Trademark disputes are often about whether the goods or services the marks relate to are sufficiently similar to create a real likelihood of consumer confusion. This occurs when users apply for protection of the same or similar mark in the same class, but for different goods. Although trademark registration does not automatically grant a monopoly over the entire class of goods or services, a technical comparison of product descriptions may not suffice. The test is whether an average consumer is led to believe the goods are alike, sold through the same trade channels, cater to the same customers or are otherwise connected in a way that may cause confusion.
Identical JBR marks spark opposition
In the recent high court appeal case of Karan Rathore v Registrar of Trade Marks and Anr, the appellant challenged the dismissal by the Trade Marks Registry of its opposition to the registration of the identical mark “JBR” in class 12. The parties claimed the mark for different automobile-related goods. The appellant’s registered mark applied to “motor parts”. The appellant’s mark had been used continuously since 2000 through its previous proprietor and its rights transferred to the appellant in 2023. The appellant claimed reputation and goodwill in the trade and contended that the mark had become exclusively associated with its business.
The second respondent applied in 2023 for the registration of “JBR” in class 12 for car, bike and vehicle covers, claiming its use since 2020. The application was accepted and advertised in the Trade Marks Journal, after which the appellant filed its opposition. Because the competing marks were identical, the opposition asserted that confusion was inevitable if the respondent was allowed to register the same mark for closely related automobile goods.
Court rejects rigid goods similarity test
In 2024, the registrar dismissed the appellant’s opposition because their registration was for motor parts, whereas the second respondent had applied for registration in respect of vehicle covers. The registrar held that the goods were different and the appellant could not claim a monopoly of the entire class merely because it held a registration in it. The appellant challenged this decision, claiming that the registry had treated the goods as dissimilar based solely on a label, without applying established judicial tests of the similarity of the goods and the likelihood of confusion. The appellant argued the similarity of goods cannot be decided merely by holding that they are different.
Motor parts and vehicle covers may not be identical, but both are automobile-related goods within the same commercial sector and are sold to the same consumer base through overlapping channels. The second respondent defended the reasoning, asserting that the appellant’s registration was limited and could not be expanded to claim exclusivity across other goods in the same class.
The court held that there was no dispute about the marks being structurally, phonetically and conceptually identical. The correct approach to determining similarity of goods is not to be rigid or overly technical, but to assess it from a business and commercial perspective. The court relied on FDC Limited v Tas Med India Private Limited and Anr and other authorities to hold that relevant factors include the nature and composition of goods, their intended uses, the trade channels through which they are sold, their consumer base and whether they are competitive or complementary in practice. Classification under the Nice system is not determinative and goods may be similar even if they fall into different classes. Goods within the same class may be dissimilar depending on the trade.
Identical marks demand reasoned analysis
The court held that the registry could not simply state that the goods were different without giving a reasoned analysis based on settled tests. Although the principle that registration does not grant a monopoly of the entire class may be correct, it cannot by itself dispose of an opposition when identical marks are involved. Even if goods are not the same, the registry must still examine whether they are similar or connected in a way that leads consumers to assume an association between two traders.
The decision confirms that with identical trademarks the registry has a greater duty to evaluate the likelihood of consumer confusion. This is because the potential for consumer deception is also significantly greater.
Author: Manisha Singh and Shivi Gupta
First Published by: IBLJ here