India: On the Virtue of Alphabet a Trademark Cannot be Granted

Last Updated: 17 June 2010

The question of infringement of trademark has been subject to widespread deliberation. Section 29 of the Trademark Act 1999 talks about various aspects related to infringement as given in Section 29 (1) that a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

Where a case of similar marks are in fact similar to the extent of being deceptive was concerned, certain principles were set out in the case of Cadilla Healthcare v. Cadila Pharmaceuticals. In 'Reckitt Coleman v. MP Ramachandran [1999 PTC (19) 741 (Cal)] the Court held (in reference to disparative advertisements) that for a Court to adjudge infringement of trademark, the 'essential features' of the two impugned marks must be similar or identical. In lieu of the fact that the relief claimed by the plaintiff in a suit of infringement of its trademark is usually, an injunction by way of infringement and damages (and injunction) by way of passing off, it is necessary that the Courts follow the two cardinal principles set out by the SC in the above mentioned cases. Further, in Colgate Palmolive v. Mr. Patel 108 (2003) DLT 5, that once the essential feature of the registered trademark is 'adopted', no further burden lies on the plaintiff to prove that the similarity is also deceptive in nature.

In a recent case P.P. Jewellers Pvt. Ltd. v. P.P. Buildwell Pvt. Ltd, the Court, quite appreciatively carried out, with fair conviction the rationale given in the above cases.

'PP Jewellers Pvt. Ltd.' filed a suit for infringement of trademark against the defendants, 'PP Buildwell Pvt. Ltd.', regarding the use of the mark 'PP' by the defendants. PP Buildwell Ltd., allegedly, had acquired a trademark over the letters 'PP' by way of continuous and extensive use of the same in their trade practices. It was claimed by PP Jewellers Pvt. Ltd. that PP Buildwell's use of the said mark was an infringement on their formidable reputation and goodwill in the said mark and further, that PP Buildwell are guilty of passing off.

PP Jewellers Ltd alleged that the PP Buildwell Pvt Ltd. have, by adopting the letter mark 'PP' as part of their corporate names, passed off their services as that being offered by the PP Jewellers Ltd . The Court considered several cases while deciding the issue of passing off, in particular, Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laborataries, AIR 1965 SC 980 and Harrods Ltd. v. Harrodian School Ltd, [1996] R.P.C. 697 and opined that the simple fact that PP Buildwell Pvt. Ltd. added a suffix to the letters 'PP' meant that they had no mala fide intention to defraud or confuse consumers. The added material in the form of 'Buildwell' or 'Mall' or 'Shopping Mall' were sufficient to distinguish the PP Buildwell Pvt Ltd marks from that of the PP Jewellers Ltd. They also stated that they had entered the construction business and as such the chances of a customer mistaking one company for the other was real possibility.

The Court adjudged that PP Jewellers Ltd. used the mark 'PP' as a mere prefix for their commercial products. The actual mark used by the plaintiffs was a combination of the letters PP and the name of the business viz. PP Jewellers or PPJ. Hence, the Court opined that 'the letters 'PP' when not supplanted by the business name would not acquire a connotation entitling such a mark protection from infringement.' In other words, the letter mark 'PP' was not subject to trademark protection under Sec. 29 of the Trademarks Act, 1999. The Court relied upon this fact to hold that the term 'PP' per se would not constitute an 'essential feature' of the mark and as such merely the use of the term, 'PP' by 'PP Buildwell Pvt. Ltd.' would not institute an infringement.

Moreover, the Court found that profile of the customers to which the two parties cater to, are different. PP Buildwell, being builders, cater to customers from the higher strata of the society who are expected to be educated and intelligent enough to distinguish the defendant's company from the plaintiff. Also, the degree of care, expected to be exercised by a customer while seeking commercial places is high, and as such, passing off is highly unlikely .In this view, the Court held inter alia, that there was nothing distinctive about the letters 'PP' themselves, and therefore, a relief on the virtue of the letter mark itself cannot be granted.

© Lex Orbis 2009

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