- within Corporate/Commercial Law topic(s)
Trademark infringement most commonly involves the issues such as likelihood of confusion; counterfeit marks and dilution of marks. Likelihood of confusion occurs in situations where consumers are likely to be confused or mislead about marks used by two different parties. This issue was brought forth for deliberation in the case Khurshid Ahmed Bhat v. Haji Bashir Ahmed Bhat 2010(42)PTC 248 (J& K) , which appealed an order by the Trial Judge, allowing temporary injunction. The case holds prominence since it reiterates that registration of a trademark is not the sole criteria to determine infringement of trademark.
Haji Bashir Ahmad Bhat claimed to be a proprietor of a small scale unit namely M/s Haji Bashir Ahmad Bhat and Sons involved in maufacturing, processing, packing and sale of tobacco and allied products (Naswar), with its head office located at Jamalata, Srinagar. Haji Bashir Ahmad Bhat further contended that Khurshid Ahmed Bhat had been maufacturing, storing and selling inferior quality products in the market, and marks/packing have been fraudently tailor made to be deceptively similar to that of marks/packings of Haji Bashir Ahmad Bhat and causing immense damage and loss to them. In this endeavour, the learned trial judge had passed an ex parte ad interim order imposing temporary injunction on Khurshid Ahmed Bhat to restrain them from using the marks "New Mour Marka", "Green Star Brand" and "Green Star Marks".
Khurshid Ahmed Bhatt contended that the order under appeal was illegal because the trial judge failed to consider the contentions raised by them in the application seeking vacation of the ad interim order. They further contended that there existed no resemblance between the packaging and Trade Marks of the products being manufacured and sold in the market by the two parties. Further, it was contended that the interim relief granted by the learned trial judge is beyond the the relief sought for the main suit and the trial judge could not pass the order impugned in the appeal.
However Haji Bashir Bhatt contended the trademark adopted by the Khurshid Ahmed Bhatt to be deceptively similar to those of the trademark adopted by them and registered by the competent authority under the Trade Mark Act, 1999. They further averred that they wee registered user of trade mark "Mour Marka", "Star Brand" and "Star Marks"as under the provisions of Trade Mark Act 1999.
The Court held that whenever there is a case of infringement of trademark, the Court should not only consider the factum of registration of trade mark with the competent authority under Trade Marks Act, 1999 but should also consider the relative strength of the case of competing parties. The court stated that due consideration to the similarities and dissimilarities of the trademarks was also necessitated. In viw of the trial Judge's decision, he opined that the two trademarks had not been comapred except making reference to the words "New or Green" and also he had not examine the similarities and dissimilarities.
The court also observed that the court in such cases the test of to phonetical, visual and ocular similarity must be applied. It was opined thatorders which have potential of affecting right to carry on trade, occupation and business and right to earn livelihood, such orders cannot be passed, without approaching the problem projected in the strict compliance of law occupying the field as these rights are Fundamental Rights guaranteed under article 19(1) (g) and 21 of the Constitution. In this view, the impugned order was set aside by the court and the trial judge was directed to re consider the matter in view of the observations made in the judgment and to pass orders in accordance with law after hearing the parties, within a period of one month.
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.