Similarity of marks is an issue that trademark law in India has consistently dealt with over time, with crucial principles evolving. As per judicial dicta, there should be only one trademark, one source and one proprietor. Thus, it is neither permissible nor advisable to use a mark similar to a registered mark. However, courts, as well as trademark legislation, has allowed the use of similar marks where the mark has been adopted honestly and bona fide, and has been used for a sufficiently long period of time.
In other words, if a resembling mark is found on the register or any other previous pending application, the trademark may be registered on proof of the honest and bonafide adoption of the trademark. It must also be established to the satisfaction of the Registrar of Trade Marks that the mark has been in continuous use for a sufficiently long time. The time period for the use of the mark to be considered as one under honest and concurrent use is undefined in the Act, however judicial pronouncements have rendered a minimum period of five to six years to qualify for such use.
The foremost criteria used by authorities to make out a case of similarity or deceptive similarity is whether any confusion would be caused in the mind of an unwary purchaser (a common prudent person). In Super Cassettes Industries Ltd v. Union of India & Ors, the Delhi High Court dealt with these aspects in a scenario where both marks used the letter T.
In the course of prosecution, an opposition had been filed by TELCO in June 1991. TELCO claimed elementary proprietorship of the letter T and asserted that if Super Cassettes was sanctioned registration, likelihood of deception and confusion would exist, since the letter T in a circle was the house mark of TELCO. Super Cassettes, in its rebuttal, asserted that it the trademark T-SERIES had been in use extensively and continuously since 1979 in respect of audiocassettes and subsequently for a variety of electronic goods. The mark was vouched to have acquired immense reputation, with members of the public associating the mark T-SERIES solely with Super Cassettes.
In this light, the Deputy Registrar of Trademarks rejected the opposition and directed Super Cassettes’ application for registration to be accepted. TELCO appealed this decision before the Intellectual Property Appellate Board (IPAB). Although it affirmed the grant of registration in respect of the mark TSERIES, the IPAB qualified the order of the Deputy Registrar by directing Super Cassettes to remove the circle around the letter T. Super Cassettes’ moved to Delhi High Court in appeal of this order.
The fundamental issue that came up for deliberation before the Delhi High Court surrounded the prevalence of similarity between competing marks. On a close comparison of marks, the Court opined that both marks were structurally, stylistically and substantially different. The Court concluded that there was no similarity in the two marks, much less a deceptive similarity which was likely to cause confusion.
The Court laid stress on Section 2(1) (h) of the Trademark Act 1999 dealing in deceptive similarity. The provision states that “a mark shall be deemed to be “deceptively similar” to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.”
The Court observed that Super Cassettes and TELCO were using the marks for different kinds of goods and hence concluded that the average consumer was unlikely to be either confused or deceived into mistakenly associating the mark T-SERIES with TELCO or its products, primarily being trucks and automobiles.
The Court further interpreted Section 17 of the Trademarks Act 1999, which provides that the registration of a composite mark confers on its proprietor the exclusive right to use it only as a whole. Consequently, the registration granted to TELCO for its composite mark did not give them any right to exclusive use over neither the letter T nor the letter T within a circle. The Court clarified that the alphabet T, per se, is not distinctive of any goods, thus granting no monopoly rights on the same. The Court remarked that the trademark registration granted to TELCO was not simply for the letter T, but in fact for the letter in combination with TATA ENGINEERING and the device of two twigs.
As this decision sorts out the exclusivity of the use of an alphabet in two marks, the Court in this attempt seems to have further clarified principles of usage of elements that form part of composite marks.
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