It is well established in Trademark Law that Trademarks fall
into four specific categories. The Delhi High Court in the case of
Klas Tape Company v. Vinod Hardware Store & Ors, while
stating that Klas Tape's (Plaintiff) mark "BILLI and/or
CAT" was an arbitrary one, reiterated these aforesaid four
classes, which are :
Generic: marks that may refer to the genus or root (of which)
the particular product maybe a species.
Descriptive: marks that may describe the nature or type of
goods for which they are used.
Suggestive: marks which mean use of imagination, thought and
perception to reach a conclusion as to the nature of the
Arbitrary: or fanciful marks which do not have any connection
to the nature or type of goods.
The issue in this case arose when Klas Tape became aware of
illegal and unlawful acts of Vinod Hardware Store & Ors
(Defendants) who were selling measuring tape with identical designs
as those of Klas Tape's registered design and also an identical
trademark. In addition, Klas tape alleged that the Defendants by
reproducing and/or making adaptation of the product drawings of the
measuring tape of the former to produce the infringing or duplicate
moulds for manufacturing the infringing product, were infringing
their copyrights and artistic works in the label "KLAS, DEVICE
OF A CAT/BILLI and 3M", under Section 55 of the Copyright Act
and Section 22 of the Designs Act, 2000, respectively.
The Defendants relying on the case of Shri Prem Singh v. M/s
Ceeam Auto Industries, where it was held that :
"when plaintiff's own conduct is tainted and he
himself is prima facie an imitator of another person's design,
then the court should not normally at the pre-trial stage, offer
him protection, on the mere assertions an averments in the plaint
which the defendant has succeeded in showing to be prima facie
unfounded or false"
argued that the present suit was not maintainable and was liable
to be rejected, at its threshold as the Plaintiff was guilty of
concealing from the Court that the cat device was introduced for
the first time by M/s Freeman Tape Co. Moreover, it was contended
that the impugned trade mark actually belonged to a Foreign company
and Klas Company could therefore not claim rights over it.
The High Court of Delhi, began by noting that the injunction
claimed in the present case for restraining the use of a mark, in a
corporate name is a species of infringement, under the Trademarks
Act, 1999 under Section 29 (5), in respect of goods and services of
the same or identical kind.
Next, the Court refuted the Defendant's aforementioned
contention and stated they had been unsuccessful in substantiating
their claim, further, that they had not argued as to how such
alleged plagiarism of the mark, or device or label, is a defence in
a trademark infringement action. The Court then moved on to state
that the "BILLI or CAT" mark was arbitrary, as it had no
association with the goods, products or services offered, nor was
it a suggestive one. Although, the Defendant had faintly argued
that the two CAT marks were visually different, according to the
Court the test is not the dissimilarities between the marks but the
possibility of consumer confusion, having regard to the overall
visual get up, and the imperfect recollection of an unwary
purchaser. Further, the standard to be applied, the Court said was
as am American judgment puts it is that of the unwary consumer, not
"a moron in a hurry."
Applying these tests to the case in hand the Court held that the
two marks i.e. "the Cat likeness representation" and the
word "CAT or BILLI" were similar. Accordingly, the Court
allowed Klas Tape's application for temporary injunction to
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