Deceptive similarity between trademarks in a typical trademark disputes, is often the prime question being thrown up for consideration. Deception in ordinary parlance is creation of a sham which in the context of trademark disputes translates into causing confusion in the minds of consumers thereby affecting their mental association with any particular trademark featured on a particular product. A mark which, because of its identity or similarity with the registered trademark and also due to the goods or services being covered by it, tends to have an association with the registered trademark is said to be deceptive similar but it is necessary to go into the question of comparable strengths of the cases of the either party.
The establishment of deception also entails the usage of one or more of the trademark's essential features. The identification of an essential feature depends on the court's judgment and also on the evidence placed before it. Dissimilarity in essential features of devices and marks is as important as similarity in them. The use of defendant's name on his goods and the kind of customer present in the trade channel are some of the factors to be considered.
The instant case Heinz Italia S.L.R & Anr versus Dabur India Limited & Others 2008 (36) PTC 638 (Cal.) has the trademarks 'GLUCON-D' of Heinz and 'GLUCOSE-D' of Dabur in the fray where Heinz alleged deceptive similarity in the trademark as well as the overall impression of the packaging of the goods. This dispute has bearings of two courts; one is the District Court of Gurgaon, from where the dispute went in appeal eventually to the Apex Court. The other is the High Court of Calcutta where the suit was instituted on finding that the respondents (instant case) had changed the packaging which was complained about in the District Court, Gurgaon, resulting in a more deceptively similar packaging. The instant case is an appeal from the order of the Single Judge. It will be pertinent here to add that the significance of the instant case increases as the respondents continued to market their goods in spite of the Apex Court's order allowing the ad-interim injunction by giving the reason that order of the Hon'ble Supreme Court did not cover the packaging which is effectively the subject matter of the suit before the High Court of Calcutta.
We have here a peculiar situation where the defending party is making a contention of non-infringement making the base that the order passed by the Apex Court confined itself to the Gurgaon packaging which cannot be extended to Calcutta packaging. Nevertheless, let us shift our gaze on another contention of the respondent which is of considerable importance in relevance to the usage of generic words as components in trademarks. The contention is that the mark 'GLUCOSE-D' is a generic mark and the respondents have legitimate and statutory right to use thereof permitted by Section 30(2)(a) as well as Section 35 of the Trade Marks Act, 1999. Section 30(2)(a) gives the position that a registered trademark is not infringed where the use in relation to goods/services indicates the kind, quality, quantity, intended purpose etc. Section 35 provides that the registered proprietor or the registered user cannot interfere with any bona fide description of the character or quality of the goods or services. Thus going by the statutory provisions the use of the respondents trademark seems fair and without any ulterior motive of piggy riding the reputation and goodwill of the appellant as alleged. The word 'Glucose' and the letter 'D', taken from Vitamin D, of the mark 'GLUCOSE-D' indicates the kind of product it is and also the description of its character thus making it safe for use.
The Court after taking into account the submissions and pleadings made by the parties compared the trade dress of the two packages concluding that they are different on the colour scheme coupled with the appearance of the writings together with the trade names. Finally, dismissing the appeal, the Court held that the dissimilarity in the trade dress and also the phonetic dissimilarity of the trademarks leave little scope to mislead the customers causing financial loss to the appellants.
Interestingly the Court only in the last part of the judgment speaks about the absence of any phonetic similarity. Though going by the benchmark established by the courts on testing of phonetic similarity or dissimilarity in the Indian trademark jurisprudence, the Court holding that there is no phonetic similarity would seem a little awry but the fact situation is that phonetic similarity is tested when two trademarks are in contest with each other. Here the mark "GLUCOSE-D" is not a trademark at all. It being the description of the good is not capable to identify its origin. Thus here Dabur has no case to assert its trademarks rights over the same and at the same time Heinz cannot stop Dabur to describe its product by its contents. Heinz has a case against Dabur only if the trade dress and other components of packaging are similar.
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