Similarity of marks is an issue that trademark law in India has consistently dealt with over time, thus evolving crucial principles. In a battle between music giant T Series and automobile industry leader TELCO, Delhi High Court in its order dated May 15 2010,  granted registration in respect of the mark  “T-SERIES” to Super Cassettes Industries Ltd and overturned the decision of the Intellectual Property Appellate Board (IPAB) denying the same. The fundamental issue before the Delhi High Court was whether there was a similarity between the competing marks of Super Cassettes and TELCO Tata motors Ltd (TELCO).  The original opposition was filed by TELCO’s in June 1991. TELCO in its opposition claimed elementary proprietorship of the letter “T” and asserted that if Super Cassettes was sanctioned registration there will be a likelihood of deception and confusion as the letter “T” in a circle was the house mark of TELCO. Super Cassettes, in its counter, asserted that it has been using the trademark “T-SERIES” extensively and continuously since 1979 in respect of audiocassettes and subsequently for a variety of electronic goods. It stated that the mark has acquired an immense reputation and the members of the public associate the mark “T-SERIES” solely with Super Cassettes.

 

The Deputy Registrar of Trademark rejected the opposition and directed Super Cassettes’ application for registration to be accepted.  TELCO appealed this decision before the IPAB. Although it affirmed the grant of registration in respect of the mark “T-SERIES,” the IPAB qualified the order of the Deputy Registrar by directing Super Cassettes to remove the circle around the letter “T”.  Super Cassettes’ then made an appeal from the order of the IPAB in the Delhi High Court.

 

On a close comparison of marks, the Court opined that both the marks were structurally, stylistically and substantially different. The Court concluded that, “there is no similarity in the two marks much less a deceptive similarity which is likely to cause confusion.” The Court however laid stress on Section 2(1) (h) of the Trademark Act 1999 which says

“a mark shall be deemed to be “deceptively similar” to another  mark if it so nearly resembles that other mark as to be likely  to deceive  or cause confusion”

 

The Court observed that Super Cassettes and TELCO were using the marks for different kinds of goods and hence concluded that the average consumer is unlikely to be either confused or deceived into mistakenly associating the mark “T-SERIES” with TELCO (Tata Motors Ltd.) or its products, which are primarily trucks and automobiles.

The Court further interpreted   Section 17 of the Trademark Act 1999, which provides that the registration of a composite mark confers on its proprietor the exclusive right to use it only as a whole. Consequently, the registration granted to TELCO for its composite mark  but did not give  them any right to  exclusive use over the letter “T” or over the letter “T” within a circle.  The Court stated that   “T” , per se, is not distinctive of any goods, no monopoly on the same could be claimed.. The Court remarked that the trademark registration granted to TELCO was not for the letter “T” simpliciter, but in fact for the letter in combination with “TATA ENGINEERING” and the device of 2 twigs.