India: Similarity In Commercial Names And Device: The Montblanc Dispute

Last Updated: 23 October 2008

A suit filed under Order 39 Rule 1 and 2 and Order 39 Rule 4 of the Code of Civil Procedure, 1908, titled Montblanc Simplo- GMBH v. New Delhi Stationery Mart 2008(38) PTC 59, involved two corporations, debating over similarity in the commercial names appended to their products and the associated Trademark principles. Montblanc filed this suit for infringement of its registered Trade Marks, and for passing off in relation to its trade mark, which include the word mark "Starwalker", a three ring device as well as the shape and configuration of the "Meisterstuck" and "Starwalker" range of pens/writing instruments. Montblanc manufactures high quality writing instruments and has extensive reputation, as a producer of superior quality goods under the well-known 'Mont Blanc' and 'White Star' devices, which had acquired secondary meaning, reputation and goodwill. They claimed to process registration in respect of these brands in 180 countries and also averred to spending about Rs. 2.5 crores for advertising its brands.

Montblanc alleged New Delhi Stationery Mart (hereinafter NDSM) of having infringed its rights and that they were engaged in manufacturing and selling pens identical to their goods. They were also alleged of using an identical three ring device and a deceptively similar brand name, Spacewalker to that of its mark 'Starwalker' having a confusingly similar shape, configuration and get-up.

Montblanc submitted that even after a cease and desist notice was served NDSM refused to discontinue the selling of their brands, although they acknowledged the use of the three-ring device. Therefore, they asserted that using the three-ring device and the expression 'Spacewalker', the defendants are infringing registered trademarks

Discussing what was included in the definition of "mark", "trademark" and provisions relating to passing off offence, it was stated that not only was the three-ring device mark inherently distinctive and not descriptive of the goods in relation to which it was registered and used, but also the device mark had acquired reputation, goodwill and distinctiveness due to the plaintiff's prior adoption and continuous worldwide for the past over 80 years.

Considering the similarity in the word marks, and the fact that the get up and configuration of the products were confusingly similar, the adoption of the said word mark by NDSM was said to amount to an offence under section 29 of the Act (in relation to the word mark and also the three ring device) and that such use by NDSM was likely to cause confusion in the minds of the public.

Applying the standard of 'likelihood of confusion' and not actual deception and actual damage, it was contended that the following considerations be kept in mind:

  1. The broad and essential features of the of competing marks will have to be viewed
  2. The marks will have to be considered as a whole in their respective contexts,
  3. The similarities rather than dissimilarities will have to be taken note of and
  4. The marks must be judged from the point of view of unwary purchaser of average intelligence and imperfect recollection.

Turning the Court' attention to an ex parte injunction having been obtained in July 2007, it was submitted that since the confusingly and deceptively similar products lead to a presumption of association and that Montblanc would be put to great inconvenience if the injunction were to be vacated. The injury caused due to such unfair association and unauthorized use of goodwill, he argued, cannot be compensated by damages and therefore, Montblanc be restrained pending final decision in the suit.

NDSM, denied that their acts amounted to infringement or passing off. They averred that the shape, configuration and getup of the products, which Montblanc claimed to be using for past several decades had not been duly registered under the Designs Act, 2000. Relying on detailed illustrations, and photographs it was averred that the three ring device used by the NDSM was different from that used by Montblanc. It was also stated that since no direct protection is afforded under the Copyright Act and Designs Act, the same cannot be indirectly conferred under the Trademarks Act, especially so when it is publici juris. Further, the two word marks were stated to be different, as also the drastic pricing difference between the two. Deliberating over the law of passing off, it was states that every similar mark does not necessarily cause confusion. Therefore, stating that the products could be differentiated both in terms of the mark and the price, no confusion was caused and the action for infringement was not maintainable.

The Court observed that Montblanc' claims were two-fold, infringement and passing-off in relation to the three ring device as well as the word marks. Also, on the question of applicability of the other legislations, the Court opined that even if it is accepted that the three-ring device is not protectable under the Copyright Act, 1957 or the Designs Act, 2000, it still could be protected under the Trademarks Act, 1999. They also took note that it was not necessary to prove actual confusion or damage, it is sufficient if likelihood of confusion is established and that the price difference, would only result in further injury to Montblanc' goodwill, as the products will not be of similar standard and the adoption of a prefix 'Add Gel' to the word mark would not mitigate the likelihood of confusion. Stating so, the Court restrained NDSM from the use of the ring device (or any other such deceptively similar device) as well as the brand name.

© Lex Orbis 2008

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.

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