Andhra Pradesh High Court: R. Raghunandan Rao, J., addressed a matter wherein the law relating to Trade Mark and Passing off was highlighted wherein the trademarks of the parties are similar or identical.
Permanent Injunction was sought by the respondent to restrain the appellant from infringing on the trademarks or passing off trademarks held by the respondent and further sought for damages, rendition of accounts under the Trademarks Act, 1999 and infringement of Copy Rights Act, 1957 against the appellant.
Plaintiff had been carrying on the business of manufacture of white lime wash and distributing and selling the same under the flagship brand name Surya and the device mark of “Rising Sun”.
Plaintiff had been using the mark “Surya” in collocation with various other words and in a combination with the device “Rising Sun with seven rays”.
Unique, uncommon and distinctive features of the trademarks “SURYA” and logo “SUN” are an inventive combination.
Plaintiff submitted that under the common law and as a result of extensive prior usage since 1985, vested rights in the Trademark “SUN” as a logo and “SURYA” as a word and to protect the same have already filed Trademark Applications and the same is pending.
Plantiff’s case was that the plaintiff’s mark came to obtain recognition among the general public relating to the standard and quality of the products of the plaintiff and is recognized all over the country.
Hence, plaintiff claimed that its mark “Surya” which is recognized all over the country would be treated as a well known mark defined under Section 2 (zg) of the Trademarks Act, 1999.
Plaintiff filed a criminal complaint against the defendant on knowing that he was indulging in illegal activity by selling its products by adopting the name “Surya Magica White”.
But the stated criminal complaint was not acted upon, which compelled the plaintiff to file a private complaint which again came to be pending, therefore plaintiff approached the Court.
Defendants’ use of the essential features of the plaintiff mark demonstrates that his instent was to utilise the goodwill of the plaintiff by deceiving the general public.
Analysis, Law and Decision
Bench reviewed the law relating to Trade Marks.
While reviewing the same, Court stated that the Act regulates the recognition of trade marks, their registration and protection.
Protection of Trade Marks is defined in Section 2(1)(zb):
“Trade Mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and
(i) in relation to ChapterXII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and
(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted use, to use the mark whether with or without any indications of the identity of that person, and includes a certification trade mark or collective mark.
The primary purpose of the a trade mark is to indicate the source of the goods/services that are sold in the market.
Whenever and wherever if there is an attempt to deceive buyers about the source of goods/services with usage of an identical or similar Trade Mark the law would assist the proprietor of the trade mark to protect his identity as the only supplier of the said goods/services.
Section 29. Infringement of registered trademarks:
Bench added to its analysis that there could be a case of infringement where there is similarity in the trade mark or where trademarks are identical, leading to confusion in the mind of the buyer that the goods being purchased by him under the offending trade mark are the goods being produced or sold by the proprietor of the original trade mark.
Test of the likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing of actions.
Question that generally needs to be answered by the Court in a Trade Mark case, filed as an action of passing off or an action for infringement:
Whether a buyer would get confused between the goods of the Defendant and the plaintiff because of the usage of the offending trademark by the defendant?
In regard to the instant case, Bench noted that an action for infringement and passing off, both have been sought.
For passing off action, plaintiff failed to produce any evidence of the quantum and length of sales, reputation or goodwill built, therefore no action for passing off can be looked into.
Action for infringement
For the said action, plaintiff has to demonstrate that his trademark is registered and the defendant’s trademark is similar enough to the plaintiff’s trademark which would in result create confusion in the minds of the buyers.
In the present case, the trademark of the plaintiff is registered, both the parties are selling goods which are falling in the same category.
In view of the above, the only question that remains is:
Whether they are creating confusion in the minds of the buyers?
Court stated that the plaintiff has claimed that he has a trade mark in the name “Surya”, which is a generic word which connotes “Sun”.
In the above-stated circumstances, plaintiff/respondent cannot contend that he has a trademark on the name “Surya”.
In the present case, however, the plaintiff submitted that the mark is “Surya” written in a specific style with a specific foreground and background.
Even though, there cannot be a trade mark in the name “Surya” there could always be a trade mark in a particular stylistic way of using the word “Surya”.
Since the trademarks exhibited by plaintiff had been the words “Surya Cem or Surya Agrilline” etc., the trademark would have to be construed as a collocation of both the words Surya and Cem or Surya Lime or mortar etc.
Perusal fo the above discussion would depict that the trade mark of the defendant would show that there are differences in the manner in which the word “Surya” is depicted.
Hence, it can’t be said that the trademarks of the plaintiff and the defendant are identical or totally similar.
Supreme Court’s decision in Ruston & Hornsby Ltd. v. Zamindara Engineering Company, (1969) 2 SCC 727, it was held that in any action for infringement where the defendant’s trade mark is not the exact mark on the register but something similar to it, the test of infringement is the same as in an action for passing off.
Bench added to its observations that in the instant case, there is a possibility of a buyer going to the shop and asking for Surya cem and get confused by the mark of the defendant and accept the product of the defendant as it would be sold as Surya Blue or Surya ujala.
In light of the Delhi High Court decision of Surya Agro Oils Ltd. v. Surya Coconut Oil Industries, 1994 SCC OnLine Del 266, it will be held that there is every likelihood that buyers would tend to get confused and plaintiff would be entitled to an injunction as granted by trial court.
In view of the above, CMA was dismissed. [Gaurav Polymers v. Delight Chemicals (P) Ltd., 2020 SCC OnLine AP 1484, decided on 20-11-2020]
Advocates for the Parties:
Advocate for the petitioner: Advocate, K V Raghu Veer
Advocate for the respondent: Advocate, Ashok Ram Kumar