3 judgments of the Supreme Court of India and the Madras High Court applying Trade Marks Act s.17(1), from 2023–2025, each with a headnote by BRB Legal.
Appeal dismissed and the refusal of an interim injunction upheld. The Supreme Court compared BLENDERS PRIDE and IMPERIAL BLUE with LONDON PRIDE and found no visual, phonetic or structural resemblance capable of supporting infringement or passing off, resemblance being a sine qua non for both. The judgment works through the anti-dissection rule, the dominant feature test, the principle that no exclusive right attaches to common or descriptive terms, and the average consumer with imperfect recollection, and discusses the post-sale confusion doctrine as it has developed in the United Kingdom. Although the appellants held registrations for the composite marks, no evidence showed that any element, such as bottle shape, colour scheme or the word PRIDE, had acquired distinctiveness or secondary meaning. An earlier unsuccessful challenge to the use of PRIDE, where it was held that they had no independent registration for the word alone, also told against them.
Refusal under sections 9 and 11 set aside on both citations. As to the first cited mark, its proprietor had consented to registration after the impugned order; the Court held that the consent of the proprietor of a cited mark is not by itself sufficient to preclude an objection by the Registrar, but taken together with the difference in goods, carbon black materials against chemicals used in purification through displacement chromatography, the objection no longer stood. As to the second, a composite label mark of at least three elements, section 17(1) makes clear that registration of a composite mark protects the mark as a whole, and section 17(2), opening with a non obstante clause, that protection does not extend to the individual elements unless the proprietor separately applies for and obtains registration of them. It was not the Registrar's case that the proprietor held any such separate registration for the element relied on, so that objection failed too.
The Registry objected to a three-word mark by combining one word taken from each of three different cited marks, a fusion unknown to trade mark law. The order itself said only that the mark was objectionable under sections 9 and 11, which is completely devoid of reasons, and the applicant had claimed and evidenced use from 2006.
