India: First Impression Is The Last Impression: An Analysis Of The Tests That Must Be Used To Differentiate Between Trademarks

The author, through this article, draws a battery of tests that are and/or must be used while differentiating two different trademarks. This article lays down all the tests that the courts have used over the years while conducting the likelihood of confusion analysis. This would help in better understanding the Indian Trademark Law in practice.

I. Statutory Provisions

A. SECTION 9 OF THE TRADE MARKS ACT, 1999

This section lays down the absolute grounds for refusal of registration of the trademark. The mark could be refused on the basis of the following:

• RULE 1 [as laid down in Sub-section (1)] –

- The mark lacks distinctiveness.

- The mark is descriptive of the characteristics of the goods or services.

- The mark consists exclusively of marks or indications which have become customary or bonafide in the established practices of the trade.

EXCEPTION [as laid down in proviso to sub-section (1)] - There are scenarios where Rule 1 would not apply to the situation in hand:

i. When the mark has acquired distinctiveness over its course of business or trade. OR

ii. When the mark is a well-known mark.

" RULE 2 [as laid down in sub-section (2)] –

- The nature of the mark is such that it is likely to deceive the public.

- The nature of the mark is such that it is likely to hurt the religious sentiments.

- The mark consists of obscene or scandalous matter.

- The use of the mark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.

• RULE 3 [as laid down in sub-section (3)] – The shape of goods which results from the nature of the goods themselves; or

- The shape of goods which is necessary to obtain a technical result; or

- The shape which gives substantial value to the goods.

B. SECTION 11 OF THE TRADE MARKS ACT, 1999

This section lays down the relative grounds for refusal of registration of the trademark. The mark could be refused on the basis of the following:

• RULE 1 [as laid down in Sub-section (1)] –The mark is identical to an earlier trademark and the goods/services associated with the mark are similar to the earlier trademark. And there could be a likelihood of confusion w.r.t. to the source of goods.
• RULE 2 [as laid down in sub-section (2)] –The mark is identical to an earlier trademark, and the earlier trademark is a well-known mark. Therefore, the use of such a mark would allow the applicant to gain unfair advantage over others or damage the reputation of the earlier trademark even in situations where the goods may not be similar.
• RULE 3 [as laid down in sub-section (3)] – The use of the mark is prohibited in India by virtue of any law - say by virtue of the law of passing off and by virtue of law of copyright.

C. SECTION 12 OF THE TRADE MARKS ACT, 1999

This Section allows the registration of "honest concurrent users". In order to avail this advantage, the applicant must be bonafide prior or concurrent user.

II. Case Laws

i. AMRITDHARA PHARMACY V. SATYADEO GUPTA (1962)

In this case, the courts did a likelihood of confusion analysis between two marks, namely, "AMRITDHARA" (Opponent's Mark) and "LAKSHMANDHARA" (Applicant's Mark). Both these marks were being used for a medicinal preparation, where "AMRITDHARA" was in use since 1901, much before the Applicant's mark i.e. "LAKSHMANDHARA" came into existence.

The courts, in this case set down rules/guidelines, the essence of which echoes till today. The courts laid down the test for determining if the two marks were similar.

Two Important Tests:

- Reasonable Man's Test: The differentiation of the two marks must be done from the point of view of a man with average intelligence and imperfect recollection.

- Overall Impression Test: According to this test, we must see the overall impression of the two marks. This includes the overall phonetic and visual similarity of the two marks.

The court, in this case, remarked that a man would have to be "unusually stupid" or must be a fool or an idiot to be deceived between the two marks. The overall impression of the two marks showed obvious differences.

ii. F. HOFFMANN-LA ROCHE & CO. LTD. V. GEOFFREY MANNER & CO. PVT. LTD. (1969)

This is another landmark case that is integral to Indian Trademark Law in practice. This case reiterates and then clarifies the law laid down in Amritdhara Case.

The Test:

- Totality Test: It is important that while comparing the two marks, one must compare the mark as a whole. The practice of taking a portion of the word and saying that it is different from the other mark is not a right practice. The marks must be compared in totality to ascertain if any deception or confusion exists.

