The Delhi High Court has ruled that the registration of the Device Mark is to be considered as a whole and while determining the deceptive similarity with another Trade Mark, both the Marks have to be examined as a whole by applying ‘anti-dissection rule’ rather than breaking the Marks into their component parts for comparison.
To determine whether there is any deceptive similarity between the two Marks, it is imperative to decide if the similarity is likely to cause any confusion or deceive, added the Court, while holding that the Plaintiff has no exclusive right over the Marks ‘TIGER’ and ‘BRAND’ as the same are generic in nature and common to the trade.
Hence, the Court concludes that the use of the Impugned Mark does not amount to infringement of Copyright in or passing off of the Plaintiff’s Mark, as there is no deceptive similarity between the Plaintiff’s Mark and the Impugned Mark. Accordingly, no case is made out for grant of interim injunction.
A Single Judge Bench of Justice Tejas Karia observed that the words ‘TIGER’ and ‘BRAND’ are generic in nature, common to the trade, and incapable of being registered as a trademark on a standalone basis. Further, there is widespread use of the mark ‘TIGER’ for various goods and services across India, making it publici juris.
The Bench found that the Plaintiff had not produced any material to demonstrate that the mark ‘TIGER’ had acquired a secondary meaning to be uniquely associated with the Plaintiff’s goods. The Bench also observed that the Impugned Mark, when considered as a whole, is wholly dissimilar to the Plaintiff’s Mark, being visually different in its hexagonal frame, the depiction of the tiger device, and its colour scheme.
Even from the perspective of the relevant consumer segment, i.e., farmers, the marks are visually distinct and would not cause confusion, added the Bench, while noting that the Plaintiff failed to establish the necessary elements for a case of passing off, as there was no proof of misrepresentation by the Defendant or damages incurred by the Plaintiff.
Briefly, the Plaintiff, a proprietor of Mahaveer Udyog, is engaged in the business of manufacturing and trading agricultural goods. The Plaintiff claims to have adopted the mark ‘TIGER GOLD BRAND’ with a tiger device (Plaintiff’s Mark) in May 2010 and has been using it continuously since. The Plaintiff alleges that the Defendants have adopted and are using an identical or deceptively similar mark, ‘TIGER PREMIUM BRAND’ with a tiger device (Impugned Mark), for similar agricultural goods.
In the meantime, the Defendants filed a trademark application for the Impugned Mark on a “proposed-to-be-used” basis, which is currently under objection. Challenging the same, the Plaintiff sought an interim injunction to restrain the Defendants from using the Impugned Mark, alleging infringement, passing off, misrepresentation, and unfair competition. The Defendants opposed this and contended that the words ‘TIGER’ and ‘BRAND’ are generic, common to the trade, and publici juris, and therefore, the Plaintiff cannot claim a monopoly over them.
Appearances:
Advocates R.P. Yadav and Riju Mani Talukdar, for the Plaintiff
Advocates Dr. Amit George, Manish Gandhi, Vaibhav Gandhi, Muskan Gandhi, Dushyant Kishan Kaul, Rupam Jha, Rohini Sharma, and Chanchal Sharma, for the Defendant
