Shield Of Passing Off When Both Trademarks Are Registered



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In a suit filed by Malcom India Limited, the Delhi High Court explored the legal complexities regarding passing off and trademark infringement, focusing on Section 28(3) of the Trade Marks Act, 1999.
India Intellectual Property
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In a suit filed by Malcom India Limited, the Delhi High Court explored the legal complexities regarding passing off and trademark infringement, focusing on Section 28(3) of the Trade Marks Act, 1999. The Plaintiff, Mallcom India Limited, is primarily engaged in the business of manufacturing safety shoes under the trademarks 1474180a.jpg 1474180b.jpg "TIGER" for which they had secured several registrations as early as from the year 2010. The plaintiff alleged that the defendant had obtained registration for their trademark "CDTIGER" / 1474180c.jpg in a dishonest and unlawful manner by adopting the dominant elements of the trademark, making it deceptively similar to the plaintiff's prior registered trademark "TIGER".

The plaintiff contended that in spite of the stylisation and addition of the letters "C" and "D", the overall impression created by the defendant's trademark is, in essence, the same which would create confusion amongst consumers as they identify the trademark "TIGER" as the plaintiff's, making it a fit case for infringement and passing off. The defendant, in response, took the shield of honest adoption and claimed that letters "C" "D" was bonafidely adopted as it represents the initials of the Defendants father, and that "Tiger" was an homage to the defendant's roots in West Bengal. They further claimed that the word TIGER is a commonly used term and has become generic, a defence that was also used by the plaintiff in their own submissions to the Registry.

With respect to the issue pertaining to deceptive similarity, the Hon'ble Court held that the dominant element of the plaintiff's trademark- "TIGER" is entirely present in the defendant's subsequently adopted trademark. Hence, it is likely that consumers will mistakenly associate the Defendants' products with the plaintiff's, which could potentially cause confusion and dilution of the plaintiff's trademark. The mere addition of the letters "C" and "D" will not improve the overall resemblance that it creates.

Section 28(3) – Proprietors of registered trademarks do not have exclusive rights against each other.

In the present case, despite the defendant holding a registration for their trademark, the plaintiff has sought trademark infringement and passing off on the basis of prior adoption. Considering the same, the provision under Section 28(3) of the Trademarks Act,1999 would be invoked. The provision is as follows:

(3) Where two or more persons are registered proprietors of trade marks which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.

A reading of Section 28(3) provides that if two registered marks are identical or deceptively similar to each other, the registered proprietors will not have any exclusive rights against each other, and both proprietors will be equally entitled to use the mark. The Court, as directed by this provision, recognised the registration secured by the defendant. Therefore, the claims of trademark infringement by the plaintiff would not hold. However, the mere registration of a trademark does not immunise the registered proprietor from passing off. In support of this, there have been instances, such as the Abbott Healthcare Pvt Ltd v Raj Kumar Prasad 2014 (58) PTC 225 (Del) case, wherein the Courts have acknowledged the common law remedy of passing off available even to a registered proprietor against another registered proprietor of a similar or identical mark.

The Hon'ble Court had unambiguously acknowledged that the plaintiff is the prior registered proprietor of the trademark "TIGER", which was supported with evidence by way of expenditure on marketing and invoices from as early as 2006 they had furnished before the Hon'ble Court. In light of the same, the Hon'ble Court held that the arguments put forth by the defendant were not maintainable and that the defendant ought to have exercised due diligence and a thorough market search before employing the trademark "CD TIGER".

The Hon'ble Court concluded that the plaintiff being the prior adopter of the trademark has earned goodwill and reputation due to the continuous and extensive usage over the years, thereby making the subsequent adoption of the defendant's trademark malafide and dishonest. It was held that all the elements of the trinity test for passing off are met and that should an injunction not be granted, it would cause irreparable damage to the reputation of the plaintiff's mark, as it is deceptively similar and will, in all likelihood, cause confusion amongst consumers.

In conclusion, the case highlights the issues involved in trademark disputes, especially involving both trademarks that are registered, the importance of prior registration, and the burden of proof, which are needed to establish a strong case for passing off. Consequently, the injunction Order was passed against the defendant and was directed to restrain from selling, marketing, and dealing in products bearing the registered trademark "CDTIGER", and any use thereof would amount to passing off. They were also directed to deplete the existing stock within 4 weeks of issuance of the Order and take down their domain name,

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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