Trademark and copyright law 101 – a note on Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blenders & Distillers Pvt. Ltd. and Sentini Bio Products Pvt. Ltd. v. Allied Blenders & Distillers Pvt. Ltd.
Authored by: Ms. Abhilasha Nautiyal and Mr. Shrawan Chopra, Anand and Anand
A division bench of the Delhi High Court, comprising of Justice Pradeep Nandrajog and Justice Pratibha Rani, in a recent order held the marks 'Officer's Special' and 'Collector's Choice' as likely to be confused with Allied Blenders and Distiller's mark 'Officer's Choice' for whisky. The Learned Bench also found the label for 'Officer's Special' to infringe the copyright in the 'Officer's Choice' label.
The key findings of this order include the following:
1. Principles for determining likelihood of confusion between competing trademarks
2. Likelihood of confusion when marks have the same or a similar meaning
3. Storage and retrieval of ideas from memory
4. Impact of different trade dress when the marks are semantically similar
Principles for copyright infringement
1. Principles for determining likelihood of confusion between competing trademarks:
The order borrows general principles of likelihood of confusion from McCarthy on Trademarks and Unfair Competition, Ed. IV -
i. Likelihood of confusion (i.e. confusion is probable and not simply possible) is the standard for both trademark infringement and passing off.
ii. Priority of use of the party that alleges trademark infringement and/or passing off needs to be considered.
iii. To establish trademark infringement and/or passing off in most cases it needs to be shown that an appreciable number of buyers and not the majority of buyers are likely to be confused. Even 1% of India's population will be an appreciable number of buyers.
iv. Likelihood of confusion may be proved in many ways, such as - through survey evidence; by showing actual confusion; through arguments based on a clear inference arising from a comparison of the marks in question and the context in which the marks are used.
v. Under Section 29 of the Trademarks Act, 1999, confusion is presumed if the marks are identical and are used for identical goods/ services.
vi. Confusion can be of the following categories:
Point of sale confusion - this refers to confusion that takes place at the time of purchase.
Post sale confusion - this includes confusion of those other than the purchaser.
Initial interest confusion - this refers to confusion that may be caused initially, i.e. prior to purchase, but at the time of purchase of the alleged infringer/ tortfeaser's product or using its service, the consumer is not confused.
Reverse confusion - this occurs when consumers purchase the goods or use services of the senior user thinking them to originate from the junior user.
vii. When a person knows that the mark in question does not originate from the senior user but the senior user is called to mind, then it's a step before confusion. If on the other hand, the consumer is in a state of wonderment if there's a connection, this is confusion. Further, if this consumer then purchases the junior users product, this is then deception.
The order also records the factors that need to be considered while determining likelihood of confusion between marks (including the Cadilla (Indian SC); Polariod; Sleekcraft and Du Pont factors). In the facts of this case, the court considered the following factors:
i. Nature of the mark
The court endorsed categories of marks explained by the US Court of Appeals for the 2nd Circuit in Abercrombie and Pitch v. Hunting World. Broad categories of trademarks are - generic, descriptive, suggestive and arbitrary or fanciful.
ii. Degree of resemblance between the marks
- The court discussed in detail the concept of semantic similarity between marks (See Section 2 below).
- The court emphasized that the test for comparing composite marks is whether the defendant has copied the 'Essential Feature' of the plaintiff's mark
- The court also reiterated that even if a mark is common to the Trade Marks Register, it may not be common to the trade, for which extensive evidence needs to be shown.
- The court reiterated the law on disclaimers in trademarks - for passing off, statutory disclaimer will have no bearing if the mark has acquired secondary meaning; A disclaimer does not travel to the market place, hence for comparison of two marks, the disclaimed portion can also be considered.
iii. Nature of goods/ services in respect of which the marks are used
iv. Class of purchasers who are likely to buy the goods
v. Mode of purchasing the goods or placing orders for the goods
The court observed that associations in memory tend to decay over time, leading to forgetting as well as recall of the wrong targets.
vi. Intention of the defendant
The court also took into consideration that dishonest intention of the two appellants. In the Sentini appeal, the appellant had argued similarity of the mark 'Officer's Special' and 'Officer's Choice' in opposition proceedings before the Trade Marks Registry. In the Shree Nath appeal, the appellant had knowledge of the mark 'Officer's Choice' as it had mentioned the same in a reply to the Trade Marks Registry.
