Misrepresenting products as if it belongs to some other, more established, brand constitutes the act of passing off. Also, this act must create a reasonable doubt or confusion in the mind of the consumers in order to bring legal action. Protecting a brand owner’s goodwill and reputation is the primary objective of the law of passing off.
The Delhi High Court, in the case of Audioplus vs Manoj Nagar, deliberated on the question of whether a passing-off action can be brought against the proprietor of a registered mark.
Plaintiff’s registered marks | Source
Defendant’s marks | Source
The plaintiff company, Audioplus, was a manufacturer and seller of audio and sound recording equipment. Its sister concern, M/s Prosound Products, was the owner of the device mark ‘Studiomaster’ and the rights in the registered mark were assigned to the plaintiff through an assignment deed drawn in 2008. The plaintiff had applied for registration of the device mark in India in 1999, which was granted. It had also acquired trademark registrations for the mark ‘Studiomaster’ and other formative marks.
The defendant’s device mark ‘Studioman’ was registered in 2020 on the basis of proposed to use. The application for registration of its other mark ‘Studiomin’ was not approved. They argued that the plaintiff had abandoned an earlier attempt to get the word mark ‘Studiomaster’ registered.
The plaintiff brought an action for infringement as well as for passing off the plaintiff’s trademark ‘Studiomaster’ and other related marks and sought an injunction to prevent the defendant from using the mark ‘Studioman’ and adopting other marks which were deceptively similar to their brand. After becoming aware of the impugned device mark in 2020, a notice of opposition was lodged in April with the trademark registry but it remains pending.
It is important to note that an order for ex-parte interim injunction was passed which prevented the defendant from using the impugned device marks or any other marks which were deceptively similar to those of the plaintiff. As against the ex-parte interim injunction, the defendant filed an application where it argued that it indeed was the registered proprietor of the mark and that the plaintiff’s device marks were descriptive and invalid in the eyes of law.
The plaintiff attached several invoices as evidence, which spanned between 2003 – 2012, to prove the usage of the mark ‘Studiomaster’. In contrast, the defendant did not submit any evidence which could demonstrate any commercial use of the impugned mark. As evidence, the defendant had submitted some documents pertaining to tax invoicing registration, registration certificates, dealership certificates displaying the name of the dealer as ‘Studio Man’. Yet, none of these alluded to the commercial use of the impugned mark.
The court decided the case in the favour of the plaintiff and injuncted the defendant from using the impugned marks ‘Studioman’ and ‘Studiomin’ with the leeway to use the trade name/trademark ‘Studio Man’, albeit without any stylization. The court opined that the plaintiff was in the business much longer than the defendant and was making commercial use of its device marks since 2003. Other than the invoices which had been submitted, some press releases and advertisements had also been submitted which spanned between the years 1998 to 2018.
The defendant’s claim of using the impugned mark since 2016 was rebutted as the registration certificates submitted in evidence only claimed that it was using the trade name ‘Studio Man’. There was no material on record to establish that it was making commercial use of the impugned device marks ‘Studioman’ and ‘Studiomin’. Further, the invoices which had been submitted mentioned the trade name ‘Studioman Electronics’ and not solely ‘Studioman’. Therefore, the defendant could not claim exclusive right over the impugned marks.
The court further opined that the similar sounding marks can confuse consumers, given the fact that the stylized version of the impugned marks was deceptively similar to the plaintiff’s marks. The plaintiff was making commercial use of its mark for a longer period as compared to the defendant. The courts are ordinarily slow in granting relief when an injunction is sought against a registered mark. This cannot be an impediment where the court is prima facie satisfied that the plaintiff is the prior user of a mark which the defendant copied and the impugned mark has the potential of deceiving the consumers which may have imperfect recollection with respect to the origin of the goods.
This decision to grant an injunction against the usage of a registered mark by a proprietor importance of pinpointing and eliminating look-alikes from the market and that there are legal avenues which are instrumental in stopping such acts of infringement in India. Marks which look alike, and sound alike are at a greater risk of being passed off, especially when both the infringer deals in the same products. This is where the courts assess imperfect recollection of a consumer and make a well-informed decision which protects the consumer’s and the brand owner’s rights.