Court’s Decision
The Delhi High Court partly allowed the suit filed by a well-known dairy cooperative seeking a permanent injunction against a private company for using a deceptively similar trademark for milk and dairy products. The Court found that the defendant’s mark was phonetically and visually similar to the plaintiff’s registered mark and operated in the same product category, thereby creating a likelihood of confusion among consumers.
The Court restrained the defendant from using the impugned mark or any mark deceptively similar to the plaintiff’s mark in connection with milk, milk products, and allied goods. However, it permitted the defendant to use the mark in other unrelated product categories where no likelihood of confusion exists.
Facts
The plaintiff, a leading dairy cooperative with nationwide operations, has been using its distinctive trademark for decades in relation to milk, butter, cheese, and other dairy products. The mark enjoys statutory protection under the Trade Marks Act, 1999 and significant goodwill due to extensive marketing.
The defendant, a private company, began using a mark that closely resembled the plaintiff’s in spelling, sound, and trade dress for milk and dairy products. The plaintiff claimed this was an attempt to ride on its goodwill, mislead consumers, and cause dilution of its brand.
Despite a cease-and-desist notice, the defendant continued using the mark, leading the plaintiff to file a suit seeking injunction, damages, and delivery-up of infringing materials.
Issues
- Whether the defendant’s mark was deceptively similar to the plaintiff’s registered mark.
- Whether such similarity created a likelihood of confusion in the minds of consumers in the relevant market.
- Whether the plaintiff was entitled to a permanent injunction restraining the use of the impugned mark for dairy products.
Petitioner’s Arguments
The plaintiff contended that its mark was distinctive, registered in multiple classes, and had acquired a secondary meaning due to continuous and exclusive use. The defendant’s mark was nearly identical in phonetic pronunciation, overall get-up, and packaging style.
The plaintiff argued that under Sections 28 and 29 of the Trade Marks Act, 1999, infringement is established if there is a likelihood of confusion, and actual deception need not be proven. It relied on prior judgments emphasising that when two marks are similar and used for identical goods, the presumption of confusion arises.
The plaintiff also warned that allowing such use would dilute its brand, erode consumer trust, and encourage market free-riding.
Respondent’s Arguments
The defendant denied any intent to infringe, asserting that its mark had distinct graphic elements and was registered in its own name. It claimed differences in colour scheme, logo design, and overall presentation.
The defendant further argued that its operations were regional and targeted a different consumer segment, reducing any possibility of confusion. It maintained that the plaintiff could not monopolise common descriptive elements in the mark.
Analysis of the Law
The Court analysed the provisions of Sections 28 and 29 of the Trade Marks Act, 1999, which grant exclusive rights to registered proprietors and define infringement. It reiterated that the test is not actual confusion but the likelihood thereof, especially when the goods are identical.
The Court applied the “average consumer” test, noting that buyers of milk and dairy products are not expected to exercise a high degree of care in distinguishing brands, and decisions are often made quickly in retail settings. Thus, even minor similarities in phonetic sound or trade dress can mislead.
Precedent Analysis
- Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 – Laid down parameters for deceptive similarity, including phonetic resemblance and nature of goods.
- Amritdhara Pharmacy v. Satya Deo Gupta (1963) – Stressed the perspective of an average consumer in assessing similarity.
- Parle Products v. J.P. & Co. (1972) – Held that overall similarity, rather than meticulous side-by-side comparison, is key in infringement cases.
- Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (1965) – Differentiated between infringement and passing-off tests.
The Court drew heavily on these precedents to conclude that the defendant’s mark posed a risk of consumer confusion.
Court’s Reasoning
The Court found that the marks, when considered as a whole, were phonetically and visually similar and targeted at identical consumer segments for identical goods. The similarity was likely to cause confusion, especially among rural and semi-urban consumers who may be less discerning of subtle differences.
It rejected the defendant’s argument regarding regional operations, noting that trademark protection is territorial within India and not restricted by geographic market reach. The Court also held that registration of the defendant’s mark did not shield it from infringement liability if confusion was likely.
Conclusion
The Court granted a permanent injunction restraining the defendant from using the impugned mark or any deceptively similar mark for milk, dairy products, or allied goods. It clarified that the order did not apply to unrelated goods or services where no confusion was likely. The Court also ordered the defendant to withdraw all infringing packaging from the market within 60 days.
Implications
This judgment reinforces that trademark law protects not just against actual deception but also against the likelihood of confusion. It highlights that brand owners in the FMCG sector, especially in essential goods like milk, must vigilantly monitor and act against potential infringers. It also clarifies that registration is not a defence if the mark’s use infringes a prior registered right.
Short Note on Cases Referred
- Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. – Established parameters for assessing deceptive similarity.
- Amritdhara Pharmacy v. Satya Deo Gupta – Applied the average consumer test in assessing confusion.
- Parle Products v. J.P. & Co. – Emphasised overall impression of marks over meticulous comparison.
- Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories – Clarified the distinction between infringement and passing-off actions.
FAQs
1. Does a registered trademark guarantee immunity from infringement claims?
No. Even registered marks can be challenged if they are deceptively similar to an earlier registered mark.
2. Is proof of actual confusion necessary for trademark infringement?
No. Likelihood of confusion is sufficient to establish infringement.
3. Can geographic market differences be a defence in infringement suits?
No. Trademark rights are territorial and protect against infringement anywhere in India.