2. Likelihood of confusion when marks have the same or a similar meaning:
i. The court further developed the 'test of similarity in idea' for determining similarity between trademarks. The court used semantic relationships between words to determine similarity between marks.
ii. Semantic relationships (also called sense relations) between words are of the following types:
A word with a broad meaning constituting a category into which words with more specific meanings fall
A word or phrase that means exactly or nearly the same as another word or phrase in the same language.
Words that covey the opposite.
iii. Synonyms may be absolute (words with the exact same meaning) or relative (words or phrases that are relatively similar). Absolute synonyms are considered to be a logical impossibility.
iv. Relative synonyms are classified as follows:
- Synonymy with different degrees
- Synonymy with different emotions
- Synonymy with different styles
- Synonymy with different collocations
v. The court applied the relations of relative synonymy and hypernymy in the present appeals to hold that 'Collector' and 'Officer' are related by hypernymy and relative synonymy. The court also held that the mark 'Officer's Special' is a relative synonym of the mark 'Officer's Choice'.
vi. The court cautioned that protection should be accorded only to those sense relations of the word where the context in which they are applied to the brand name is the same, which causes similar ideas to be conveyed in the minds of the consumers.
3. Storing and retrieving ideas from memory:
While deciding if the marks in question were deceptively similar, the court discussed how ideas are stored and retrieved from memory.
i. The court discussed how similar words, concepts and items that are linked by associations are grouped together in the brain.
ii. Information is retrieved from the memory with the help of retrieval cues. These cues may not directly elicit the brand name but may enhance the likelihood of a particular brand, or set of brands, being elicited.
iii. The court also discussed the process of reconstruction of information or the generation of false memories. This means that consumers have imperfect recollection and may generate false memories (i.e. recall a semantically related brand) when recalling a particular brand.
4. Impact of different trade dress when the marks are semantically similar:
The court relied on a study (Distinctive Brand Cues and Memory for Product Consumption Experiences, International Journal of Research in Marketing [22 (2005) 27-44]) and various Trademarks commentaries to explain the likelihood of confusion in cases where the marks are semantically related and products' trade dress is dissimilar:
i. Cue formed from the meaning of the brand is much stronger than the cue formed by the packaging of the product of the brand. Therefore, if the meaning of the brands is similar/same, then the difference in packaging may still lead to confusion.
ii. There is a likely consumer belief that brand names identify different choice alternatives uniquely, while packaging colours and shape often do not.
5. Principles for copyright infringement:
The court reiterated the following general principles in copyright infringement:
i. Copyright protects expression of an idea and not the idea itself.
ii. A registration is a not a prerequisite for copyright.
iii. According to Section 2 (c) of the Copyright Act, 1957, an artistic work means a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality; a work of architecture and any other work of artistic craftsmanship.
iv. Copyright infringement may be of the following kinds:
a. Direct infringement
b. Indirect infringement
- Contributory/ induced infringement:
One who contributes to or promotes copyright infringement may be liable for contributory or induced infringement.
- Vicarious infringement:
One who controls the acts of the infringer may be liable for vicarious infringement.
v. To establish copyright infringement, the right holder must show:
a. Ownership of the work
b. Copyrightability of the work
- The work should be original
- The work should have a 'modicum of creativity'
- The work should be protectable expression.
c. Copying of the work by the Defendant
- This can be proved by showing substantial similarity between protectable elements. According to Copinger and Skone on Copyright, South Asian edition, 2008, this test has been put in a number of similar ways such as 'Has the defendant made a substantial use of those features of the claimant's work in which copyright subsists?'
- In the United States, the abstraction-filtration-comparison test [as first laid down in Computer Associates Ltd. v. Altai Inc. 23 USPQ 2d 1241 (2nd Circuit 1992)] has been followed by some courts for substantial reproduction, especially in software infringement cases.
Originally published on The Legal 500
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.