In composite trademarks, the elements of the mark may not be distinctive individually, but the distinctive value may arise from the specific combination of each element. On the other hand, in complex marks every single element of the mark might be given protection individually, however in a registration of a composite trademark, the single elements of the mark may not be autonomously protected as individual trademarks but the risk is that their combination is protected as a single trademark. Section 17 of the Trademark Act emphasizes that when a mark comprises of several features, the proprietor's exclusive right to use the trademark is only for the whole of it. The case of Patanjali Ayurved Limited vs. Arudra Engineers Private Limited also reiterated that as per the law, protection is afforded to the entirety of the trademark only, and not individual parts of it.
It is important to note that there are certain exceptions to this rule. When comparing the marks of two parties, the courts must evaluate who may face an irreparable loss and in whose favour the balance of convenience lies. This was illustrated in the recent case of M/s Sri Tulasi Das Industries vs. M/s Sri Sapthagiri Industries, wherein the appellant company, a firm dealing in edible oils, contended that it was the proprietor of the registered mark 'TASTY GOLD' with its unique design and style. They accused the respondent M/s Sri Sapthagiri Industries, a firm dealing in manufacture, processing, and marketing of edible oils, of infringement by using the marks 'TASTY DROPS' and 'TASTY PLUS+'.
The appellant had earlier filed a case for a temporary injunction against the respondents before the District Judge which was granted. Later, the same court dismissed and vacated the injunction order, by citing that the mark 'TASTY GOLD' was a commonly used term. The aggrieved appellant then filed an appeal against the order of the District Judge in the Telangana High Court.
The appellant submitted that the trial court had failed to appreciate that the suit relates to grant of injunction, and it had overstepped its authority by holding the mark 'TASTY GOLD' generic, thereby opening it to the public at large for use. It further contended that the court failed to consider the rights of the appellant as the prior user of the mark and did not consider the enormous goodwill it had acquired over the years.
The respondent supported the order of the Trial Court and contended that several manufacturers were using the words 'TASTY' and 'GOLD' for edible products, so there was no distinctiveness associated with the mark 'TASTY GOLD'. They relied on the Patanjali Ayurved case, wherein it was held that the plaintiff's trademarks of Coronil 92B and Coronil 213 SPL were composite marks, so the plaintiff could not claim monopoly over the word 'Coronil' individually as it was registered as a part of the composite mark.
After considering the arguments of both the parties, the Telangana High Court touched on the fact that the appellant was in the business of manufacturing and marketing edible oils since 2000 when the mark was registered. The respondent commenced the business in edible oils only in 2018 and applied for its registration. The court decided that there were certain similarities between the word marks of the appellant and the mark adopted by the respondent for the same product; and since the appellant was a prior user of the trademark and had established goodwill in the business, it could not be put to loss. The appeal was allowed by setting aside the impugned order of the Trial Court, and the original order of injunction against the respondent was restored.
The rationale behind the decision
The appellant's main contention was that the respondent was marketing products similar to their own in the form of pouches which looked deceptively similar to that of the appellant, thereby indicating passing off. The Telangana High Court considered the following three out of five parameters laid down in the case of Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. for deciding the issue of deceptive similarity:
- The nature of the goods,
- The similarity in the nature, character and performance of the goods of the rival traders, and
- The class of consumers who would likely buy the products and the degree of care they would exercise in using those goods.
The court also relied on the case of Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories, where it was opined that when two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trademark as is likely to deceive or cause confusion concerning the goods, and it is the likelihood of the purchasers of the goods being deceived that is the subject of consideration.
Herein, while the descriptive words used were different, the differences were to be viewed in the light of the parameters laid down, hence the Telangana High Court decided in favour of the prior user, i.e. the appellant.
Trademark infringement in the food industry is rampant worldwide and can result in serious consequences if left unchecked. The judgment of the court affirmed that the marks displayed on a product's packaging cannot be dissected and treated as individual features open for exploitation. Moreover, a brand's reputation and goodwill as well as the duration of use cast the outcome in infringement cases. The provision of filing an appeal in such cases offers an added shield of armour to protect intellectual property. All these elements combined with the appellant's presentation in court, provided a successful outcome in defending the use of mark 'TASTY GOLD'.
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