India: Trademark Infringement Case - London Dairy Vs. LondonDerry

1. That there is no phonetic distinction between the two marks and the marks cannot possibly be pronounced differently. The plaintiff has a registration in Class 30 which covers the goods for which the Defendants are using the mark.

2. That the Defendants dishonestly adopted the mark "LONDONDERRY".

3. Unless the Defendants are able to show that their adoption of the mark is bona fide, the injunction must follow, the Plaintiff being a prior registrant of the mark in question and there being no discernible phonetic distinction between the two.

4. The Defendants ought to have conducted a search and if they failed to do so they have only themselves to blame.

5. The Plaintiff manufactures confectionery under another mark "Tiffany" and therefore, the Defendants' use of "LONDONDERRY" for boiled sweets must be held to be a passing off.

1. It is not enough to say that because one has registration in a class that includes very many items therefore protection is axiomatically to that mark in respect of all the items in that class, however dissimilar, however disconnected and irrespective of whether or not there is any use of the mark for those other types of goods.

2. Every registrant should be required to be careful to specify the goods within the class, even multiple goods, for which the use is proposed. The Plaintiff has limited their use of the mark to only ice-cream within Class 30.

3. The word "London" is disclaimed and "Dairy" can never enjoy any protection. It is very much a common word. It is publici juris; of public right. No protection attaches to it. Even taken as a whole, "LONDON DAIRY" is not a mark that can ever claim protection.

4. The Plaintiff had no reputation in India to speak of till 2010. There is nothing to indicate that it had so wide an international reputation that it could claim trans-border protection.

5. The Plaintiff is unable to show goodwill and reputation which is one of the three probanda of the 'classical trinity' in passing off between 2010 and the time of the Defendants' adoption of the mark.

6. There are a multitude of surrounding circumstances that must be considered and cannot be possibly be ignored: the packaging, the goods themselves, their price point, the distinct words and stylization, etc.

7. On neither cause of action the Plaintiff has made out a case for grant of injunction.

1. A registration must be read in a reasonable and rationale fashion. The purpose of the statute is not to afford wide ranging protection irrespective of use.

2. The argument that all the goods in a class are 'cognate' and 'allied' cannot be accepted. Visually there is nothing at all common between the two marks. The Plaintiff's product is entirely distinct. It is packaged differently. It requires refrigeration. It price point is entirely distinct as well. The Plaintiff's products are indeed expensive by Indian standards, starting at Rs. 80/- and going only northward from there. There is no possibility at all of any person, however average his intellect or imperfect his recollection, confusing one for the other. When it comes to the question of similarity, the test is one of perception. Like beauty, this lies in the eye of the beholder; in trade mark cases, that of the Judge.

3. It is sufficient to accept that the Plaintiff's registration and rights are in any case restricted to the only goods on which it has used them, i.e., ice-cream, and, should it be able to show so, to others that are commonly linked with ice- cream (such as other ice-cream preparations of some kind or the other). However, this cannot be extended to every single item in Class 30. That would take within its sweep all manner of goods such as sugar confectionery, candies, biscuits, pasta, macaroni, noodles, baking powder, spaghetti, mayonnaise, vinegar, coffee, tea, rice, artificial coffee, bread, pastry and so on.

4. Passing off is an action in deceit, and the Plaintiff must show or demonstrate, at least prima facie for the present purposes, that the Defendants' use and adoption is calculated to deceive, such that purchasers of fifty paise boiled sweets in single serve sachets will imagine they are purchasing a product from the repertoire of a maker of expensive ice-cream. The Court was of the opinion that the Plaintiff had prima facie not been able to show that the adoption of the mark was calculated to deceive.

5. There may certainly be places that vend both; but those are not the only places one finds the Defendants' sweets. In a country where every empty urban space is a business opportunity of some kind, the Defendants' sweet is the kind of thing that one finds sold by street corner vendors, pavement hawkers and so on. None of these are 'outlets' for the Plaintiff's products. No one purchasing a fifty paise sweet manufactured by the Defendants will ever be cast into a state of 'wonderment' about whether this confection has anything whatever to do with the Plaintiff's ice-cream.

6. That the words "London Dairy", when used in relation to ice-cream, might connote the goods of the Plaintiff and the Plaintiff alone. But that is not what the Defendants do. That is not what they do at all. They do not vend or manufacture ice-cream. They vend nothing like it. They are manufacturing a good that falls in the same Class but is entirely distinguishable in every word and in every way except the phonetic. That is surely not enough. What of the visual similarity? The structural? The attendant circumstances? The lack of any meaningful reputation or goodwill? The want of demonstration of deceit or misrepresentation? The very many differences in color, trade dress, the goods themselves and their pricing? Is a court to ignore all these only because of a phonetic similarity?