Trademark infringement under the Trademark Act 1999 generally involves the issues of likelihood of confusion; counterfeit marks and dilution of marks. Likelihood of confusion occurs in situations where consumers are likely to be confused or mislead about marks being used by two parties. The plaintiff must show that because of the similar marks, many consumers are likely to be confused or mislead about the source of the products that bear these marks.
In Three-N-Products Private Ltd vs Emami Ltd, 2009 (41) PTC 689, Three-N-Products Private Ltd. was engaged in the business of manufacturing and sale of cosmetics, lotions, hair oils, shampoos under the marks named "Ayu" (on which registration had been obtained) and "Ayur" (on which registration had not been obtained). The cause of action arose when, Three-N Ltd., came to know that Emami Ltd., uses the marks named "Himani Ayurdhara" and "Himani Ayucare". Against this Three-N-Products Private Ltd made an appeal on the ground of infringement with an alternative case of passing off and claimed for permanent injunction in order to restrain the other party from using the marks named "Himani Ayurdhara" and "Himani Ayucare". Three-N-Products contended that the mark "Ayur" has been used since 1984 by them and have also submitted the sale figures, and the amount spend on the advertisement expenses from 1984 to 2003. They further pleaded that it is a settled position of the law that for granting order of injunction in case of passing off the essential thing are who is the prior user, whether the two competing marks are used in the same products and whether there is any likelihood of confusion in the mind of the customers if both the marks are allowed to be used simultaneously. The word 'Ayur' may be generic and common word but it is held by the judicial pronouncement of Delhi High Court (Three-N-Products Private Ltd v. Yashwant Rao and Ors. 2001 (2) CTMR 514 (Delhi)), that the mark had acquired secondary significance.
Emami Ltd., in its affidavit mentioned that the real object of Three-N-Products Private Ltd was to traffic in the trademark or name "Ayur" as would be evident from various classes in which Three-N-Products Private has obtained registration without intending to or carrying on any business relating to the products covered by most of the classes. Emami Ltd., has denied the international reputation of Three-N-Products Private Ltd over the mark "Ayur" and has mentioned that the word AYUR comes from the Sanskrit word AYUS which means "life and longevity". The Emami Ltd., has showed its interest in the mark Ayurcare, Ayucare, Himani Ayurdhara and Himani Ayucare, which is phonetically, structurally and visually different from "Ayur" and "Ayu"
Three-N Ltd., lay stress on to sections 28 and 29 of the 1999 Act repeatedly in asserting its exclusivity over the words "Ayur" and "Ayu", while Emami Ltd., has stressed on section 17, that the claim of other party is lost in the trademark name " Himami Ayucare and "Ayudhara" used by Emami Ltd.,
The Court held that there has sufficient bonafide attempt taken by Emami Ltd., to avoid confusion by using the mark "Himami Ayucare" on Three-N Ltd., trademark "Ayu". On the production of the packets of the products of both the parties it does not appeared that Emami Ltd., has deliberately, designed any of its products in the packaging and style of other party. Hence appeal was disposed off.
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