty in understanding how you can reconcile the first and second part of the decision. In the first part you stated that the judge will not employ a side-by-side comparison since it is unlikely the consumers will have both the marks in front of them. ( Why exactly so is unclear), but even so, in the second part, the judge does exactly that. He goes on to make a side by side comparison. Am I missing something here?

    Reply

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