Trade Marks Act, 1999 – Logo – The rival logos being completely different, and/or distinct, and/or even otherwise such as are not likely to cause confusion, the Plaintiff’s case in respect of infringement of trade mark and/or copyright as also passing-off fails.
ORDINARY ORIGINAL CIVIL JURISDICTION
CORAM: S. J. KATHAWALLA, J .
Date: 30th June, 2016
NOTICE OF MOTION NO. 573 OF 2015 IN SUIT NO. 309 OF 2015
Reliance Industries Ltd. … Plaintiff
Concord Enviro Systems Pvt. Ltd.ig …Defendant
Dr. V.V. Tulzapurkar, Senior Advocate, along with Mr. Ashish Kamat, instructed by M/s. A.S. Dayal & Associates, for the Plaintiff. Mr. Rashmin Khandekar, along with Ms. Nidhi Tandon and Ms. Soniya Putta, instructed by M/s. Solomon & Co., for the Defendant.
1. The Plaintiff claims injunctive reliefs on the basis of infringement of the Plaintiff’s registered trade marks, infringement of copyright and passing off, on the ground that the logo of the Defendant, (hereinafter referred to as “the impugned logo of the Defendant” – Exhibit-E page 52 of the Plaint) is deceptively similar to the Plaintiff’s registered trade marks consisting of a distinctive logo (hereinafter referred to as “the Plaintiff’s logo” — Exhibit-A pages 42/43 of the Plaint).
2. On behalf of the Plaintiff, the following submissions are made:
2.1 That the Plaintiff’s claim for infringement is based on the registration of the Plaintiff’s trade marks described in Exhibit-B to the Plaint at page 44. The Plaintiff’s logo is an essential feature of each of the said trade marks.
2.2 That the Defendant is using and/or is intending to use its impugned logo in respect of goods falling in Classes 7, 9 and 11 and services falling in Class 40.
The Plaintiff has registration under those classes.
2.3 That the impugned logo of the Defendant is deceptively similar to the Plaintiff’s logo mark. The Plaintiff ‘s logo is a well-known trade mark within the meaning of the
Trade Marks Act, 1999
Therefore the Plaintiff is entitled to the reliefs of infringement not only in respect of goods falling in Classes in which the Plaintiff’s logo is registered, but also in respect of goods falling in other classes in respect of which the Defendant is using and/or is intending to use its impugned logo and which classes are mentioned in the Defendant’s Affidavit-in- Reply dated 5th May,2015 (Exhibit-C page 25 of the Notice of Motion).
2.4 That for considering the question of infringement, it is necessary to consider whether the impugned logo of the Defendant is deceptively similar to the Plaintiff’s logo.
2.5 That the impugned logo of the Defendant is deceptively similar to the Plaintiff’s logo, both visually and structurally.
2.6 That for the purpose of comparison of the two marks, the factors laid down by the Hon’ble Supreme Court of India in the case of
Cadila Healthcare Ltd. vs. Cadila Pharmaceuticals Ltd., 2001 PTC 300
ig such as nature of marks; degree of resemblance between the marks; similarity in the goods of rival traders; the nature of goods; the class of purchasers; the mode of purchase; and any other surrounding circumstances, relevant to the extent of dissimilarity between the competing marks, are required to be considered.
2.7 That while considering the aforesaid factors, the principles of comparison as laid down by the Courts in respect of label marks are required to be applied.
2.8 That it is a well settled principle that the test of comparisons of the marks side-by-side is not a sound one, because a purchaser will seldom have the two marks actually before him, when he makes his purchase; and the marks with many differences may yet have an element of similarity which will cause deception
National Chemicals vs. Reckitt & Colman, AIR 1991 Bom. 76 at 81
2.9 That side-by-side comparison is required to be avoided because the question is whether the person who sees the impugned mark, in the absence of the Plaintiff’s mark, and in view only of the general recollection that such person has of what the nature of the Plaintiff’s mark was, would be liable to be deceived, and to think that the trade mark before him is the same as that of the Plaintiff of which he has a general recollection.
Sandow’s Application, (1914) 31 RPC 196 at 205
2.10 That the resemblance need not be such as would deceive persons who should see two marks placed side-by-side. If the rule is so restricted, it would be of no practical use.
Seixo vs. Provezelde, (1866) 1 Chancery Appeal 192 at 196
2.11 That the reason for applying this test is that the marks are remembered rather by general impressions or by some significant detail, than by any photographic recollection of the whole.
De Cordoa vs. Vick Chemical, (1951) 68 RPC 103 at 106
2.12 That if the impugned mark contains a feature which is a striking feature, which feature or similar one is present in the Plaintiff’s mark, a case for infringement is made out —
Taw vs. Notek, (1951) 68 RPC 271
Reliance Industries Ltd. vs. Anand Traders, 1999 PTC 414
2.13 That the principles of comparison were summarised by the Hon’ble Supreme Court in the case of
Parle Products vs. J.P. & Co., AIR 1972 SC 1359 at 1362
wherein it is held that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two marks are to be considered and they should not be placed side-by-side to find out if there are any differences in the design, and if so, whether they are of such a character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one, to accept the other, if offered to him.
2.14 That in order to decide the question of deceptive similarity, the Court is required to consider the features which are common and not to concentrate on the distinguishing features. The observations of the Hon’ble Supreme Court in