OverallImpressiontobetakeninto AccounttoAscertainSimilarity betweenTrademarks
TheBombayHighCourtinarecentJudgment (Rahul UttamsuryavanshiversusSunilKasliwal, MANU/MH/1951/2016) reaffirmedtheimportanceof takingintoconsiderationtheoverallimageor impressionconveyedbyatrademarkinanissue concerningtheinquirywithregardtoinfringement ofatrademark.ThesamesuggestsLawFirms offeringRegistrationofTrademarkServicesinIndia andTrademarkLitigationServicesinIndiatobe cautiousofinitiatingfrivolouslitigationor registrationprocesses.
Facts • The case involves the use of the trademark “Mor Chhap” consisting of a pictorial representation of a peacock, which is a registered trademark of the plaintiff, the same is in relation to construction material by the plaintiff, the defendant on the other hand used the trademark “Super Mor Chhap” consisting of a pictorial representation of a peacock with a minor difference (tilt in the head of the peacock), the registration of which has been abandoned twice by the defendant. • The plaintiff initiated a suit for trademark infringement against the defendants. • A temporary injunction was granted in favour of the plaintiff on the grounds of it being deceptively and phonetically similar to the mark of the plaintiff. • The defendant filed an appeal resulting in the present suit in the High Court of Bombay.
Arguments by the Appellant/Defendant The arguments forwarded by the defendant/appellant were three folds. Firstly the defendant claimed that the trademark of the plaintiff was valid upto 24th April, 2015 and had already expired therefore the suit for trademark infringement was maintainable. Secondly, the terms “Mor” and “Chhap” were general terms and the same could not be granted for exclusive use to the plaintiffs. Thirdly, the defendant claimed for modification of the order of temporary injunction so as facilitate the sale of existing stock of “Super Mor Chhap” due financial loss amounting to unemployment of workers. Lastly, the defendant argued that the registration granted to the plaintiff was conditional in nature and that the plaintiff did not have the exclusive right to use the terms “Mor Chhap” as a trademark.
Arguments by the Respondent/Plaintiff On the other hand, the arguments forwarded by the plaintiff/respondent included specific counters to the arguments raised by the defendant. The Plaintiff argued that the suit for trademark infringement was very much maintainable as the trademark of the plaintiff expired on 24th April, 2025. Secondly, the colour combination and mark along with the graphical illustration of peacock used by the defendant was similar to that of the plaintiff and amounted to phonetic and visual similarity. Finally, the plaintiff argued that the consumers of the product bearing the trademark of the defendant were mostly uneducated daily wage labourers including masons and the same would render greater likelihood of confusion, therefore there was a necessity to grant an injunction.
Rationale of the Court The court upheld the grant of injunction on various grounds including, the balance of convenience was in favour of the plaintiff as the plaintiff had the appropriate Trademark Registration in India whereas the defendant had withdrawn from registration twice. The court went on to hold that the tilt in the head of the peacock was a minor difference and the same was immaterial to hold both the marks dissimilar to each other and further opined that two marks need not be held side by side to ascertain the similarity between the same but that the overall impression conveyed by the relevant trademarks was material. Secondly, the similarity in colour combination, mode of writing and pictorial representation (the only difference being the tilt in the head of the peacock) gave the overall impression of the trademarks to be materially similar to each other. The court further upheld the injunction granted by the District Court stating that the Defendant had used the mark intentionally.
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