The common principle of similarity between two marks is tested on the basis of their visual, structural, phonetic and conceptual parameters. In the recent case of Shrinath Travel Agency & Anr. vs Infinity Infoway Pvt Ltd & Ors, the Court relied on the phonetical similarity between the leading and predominant features of the logo marks. It was also seen whether the class of consumers under the marks of the Plaintiffs and the Defendants were capable enough to judge the difference between the marks or whether there was a likelihood of confusion.
of the Delhi High Court decided on the issue of whether the Plaintiffs had a prima facie case for seeking a permanent injunction against the Defendants for using the marks “Shrinath Tourist Agency”, “Shrinath Nandu Travels”, , , and. The factual matrix of this case was that the Plaintiffs held valid and subsisting trademark registrations of the mark in class 16 and the marks “SHRINATH”, andin class 39 (hereinafter collectively known as “Plaintiffs marks’ ”). The Plaintiffs submitted that they had adopted the word mark “SHRINATH” in the year 1978 and since then have been continuously using the same on a pan-India basis. The Plaintiffs also submitted that they were engaged in the business of tours and travels under the aforementioned marks for which they submitted their sales turnover from the year 2016-17 till 2022-23. It was noted that the sales for the single year 2021-22 itself was INR 51,81,18,002 (USD 61,00,000 approx.). The Plaintiffs were also awarded with various awards and accolades for their excellent services. Further, it was noted that the Plaintiffs were granted an interim injunction by this Hon’ble Court in Shrinath Travel Agency v. Maventech Labs Pvt. Ltd. for violation of the aforementioned prior-registered marks of the Plaintiffs by the Defendants in the case and for using infringing domain names, namely www.shreenathtourandtravels.com, www.shrinathtravels.net and www.shreenathtravels.com. The Plaintiffs alleged that Defendants 3 and 4 in the present case used their word mark “SHRINATH” and identical logo marks, which resulted in confusion amongst the general public. Further, it was alleged that even though Defendant 5 was using the infringing mark, the word “SHRINATH” was not a part of its logo, the defendant was, however, using the motif of the bus, with the underline below the mark and the words “Travel and Transport Agency” as well as the use of the colour combination of red and blue similar to that of the plaintiff, which was likely to confuse customer at least into believing an association between the Defendants and the Plaintiffs within the meaning of Section 29(2)(b) of the Trade Marks Act 1999. It was further emphasized that the people who used the buses of the Plaintiffs and the Defendants generally belonged to the semi-literate or illiterate class, who would not be able to notice the difference between the words SHRINATH and HUMSAFAR and would be taken in by the overall similar appearance by the two marks. Further, the plaintiff also sought an injunction restraining the Defendants from using the domain names www.ajayshreenathtravellers.com, www.shrinathnandutravels.com and www.humsafar.biz. The Defendants in the present case neither appeared before the Court nor did they file any response to this application seeking injunction. Thus, the Court observed that the Plaintiffs had put forth a prima facie case in their favour. The Court, by placing reliance on K.R. Chinna Krishna Chettiar v. Shri Ambal & Co., held that Defendants 3 and 4, by using the marks, , have infringed the plaintiff’s prior-used and prior-registered marks. This was because of the use of the words “SHRINATH” and/or “SHREENATH” by the Defendants, which was identical, especially phonetically, to the plaintiff’s registered marks. This was principally in respect to the mark “SHRINATH,” for which the Plaintiffs possessed a word mark registration, and because of which the aspect of the likelihood of confusion stood exacerbated. Further, it was also observed that since the Plaintiffs were continuously using their prior registered marks, the continued use of the impugned marks by the Defendants infringed and possibly diluted the plaintiff’s brand value. Thus, it was held that the balance of convenience and irreparable loss lied in the favour of the Plaintiffs for the grant of injunction. In this regard, the Court directed the Defendants to remove the use of the impugned marks from all their virtual and physical sites, including their social media. However, as far as the markof Defendant 5 was concerned, it was held that the predominant and the leading feature of the mark was the word “HUMSAFAR” and the same has no similarity with the word “SHRINATH”. Further, the Court also held that the mere fact that both the marks incorporated the figure of a bus and a line drawn below the name, with “Travel and Transport Agency” printed below the line in the case of Defendant 5 and “Travel Agency” printed below the line in the case of the Plaintiffs, could not make out a case of deceptive similarity as the same was not unique to either of them. In view of the above, it was held that the markof defendant 5 and the domain name www.humsafar.biz, did not infringe the plaintiff’s marks’. Thus, the Court awarded an injunction in favour of the Plaintiff against Defendants 3 and 4 and directed Defendants 6 and 7 to block the domain names www.shrinathnandutravels.com and www.ajayshreenathtravellers.com pending disposal of the present suit.
Authors: Manisha Singh and Garima Chopra
First Published By: Mondaq Here