As we’ve noted on this blog before (see here, here and here), it is a well settled legal principle that, in a suit in which the plaintiff claims relief for trademark infringement/passing off, the Court is not to compare the two marks side by side in order to determine if they are similar, but the overall impression conveyed by the marks is dispositive.
It would be instructive to examine a recent judgment of the Bombay High Court, (Rahul Uttamsuryavanshi versus Sunil Kasliwal), which reaffirms this principle and recognizes the proposition that minor dissimilarities cannot absolve the defendant of the liability that flows from a determination of trademark infringement.
The plaintiff, a seller of construction material such as cement, lime, mortar and wall coating, is the proprietor of the mark ‘MOR CHHAP’ which it claims to have been using for around three decades. In addition to the word ‘MOR CHHAP’, the trademark consists of a picture of a peacock spreading its wings and the words “instant Niru (Sanla)” in the Devnagri script. The plaintiff has registered the mark in class 19 after complying with the requisite legal formalities.
On the other hand, the defendant, which also sells construction material, uses the mark ‘SUPER MOR CHHAP’. Even though the defendant sought to get its trademark registered on two occasions, it subsequently abandoned both applications.
In order to restrain the defendant from what the plaintiff claimed was a deceptively similar mark, the plaintiff instituted a suit in July 2015 which culminated in the grant of a temporary injunction in its favour on 8th June 2016. By way of this injunction, the defendant was restrained from using the mark ‘SUPER MOR CHHAP’, on the ground that it is deceptively and phonetically similar to the plaintiff’s mark, until the disposal of the suit. This resulted in the appeal under discussion.
Arguments of the defendant/appellant
In support of its prayer for the setting aside of the grant of the order of injunction, the defendant advanced four main arguments.
First, since the registration certificate pertaining to the trademark of the plaintiff makes it unequivocally clear that the registration is valid only up to 24th April, 2015, Argued the defendant, the plaintiff’s suit for trademark infringement is not maintainable.
Second, arguing that the word ‘Mor’ is the Hindi equivalent of ‘peacock’ and the word ‘Chhap’ is the Marathi equivalent of ‘seal’,, the defendant contended that the plaintiff could not be exclusively empowered to use these ordinary and common words.
Third, contending that its entire business has come to a grinding halt on account of the grant of injunction, the defendant advanced the argument that its employees have been rendered idle and the loans taken by it have become useless on account of this order. Therefore, it prayed for the modification of the order in such a way as to allow it to dispose of the existing stock containing the mark ‘Super MOR CHHAP’.
Finally, since the registration certificate pertaining to the plaintiff’s trademark indicates that the registration was granted on a conditional basis, the defendant argued that it was not open to the plaintiff to claim any exclusive rights over the concerned trademark.
Arguments of the plaintiff/respondent
In response to the arguments advanced by the defendant/appellant, the plaintiff/respondent made 3 central arguments.
First, refuting the appellant’s argument about the expiry of the trademark registration, the respondent contended that the registration is valid till 24th April, 2025. This being the case, the suit for infringement is legally maintainable.
Second, arguing that the colour combination and the words comprising the defendant’s mark are similar to the mark used by the plaintiff, the latter argued that the two marks are phonetically and visually similar. This conclusion, argued the respondent, is further buttressed by the use of a deceptively similar graphic representation of a peacock by the appellant without inserting any distinguishing features.
Finally, on account of the fact that the construction material sold by the appellant is likely to be predominantly purchased by uneducated masons, the respondent argued that there is a much greater likelihood of confusion, necessitating the grant of an injunction.
Holding of the Court
The Court commenced its analysis by noting that the plaintiff’s mark is duly registered while the defendant has withdrawn its trademark registration twice – a fact which tilts the balance of the case in favour of the former.
Noting that the two parties conduct their business in the same area, the Court took note of the similarity in the pictorial representation of the peacock in both marks. While it recognized that there is a slight difference in the manner in which the peacock is depicted in both the marks, inasmuch as the head of the peacock is tilted to the right in the plaintiff’s mark and to the left in the defendant’s mark, it held that the same would not be of material relevance in the infringement inquiry.
Relying on its own division bench judgment in the case of National Chemicals and Colour Co. versus Reckitt and Colman of India Limited and Anr., the Court held that the two marks cannot be put side by side in order to ascertain their similarities and differences; the overall impression of the mark would be determinative in such an enquiry because that is what the public is likely to carry in their mind.
Viewed through this lens, the difference in the direction of the peacock’s head did not have any material bearing on the determination of the case in light of the fact that the marks, when viewed in their totality, were remarkably similar. In order to substantiate this conclusion, the Court reiterated the 4 points of similarity between the two marks: The pictorial depiction of the peacock; the use of the words comprising the mark; the colour combination of the label; and the mode of writing and the words used in the name plate.
Rejecting the defendant’s argument that the words ‘MOR’ and ‘CHHAP’ did not merit trademark protection, the Court noted that the former had itself applied for trademark registration for marks containing these two words. This being the case, it would not lie in the mouth of the defendant to argue that these words could not receive trademark protection.
Noting that the registration certificate granted to the plaintiff did not envisage any restrictions on the plaintiff’s exclusive right to use any part of the registered mark, the Court held that the defendant’s argument about conditional registration lacked substance.
Finally, since the Court came to the conclusion that the two marks were structurally, phonetically and visually similar, it rejected the defendant’s argument that it had to face great hardship on account of the grant of an injunction against it. Since the defendant had knowingly used a mark deceptively similar to the plaintiff’s registered mark, the Court upheld the grant of injunction by the district Court.