This rule is an extension of the rule already laid down in the previous case

iii. CADILA HEALTH CARE LTD. V. CADILA PHARMACEUTICALS LTD. (2001)

This case deals with the issue of Differentiation of Trademarks in the medical field. The court uses the same tests as laid down in the Amritdhara case , but demands a strict scrutiny in case of pharmaceutical products. Court remarks that the tablets "FALCITAB" and "FALCIGO" both are used in the treatment for 'cerebral malaria' commonly known as Malaria Falciparum. The court feels that even though one of the tablets is a prescription drug and is not easily available across the counter; the drugs have marked difference in the compositions with completely different side effects, therefore strict scrutiny is a must, as without it, there could be fatal consequences.

The court further goes on to state that when comparing the two marks, segregation of words to differentiate the two marks is a dangerous practice and must not be adopted. Thus affirming the rules as laid down in the previous cases.

Consequence

This comes as a warning to all the trademark users, who earlier thought that they would not fall under the scrutiny; thus minimizing misuse of trademark name for unfair gains.

iv. METROPOLITAN TRADING COMPANY V. SHRI MOHANLAL AGARWAL & ORS. (2007)

In this case, the Appellants, who are registered proprietors of the Trademark "ZODIAC" in respect of readymade garments and handkerchiefs, filed an opposition against the Respondents, who were using the similar

Trademark "ZODIAC" in respect of shirtings and suitings. The Courts in this case, talk about the test for establishing distinctiveness. The courts go on to say that since appellants had been using the mark prior to the respondent since the year 1960, continuously and extensively, for a period more than three decades, the mark had acquired distinctiveness. While, the respondents had been using the mark since 1983 for a short period of time and it did not acquire distinctiveness and therefore, did not qualify for registration.

v. THE ROYAL BANK OF SCOTLAND GROUP PLC V. SHAREKHAN LIMITED (2014)

This case also further elaborates and clarifies the "overall impression test".

A quote from the judgment has been cited below for better understanding.

"35. The test of comparison of the marks side by side is not a sound one since a purchaser will seldom have the two marks actually before him when he makes his purchase. The eye is not an accurate recorder of visual detail and marks are remembered by general impression or by some significant detail rather than by any photographic recollection of the whole. While judging the question as to whether the defendants have infringed the trade mark by colorable imitation of the mark or not, the Court has to consider the overall impression of the mark in the minds of general public and not by merely comparing the dissimilarities in the two marks."

This case is very important with respect to the issue of cross-border reputation. The court looked at various factors to establish if the mark "MAXTRAD" has cross-border reputation / spill-over reputation or not:

- Long & continuous use- In use since 1999; date of use in India: 2004

- Global presence- Registered in over 29 countries

- Advertisements/promotion/social media presence of the mark- Website- www.maxtrad.com

- Revenue- Excess of 10 Billion USD in the year 2012

vi. TOYOTA JIDOSHA KABUSHIKI KAISHA V. PRIUS AUTO INDUSTRIES LTD. AND ORS. (2017)

This case is a landmark since it lays down the rule for establishing cross-border reputation in India. The Court remarked that even if Toyota was a prior user of the mark "PRIUS" outside of India, which was highly advertised over the internet and news channels, the mark failed to show/prove its reputation in India during the time defendant started using the mark "PRIUS"

in India in the year 2001. The court also made a very important observation that IP rights are territorial and not global.

Consequence

Use of a mark outside India or a trans-border reputation of a mark in India may not be enough to sustain a registration if it is attacked on grounds of non-use. Some use of the mark in India is required.

III. CONCLUSION

The author, through this article, has tried to establish the perpetual existence of the "overall impression test" which has been used by the courts to differentiate between two trademarks. The judgments over the years have only broadened the meaning of the term "overall impression" with regards to Trademark law, but the essence of the test remains the same. But it must also be noted that not every case is an easy case, and there might be situations where two marks have the exact same words, like it was in the case of Metropolitan Trading Company or there might be situations where the mark has reputation outside India, which spills over to India as well, like in the case of Royal Bank of Scotland Group. In these cases, the courts have looked into the test for distinctiveness and/or the concept of cross-border reputation, over and above the overall impression test. This all points to the progressive nature of the Indian Trademark law in practice.

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.