The Delhi High Court ruled that the phonetic similarity in two trademarks test of a man of “average intelligence and of imperfect recollection‟ to be applied.
The application has been filed by the plaintiff under Order XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 praying for grant of an ad interim injunction restraining the defendants, their proprietors, partners, agents, assigns, representatives, heirs, servants, dealers, distributors, manufacturers, franchisees and/or anyone acting for and on their behalf from selling, marketing, offering for sale, advertising directly or indirectly the goods under the trademark or any other mark/name which is identical or deceptively similar to the plaintiff’s mark or for apparatus for lighting, heating, steam generating, cooling, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, etc. included in Class 11 or other similar goods in any manner whatsoever, so as to result in the infringement as also passing off the said registered trade mark and artistic work of the plaintiff.
Counsel for the plaintiff submitted that the plaintiff being the registered proprietor of the mark, the adoption of a deceptively similar mark by the defendants for the same and allied goods is liable to be restrained.
He contended that the plaintiff is also the prior adopter of the mark as the plaintiff, through its predecessor-in-interest, had adopted the same since 1998.
Counsel for the defendant submitted that the defendant, through its predecessor-in-interest- M/s Pan India Tiles, is the prior adopter and user of the mark, and has been using the mark since 1999.
He contended that a substantial amount has been spent by the defendants for the promotion and expansion of its trade mark, due to which it has generated tremendous goodwill and reputation in South India, especially in the State of Kerala.
The single judge bench of Justice Navin Chawla said that the submission of the counsel for the defendants that the plaintiff has not filed the Legal Use Certificates of its registrations, can also be of no assistance to the defendants at this stage.
The court found that the factum of registrations of the mark of the plaintiffs is not contested by the defendants. Merely because M/s Pan India Tiles has filed an application seeking rectification of such registration cannot come to the defence of the defendant.
It was observed by the court that the two trademarks in question are phonetically and visually similar. As held by the Supreme Court in Corn Products Refining Co.v. Shangrila Food Products Ltd., the test to be applied is of a man of average intelligence and of imperfect recollection. To such a man, the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them.
The court opined that the defendants cannot, at this stage, be restrained from use of the mark for the goods covered in Class 19, for which its marks stand duly registered. The balance of convenience and the test of irreparable damage would warrant any such injunction to be refused to the plaintiff at this stage for such goods.
It was held by the court that the defendants are liable to be restrained by way of an ad interim order from using the deceptively similar mark for the goods of the defendants falling under Class 11, that is, bath fittings and other sanitary ware.
The bench restrained the defendants, their proprietors, partners, agents, assigns, representatives, heirs, servants, dealers, distributors, manufacturers, franchisees and/or anyone acting for and on their behalf from selling goods under the trademark or any other mark/name, which is identical or deceptively/confusingly similar to the plaintiff’s registered trademark or for bath fittings or other sanitary ware or other similar goods in any manner whatsoever, so as to result in infringement of the said registered trademark of the plaintiff or its passing off, during the pendency of the suit.
Case title: Future Bath Products Private Limited v/s Corza International & Ors.
Citation: CS(COMM) 461/2020