International luxury brands are increasingly tapping into India's rich cultural heritage as they begin to expand in one of the most promising markets. Some of the international luxury brands such as Etro, Canali and Ermenegildo Zegna have been increasingly rolling out India inspired products to woo a growing tribe of young entrepreneurs and executives that is driving a boom in the Indian luxury market. And all this with a firm eye on their intellectual property rights. Lately, the Delhi High Court while hearing an application for interim injunction in Consitex S.A. versus Kamini Jain & Ors 2011 (47) PTC 337 (Del) was faced with the question that whether the mark ZEGNA, pronounced as ZEN-YAH in the trade, is deceptively similar with the mark JENYA? Consitex S.A, a part of the Ermenegildo Zegna Group manufacturing luxury clothing for men, had filed a suit for permanent injunction restraining Ms Kamini Jain and Kamini Creations from manufacturing, storing and selling men clothing by the brand name Jenya and Menya.
The Court went in favour of the plaintiff as it viewed, considering the facts and the law applicable, that the defendants' use of the mark JENYA is deceptively similar to the plaintiff's mark ZEGNA (pronounced as ZEN-YAH) and is likely to cause confusion in the course of the same trade channel and products. The clinching factors were that, apart from the registering the mark ZEGNA, the plaintiff had also obtained the trademark registration for transliteration of the mark Jenya (in Hindi) and the consideration by Court of the CD containing sound clips prima facie evidencing that the mark ZEGNA is pronounced as ZEN-YAH. An affidavit of the investigator appointed by the Court also adduced to this fact by stating that during the course of investigation, the staff at the plaintiff's store consistently pronounced the said trademark as ZEN-YAH.
This is a case of trademark infringement by phonetic similarity which is very well statutorily embodied in Section 29(9) of the Trade Marks Act 1999 wherein it is stated that "Where the distinctive elements of a registered trademark consist of or include words, the trademark may be infringed by spoken use of the words as well as their visual representation and the reference in this section to the use of the mark shall be construed accordingly." Thus in view of the fact that the Legislature has included the spoken use of the words as an infringing activity, it is clearly evident that the pronunciation of the trademark is clearly a determining criterion in ascertaining infringement.
In the case of K.R. Chinna Krishna Chettiar versus Sri Ambal & Co. AIR 1970 SC 146 wherein the rival trademarks of the parties were Ambal and Andal, the Supreme Court of India held that there is a striking similarity and affinity of sounds between the two trade marks and in spite of there being no visual resemblance between the two marks, the ocular comparison is not always the decisive test. The resemblance between the two marks must be considered with reference to the ear as well as the eye. The Division Bench of Bombay High Court in the case of Encore Electronics Ltd versus Anchor Electronics and Electricals Pvt Ltd 2007 935) PTC 714 [Bom] dealt with a similar point about the phonetically similarity between the two trademarks Encore and Anchor. The court viewed that the phonetic structure of marks indicate how the rival marks ring in the ears and therefore phonetic similarity constitutes an important index in evaluating whether a mark bears a deceptive or a misleading similarity to another
Courts in India, where culture is enriched by a diversity of languages and scripts have to consider how the rival marks are spelt and pronounced in languages in which they are commonly used. The Court must assess the makeup of an Indian consumer and associated with that the cultural traits that underlie the spelling and pronunciation of words and then consider the usage of words and the manner in which a word would be written in Indian languages and the similarity of pronunciation of the rival marks. The overall impact in terms of phonetically usage must be one of striking similarity. The test is not whether a customer who wishes to buy the product of the plaintiff is likely to end up buying the product of the defendant but is whether the ordinary customer is likely to be led to believe that the defendant's mark is associated with the mark and the trading style of the plaintiff. The phonetically, visual and structural getup of the two words should be so strikingly similar as to lead to a likelihood of deception.
Section 29(2) of the Trade Marks Act 1999 recognizes the concept of likelihood of association wherein the consumer is likely to believe that the defendants' mark has an association/affiliation/connection with the plaintiff. Thus in Section 29(2) read with section 29(9), the legislature has included the spoken use of the words also, therefore, it is evident that the pronunciation of the trademark is clearly a determining criteria in ascertaining infringement.
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