5 judgments of the Delhi High Court and the Supreme Court of India applying Trade Marks Act s.28(1), from 2023–2026, each with a headnote by BRB Legal.
Appeal allowed and an injunction granted against use of a mark sharing the appellant's dominant textual element. Following the Supreme Court in the AMBAL and ANDAL case, the Division Bench held that where the main feature of rival composite marks is phonetically similar and likely to confuse the average consumer, visual dissimilarity between the whole logos does not mitigate infringement. It added that a word mark registration entitles the proprietor to injunct not only a deceptively similar word mark but also any device mark whose prominent feature is textual, where that text infringes. Once a prima facie case of infringement is made out, an injunction must follow under Midas Hygiene.
Appeal allowed and an injunction set aside for want of any finding on goodwill. The Division Bench held that in passing off the plaintiff must establish sufficient goodwill and reputation in the asserted mark before the defendant's user commenced, a position crystallised by the Supreme Court in Toyota and Pernod Ricard, and that the Commercial Court had made no examination of goodwill at all. It declined to remand for a finding, holding that no case was made out even on misrepresentation or deceptive similarity.
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.
Final orders deferred and four questions referred to a Larger Bench on an issue that affects a large number of cases: whether a suit for infringement lies at all against the proprietor of a registered trade mark in respect of the use of that mark; if it does, whether an interlocutory injunction can be granted against such use; whether such an injunction can issue without first proceeding through the sequence contemplated by section 124, namely a section 30(2)(e) defence, a plea of invalidity in response, the Court being satisfied that the plea is tenable, an issue being framed, the suit adjourned for three months, rectification initiated within that period and trial stayed pending its outcome; or whether a bare plea of invalidity in the plaint suffices. The Bench recorded a conflict between Raj Kumar Prasad, followed in Corza, and another view.
Interim injunction granted against CHAKRA KOHLU but refused against CHAKRIKA and CHAKRESH. CHAKRA KOHLU reproduces the whole of the registered mark CHAKRA and merely adds a word, and the defendant's own rectification petition had averred that the marks were textually, phonetically and visually similar and bound to cause confusion. That admission could not be escaped by calling it a cut and paste error or by switching to the alternative plea that CHAKRA was descriptive. CHAKRIKA and CHAKRESH are single compound words which cannot be vivisected to isolate CHAKR, and registration of CHAKRA gives no monopoly over Hindi words beginning with that syllable. The Court added that mere registration of a mark is not infringement under section 29: absent evidence of use of CHAKRIKA, no interlocutory injunction could issue in respect of it.
