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Visual dissimilarity no defense when essential features are copied
In a recent case of Kirorimal Kashiram Marketing and Agencies Pvt. Ltd. v. Shree Sita Chawal Udyog Mill FAO (OS) No. 286/2008 the Delhi High Court reaffirmed the fact that the essential or fundamental feature of a mark cannot be copied. The dispute was with regard to label marks “Golden Deer” and “Double Deer”, wherein Golden Deer was the registered trademark of Kirorimal Kashiram the appellants/plaintiff in the instant suit.
The Single judge dismissed the application of the Plaintiff seeking interim injunction on the grounds that the marks were not confusing. The order of the Single Judge went on to describe the mark and elaborated that the mark used by the Plaintiff consists of a figure of two deers facing each other with a flag in between, the figure and flag are in a white colour semi circle and the base of the packing is yellow and prominent colour of the trademark is red with cooked/uncooked rice as shown on the pack. While that allegedly infringing mark of the Defendant was with single deer enclosed in a standing oval shape ring. There was a peripheral rim in the ring, which was having holes at regular intervals. On either side of the ring were spikelets. The deer was also pointed out to be of different artistic design.
Hence it was found that the plaintiff has failed to prove infringement, as there was no similarity between the labels of the plaintiff and defendant.
In an appeal against the order of the Single Judge, the Division Bench noted that both the parties were using the alleged mark with respect to “rice” as such there was likelihood of deception and confusion. The fact that the products will be purchased even by illiterate persons there was every possibility of confusion in their minds and niceties of the mark that two deers or one deer is displayed on the mark will not be of much difference.
Thus deferring from the order of the Single Judge, it was pointed out that, in the present case the figure of deer was a prominent part of the trademark “Golden Deer”. Copying of a prominent part of the trademark leads to deceptive similarity especially when the product of both parties is the same.
The authenticity of using the expression “Deer” was also questioned since it is uncommon to relate a “deer” to the product rice. Such arbitrary adoption of “Deer” by the defendant was considered mala fide since they had not indicated how they came across the word/device associated with rice. It was stressed that if any word forming part of a mark has come in trade to be used to identify the goods of the owner of the mark, then use of the said word may amount to infringement of that mark itself.
Reliance was placed on the case of James Chadwick and Bros. Ltd v. The National Sewing Thread Co. Ltd, AIR 1951 Bom 147, wherein it was held that in an action for infringement what is important is to find out what was the distinguishing or essential feature of the trade mark already registered and what is the main feature or the main idea underlying the trade mark.
In the present case, the use was in respect of the same commodity rice. Therefore there was every possibility of confusion being created in the mind of the purchaser of rice that the product sold by defendant was in fact the plaintiff’s product.
Here the court was also of the firm opinion that, the balance of convenience tilted in favour of the Plaintiff due to two factors firstly they being prior user of the trademark, and secondly because it was felt that adoption of the mark was not honest. It was noted that if injunction was not granted serious, grave and irreparable injury with respect to its ownership and goodwill in the trademark would follow.
The Single judge dismissed the application of the Plaintiff seeking interim injunction on the grounds that the marks were not confusing. The order of the Single Judge went on to describe the mark and elaborated that the mark used by the Plaintiff consists of a figure of two deers facing each other with a flag in between, the figure and flag are in a white colour semi circle and the base of the packing is yellow and prominent colour of the trademark is red with cooked/uncooked rice as shown on the pack. While that allegedly infringing mark of the Defendant was with single deer enclosed in a standing oval shape ring. There was a peripheral rim in the ring, which was having holes at regular intervals. On either side of the ring were spikelets. The deer was also pointed out to be of different artistic design.
Hence it was found that the plaintiff has failed to prove infringement, as there was no similarity between the labels of the plaintiff and defendant.
In an appeal against the order of the Single Judge, the Division Bench noted that both the parties were using the alleged mark with respect to “rice” as such there was likelihood of deception and confusion. The fact that the products will be purchased even by illiterate persons there was every possibility of confusion in their minds and niceties of the mark that two deers or one deer is displayed on the mark will not be of much difference.
Thus deferring from the order of the Single Judge, it was pointed out that, in the present case the figure of deer was a prominent part of the trademark “Golden Deer”. Copying of a prominent part of the trademark leads to deceptive similarity especially when the product of both parties is the same.
The authenticity of using the expression “Deer” was also questioned since it is uncommon to relate a “deer” to the product rice. Such arbitrary adoption of “Deer” by the defendant was considered mala fide since they had not indicated how they came across the word/device associated with rice. It was stressed that if any word forming part of a mark has come in trade to be used to identify the goods of the owner of the mark, then use of the said word may amount to infringement of that mark itself.
Reliance was placed on the case of James Chadwick and Bros. Ltd v. The National Sewing Thread Co. Ltd, AIR 1951 Bom 147, wherein it was held that in an action for infringement what is important is to find out what was the distinguishing or essential feature of the trade mark already registered and what is the main feature or the main idea underlying the trade mark.
In the present case, the use was in respect of the same commodity rice. Therefore there was every possibility of confusion being created in the mind of the purchaser of rice that the product sold by defendant was in fact the plaintiff’s product.
Here the court was also of the firm opinion that, the balance of convenience tilted in favour of the Plaintiff due to two factors firstly they being prior user of the trademark, and secondly because it was felt that adoption of the mark was not honest. It was noted that if injunction was not granted serious, grave and irreparable injury with respect to its ownership and goodwill in the trademark would follow.
