Law of Infringement of IPR
The Delhi High Court in its recent decision while adjudicating upon the issue alleging infringement discussed what in such type of cases are to be proved or in other words the position of law to be followed on the subject.
The aggrieved party alleging infringement must make out that the use of the mark by the other party is likely to deceive and also the similarity between the two marks is so close either visually, phonetically or otherwise and the Court concludes that there is an imitation, no further evidence is required to establish that the rights of aggrieved party are violated.
Where essential features of the Trade Mark of the aggrieved party has been adopted by the other party, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial. When the question whether the mark causes or is likely to cause deception or confusion arises before a Court, the standard applied is not that of a vigilant consumer or a trader, but that of an unwary normal customer of the said product. The Court has to consider and examine whether a consumer of the product is likely to be deceived or confused after examining broad and dominant features of the two marks and whether there is overall similarity that is likely to mislead a purchaser. Both the marks have to be considered as a whole.
Question of deception and confusion has to be examined and dealt with from commercial point of view. The law gives protection to the proprietor of the trade mark if there is likelihood of deception or confusion. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one, to accept the other if offered to him. The Court after making reference to various precedents came up with following legal principles:
i. Action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark.
ii. Registration of trade mark gives the proprietor the exclusive right to the use of the trade mark in connection with the goods in respect of which it is registered.
iii. If the essential features of the trade mark of the Plaintiff have been adopted by the Defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets shows marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial.
iv. Mere delay in filing of a suit for infringement is not fatal.
v. Phonetic similarity constitutes an important index of whether a mark bears a deceptive or misleading similarity to another.
vi. The Court must consider the usage of words in India, the manner in which a word would be written in Indian languages and the similarity of pronunciation if the rival marks are used.
vii. Resemblance between the two marks must be considered with reference to the ear as well as the eye.
viii. The rival marks have to be compared as a whole. The two competing marks must be judged both by their look and by their sound. All the surrounding circumstances must be considered.
ix. Where the similarity between the Plaintiff’s and the Defendant’s mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the Plaintiff’s rights are violated.
x. Competing marks have to be compared keeping in mind an unwary purchaser of average intelligence and imperfect recollection.
xi. Broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any marked differences in the design and get up.
xii. A single actual use with intent to continue such use eo instanti confers a right to such mark as a trade mark.
xiii. The applicant has to establish user of the aforesaid mark prior in point of time than the impugned user by the non-applicant.
xiv. A suit for infringement is maintainable by a registered proprietor against another registered proprietor.
xv. While staying the further proceedings pending decision of the registrar on rectification, an interim order including of injunction restraining the use of the registered trademark by the Defendant can be made by the court.
xvi. A trademark shall not be registered if it is identical or similar to an earlier trademark in respect of goods or services covered by the trade mark and is likely to cause confusion amongst the public.
xvii. Registration of an identical or a similar trade mark shall also be refused for goods and services not covered by the earlier trade mark if it is shown that the earlier trade mark is a well known trademark.
xviii. The mere fact that the Plaintiff has not chosen to take any action against other parties cannot disentitle the Plaintiff from taking the present action.
[The Indian Hotels Company Ltd. vs. Ashwajeet Garg and Ors.]
(Delhi HC, 01.05.2014)