Treating ‘HARPIC DRAIN XPERT’ similar to ‘XPERT’ would be stretching the principle of similarity to an unreasonable extent: Delhi High Court upholds registration

Delhi High Court: In a case wherein, RSPL Health Pvt. Ltd., (the petitioner), filed the petitions under Section 57 of the Trade Marks Act, 1999 (‘the Act’), to seek rectification of Register of Trade Marks by removal of word mark ‘HARPIC DRAIN XPERT’, C. Hari Shankar, J.*, opined that there was absolutely no chance of any customer getting confused between ‘HARPIC DRAIN XPERT’ and ‘XPERT’, and accordingly dismissed the petition.

Background

In the instant case, the impugned mark ‘HARPIC DRAIN XPERT’ was registered in favour of Reckitt and Colman (Overseas) Hygiene Home Ltd. (Respondent 1), whereas the mark ‘XPERT’ was registered in favour of the petitioner.

The petitioner contended that the impugned mark ‘HARPIC DRAIN XPERT’ was similar to earlier trade marks of the petitioner. Further, the same impugned mark was used with respect to goods or services which were similar to the goods or services of which earlier trade marks of the petitioner were registered, and thus, it had resulted in the likelihood of confusion.

Therefore, the petitioner submitted that the impugned trade marks could not have been registered under Section 11(1) of the Act and were wrongly remaining on the Trade Marks Register under Section 57(2) of the Act.

Analysis, Law, and Decision

The Court noted that as per Section 11(1)(b) of the Act, for a trade mark to be ineligible for registration, following three conditions needs to be satisfied:

1. that the trade mark should be similar to an earlier trade mark,

2. that the goods or services covered by both the trade marks should be identical or similar and;

3. that, as a consequence of (i) and (ii), there must exist either a likelihood of confusion on the part of the public or of the public drawing an association between the latter mark and the earlier mark.

The Court stated that since the petitioner’s trade marks were registered before Respondent 1’s applications, therefore the petitioner’s marks were the earlier trade marks as per the Explanation of Section 11(4) of the Act.

The Court analysed the numerous goods covered by the petitioner’s marks and presumed that the goods covered by the petitioner and Respondent 1, under the products used for disinfecting, cleaning, etc, or rendition of services related to it, were similar under Section 11(1)(b) of the Act.

The Court further opined that, apart from the similar goods and services, it should also be showed that the marks were confusingly similar to each other, and because such similarity and good or services which they covered, there was a likelihood of confusion among the public, or a likelihood of the public believing the existence of an association between the marks. Accordingly, the Court opined that these conditions were not satisfied in the present case.

The Court opined that even though, if ‘HARPIC DRAINXPERT’ and ‘XPERT’ were considered similar, still the principle of similarity was stretched to an unreasonable extent and the principle was not so elastic that it could be stretched to a breaking point.

The Court noted that in the impugned mark ‘HARPIC DRAIN XPERT’, ‘XPERT’ was only the second word and if a person ignored the word ‘HARPIC’ and bifurcated the impugned mark into ‘DRAIN’ and ‘XPERT’, then after ignoring the word ‘DRAIN’, the petitioner’s and Respondent 1’s mark would become alike.

The Court opined that under the Act, the marks were similar, only if it was confusing, to the public, which as per Section 11(1) of the Act was the mythical customer of an average intelligence and imperfect recollection. Further, the Court opined that, the one word was ‘XPERT’ and the other was ‘HARPIC DRAIN XPERT’, and since Respondent 1’s mark started with word ‘HARPIC’, therefore, on coming across Respondent 1’s mark and the petitioner’s mark, a customer would have no reason to be confused between the two.

The Court further opined that the Court could not presume that the mythical public would be confused between the two marks and to state that a customer would be confused, because of ‘XPERT’ formed the second part of the second word of the impugned mark, would be consigning reality to oblivion.

The Court opined that in Respondent 1’s mark , the attention was immediately drawn to the ‘HARPIC’ swirl towards the upper half of the pack, rather than to the word ‘DRAIN XPERT’ on the lower half, much less to the ‘XPERT’ part. Thus, the most prominent part of Respondent 1’s mark was unquestionably ‘HARPIC’, which was also the mark in respect of which several of Respondent 1’s marks were registered.

The Court noted that Respondent 1 had not claimed exclusivity over the ‘XPERT’ mark of the impugned mark and stated that where the part of a mark was not separately registered as trade mark, Section 17 of the Act prohibited the exclusivity claimed in respect of that part of the registered trade mark.

Accordingly, the Court dismissed the petition.

[RSPL Health Pvt. Ltd. v. Reckitt and Colman (Overseas) Hygiene Home Ltd., 2023 SCC OnLine Del 5154, decided on 22-08-2023]

Advocates who appeared in this case:

For the Petitioner: Rishi Bansal, Mankaran Singh, Sugandha Yadav and Rishabh Gupta, Advocates;

For the Respondents: Chander Mohan Lall, Senior Advocate with Nancy Roy, Prakriti Varshney, Aastha Kakkar, Prashant, Yashi Agrawal, Nida Khanam and Ananya Chug, Advocates; Ripu Daman Bhardwaj, CGSC and Kushagra Kumar, GP for UOI; Shoumendu Mukherji, SPC with Megha Sharma.

*Judgment authored by- Justice C. Hari Shankar

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