Legal Discernment On The Co-Existence Of Similar Trademarks

INTRODUCTION

The origins of trade mark law can be traced back to the industrial revolution in the 18th century which is when the world experienced an explosion in the use of trade marks with the heightened production of goods and the acceleration of international trade. To individualize a product for the consumers, manufacturers began identifying their products with specific emblems, logos, or devices. This resulted in the trade mark garnering consumer goodwill and repute. To profit on the reputation of another brand, competitors began copying marks or acquiring deceptively similar trade marks with a desire to obtain the goodwill of well-known marks. This led to consumer deception. It is, therefore, to preserve the reputation of a trade mark and other intellectual property, all nations felt the necessity for trade mark protection law, which led to the enactment of the Trade Mark Act, of 1999.

[Image Sources : Shutterstock]

Trade Mark Act, 1999 (hereinafter referred to as “Act”) defines the term Trademark as “a mark which is capable of distinguishing a product or service of one person from those of others”.^[1] This empowers an enterprise to market its product effectively and allows consumers to differentiate between products of identical natures or classes. The proprietor of a trade mark can protect their trade mark by registering with the trade mark registry. Every trademark that is protected under this Act is protected for a specific period but several factors contribute to the limitation of trade mark protection under the Act. The article will highlight the same with the case law.

FACTUAL BACKGROUND

• M/s N. Ranga Rao (hereinafter referred to as the plaintiff), who is the plaintiff, was a manufacturing company that has been supplying incense (agarbathi) sticks and dhoops since 1948. It was claimed to be a pioneer in the field.
• The ‘Cycle’ trademark has been domestically and internationally used by the plaintiff since 1954 without anyone’s interruption. The ‘Cycle’ brand is registered under various classes which include food products and incense sticks, dhoop, hair oil, etc.
• The mark of the plaintiff was also protected under The Copyright Act, of 1957.
• It came to the plaintiff’s notice that Sree Annapoorna Agro Foods (hereinafter referred to as the defendant), who is the defendant, has filed an identical trademark in Class 29^[2] and the same was opposed by the plaintiff.
• The defendant stated that they have adopted the mark in the honest practice of edible oils and no malafide intention is there. And they further stated that the plaintiff did not file any document that proves that they will be dealing under classes 29 and 30^[3].
• They also stated that ‘Cycle’ is not a coined term and exclusive rights for such a term cannot be granted.

LEGAL ISSUE RAISED

Whether the defendant’s use of the trademark ‘Cycle’ is detrimental to the use of the plaintiff’s trademark ‘Cycle’ or to the distinctive character and repute of the plaintiff’s trademark?

PLAINTIFF’S ARGUMENTS

It was argued that the trademark has been used by the plaintiff since 1954 and has a great reputation among consumers from different countries. The plaintiff has made various efforts to make their trademark famous like advertising and has hosted various sports and cultural events including international cricket matches. And to determine the trademark’s reputation, it can be assessed by the goodwill, turnover, and effect on the public’s mind. The plaintiff by these advertisements has gained a big market all over the world. It was stated that the mark ‘Cycle’ has attained a well-known status as per Section 2(1) (zg)^[4] therefore its right to be protected under a section of the Trade Marks Act, 1999. Thus the use of the mark ‘Cycle’ by the defendant for selling edible oil is detrimental to the reputation of the plaintiff’s mark.

DEFENDANT’S ARGUMENTS

The trademark used by the plaintiff carries the device name ‘Cycle ‘ with the word ‘Cycle brand agarbathis’ and has a reputation only concerning the product related to agarbathis. It was argued that the product used by the plaintiff is not at all related to the defendant’s product. The defendant’s product is edible oil and the plaintiffs include incense sticks and dhoop. The product by the defendant is for internal use and the plaintiff’s products are for external use and are not at all related to each other. And in the case of the trademark registered under classes, the plaintiff has never filed any documents proving that they deal with the food products and such registrations are liable for cancellation for non-usage. The defendant further states that they have been using this mark since 2009 and no confusion since then has arisen against the plaintiff’s mark and is detrimental to their mark.

COURT’S DECISION

Prior Use Doctrine – The Hon’ble High Court of Madras (hereinafter ‘court’) held that both the parties by submitting their documents have proven that the plaintiff is a leading manufacturer of incense sticks and dhoop and the defendant is manufacturing edible oil under name of ‘Cycle’ from past 7 years before filing the suit. The court further submits that no evidence was produced which states that the plaintiff also dealt in edible oils under the disputed mark. Therefore, the defendants shall consider the prior user of the mark in the category of edible oil.

The court decided the case in favor of the defendant as the trademark used by the defendant is not detrimental to the plaintiff’s mark. As both the products of the mark are in different classes and are of different usage. The court further stated that the words which are not coined or fancy cannot claim monopoly as these kinds of words are very common in use by the people of India. The court also observed that the defendant is not using the mark for any other use other than edible oils which are lawfully justified. Further, both parties were using the mark for over 8 years before filing the suit and didn’t affect their reputation since then. Therefore, the court dismissed the suit filed by the plaintiff and denied any injunction or relief.

CONCLUSION

On August 17, 2021, the Madras High Court delivered its decision in N.Ranga Rao & Sons Private Ltd v. Sree Annapoorna Agro Foods, C.S. Number, 259 of 2017, setting the law on the tests to determine trademark infringement, holding that based on various factors marks can co-exist and only a coined or fancy name can be given a monopoly and not the general words as used in the present case ‘Cycle’ or ‘Brand’. Also, if a party uses a mark that is identical to the registered trade mark but in a different class^[5] the users can not be restrained. So, trade mark laws give protection to a mark to an extent and every protection under this has its limits and the same thing can be detrimental to one and beneficial to others.

Author: Khushboo Agarwal, B.B.A. LL.B. 5th year, Mody University of Science and Technology, Laxmangarh, Rajasthan, in case of any queries please contact/write back to us at support@ipandlegalfilings.com &  IP & Legal Filing.

REFERENCES

1. Trade Marks Act, 1999 –https://legislative.gov.in/sites/default/files/A1999-47_0.pdf.
2. The Copyright Act, 1957 – https://copyright.gov.in/documents/copyrightrules1957.pdf.
3. The fourth schedule to Trade Marks Rules, 2002 – https://ipindiaonline.gov.in/tmrpublicsearch/classfication_goods_service.htm.
4. S.No.259 of 2017 – The Hon’ble High Court of Madras – https://www.mhc.tn.gov.in/judis/index.php/casestatus/viewpdf/625723.

^[1] Section 2(1)(zb), Trade Marks Act, 1999.

^[2] The fourth schedule to Trade Marks Rules, 2002 classifies edible oil under class 29.

^[3]  The fourth schedule to Trade Marks Rules, 2002 classifies food products under class 30.

^[4] Section 2(1)(zg), Trade Marks Act, 1999 – “well-known trade mark”, about any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark about other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark about the first-mentioned goods or services.

^[5] Under The fourth schedule to Trade Marks Rules, 2002 goods and services are classified into different classes concerning the mentioned case edible oils come under class 29 while incense sticks and dhoop are classified under class 3.