It is well established in Trademark Law that Trademarks fall into four specific categories. The Delhi High Court in the case of Klas Tape Company v. Vinod Hardware Store & Ors, while stating that Klas Tape's (Plaintiff) mark "BILLI and/or CAT" was an arbitrary one, reiterated these aforesaid four classes, which are :

  • Generic: marks that may refer to the genus or root (of which) the particular product maybe a species.
  • Descriptive: marks that may describe the nature or type of goods for which they are used.
  • Suggestive: marks which mean use of imagination, thought and perception to reach a conclusion as to the nature of the goods.
  • Arbitrary: or fanciful marks which do not have any connection to the nature or type of goods.

The issue in this case arose when Klas Tape became aware of illegal and unlawful acts of Vinod Hardware Store & Ors (Defendants) who were selling measuring tape with identical designs as those of Klas Tape's registered design and also an identical trademark. In addition, Klas tape alleged that the Defendants by reproducing and/or making adaptation of the product drawings of the measuring tape of the former to produce the infringing or duplicate moulds for manufacturing the infringing product, were infringing their copyrights and artistic works in the label "KLAS, DEVICE OF A CAT/BILLI and 3M", under Section 55 of the Copyright Act and Section 22 of the Designs Act, 2000, respectively.

The Defendants relying on the case of Shri Prem Singh v. M/s Ceeam Auto Industries, where it was held that :

"when plaintiff's own conduct is tainted and he himself is prima facie an imitator of another person's design, then the court should not normally at the pre-trial stage, offer him protection, on the mere assertions an averments in the plaint which the defendant has succeeded in showing to be prima facie unfounded or false"

argued that the present suit was not maintainable and was liable to be rejected, at its threshold as the Plaintiff was guilty of concealing from the Court that the cat device was introduced for the first time by M/s Freeman Tape Co. Moreover, it was contended that the impugned trade mark actually belonged to a Foreign company and Klas Company could therefore not claim rights over it.

The High Court of Delhi, began by noting that the injunction claimed in the present case for restraining the use of a mark, in a corporate name is a species of infringement, under the Trademarks Act, 1999 under Section 29 (5), in respect of goods and services of the same or identical kind.

Next, the Court refuted the Defendant's aforementioned contention and stated they had been unsuccessful in substantiating their claim, further, that they had not argued as to how such alleged plagiarism of the mark, or device or label, is a defence in a trademark infringement action. The Court then moved on to state that the "BILLI or CAT" mark was arbitrary, as it had no association with the goods, products or services offered, nor was it a suggestive one. Although, the Defendant had faintly argued that the two CAT marks were visually different, according to the Court the test is not the dissimilarities between the marks but the possibility of consumer confusion, having regard to the overall visual get up, and the imperfect recollection of an unwary purchaser. Further, the standard to be applied, the Court said was as am American judgment puts it is that of the unwary consumer, not "a moron in a hurry."

Applying these tests to the case in hand the Court held that the two marks i.e. "the Cat likeness representation" and the word "CAT or BILLI" were similar. Accordingly, the Court allowed Klas Tape's application for temporary injunction to succeed.

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