Apple not falling far enough from the tree

By Manisha Singh and Malyashree Sridharan, LexOrbis
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In the recent case of Vinita Gupta v Amit Arora, the Delhi High Court considered the concept of semantic and conceptual similarity in dealing with two trademarks, Applestree and Appleplant. The courts have had little to do with conceptual similarity as a standalone test; it has usually been paired with other tests to determine the similarity between rival marks. It compares the underlying idea or concept that the rival marks imply or project, and was first analysed by the Supreme Court in the case of Corn Products Refining Co. v Shangrila Food Products Ltd. in 1959.

Manisha Singh, LexOrbis
Manisha Singh
Partner
LexOrbis

In Vinita Gupta, the plaintiff applied for an injunction to restrain the defendant and others on his behalf from selling, offering for sale, advertising or promoting any product under the trademark Appleplant or any trademark similar to the plaintiff’s trademark Applestree. The plaintiff asserted that the trademark Applestree was coined by her husband in 2008 and was well known. Large volumes of sales were generated for various products under this mark such as abrasive strips, abrasive rolls and abrasive paste. The plaintiff also claimed copyright in the artistic work of the packaging that had also been created by her husband in 2008. The plaintiff held registrations for the Applestree trademark in classes 03, 08, 07 and 17.

The defendant applied for his trademark in class 03, when it was advertised in the Trade Marks Journal in November 2021. The plaintiff filed an opposition, and the defendant filed a counterstatement. The plaintiff also learnt of the defendant’s trademark registration for the trademark NUAppleplant in Class 03, and filed a rectification petition. Alleging that the defendant was dealing in an identical range of products, the plaintiff served a cease-and-desist notice, but the defendant continued using the mark.

Malyashree Sridharan, LexOrbis
Malyashree Sridharan
Associate
LexOrbis

The defendant submitted that he had adopted the trademark NUAppleplant and its graphic and started using them in 2019. This was known to the plaintiff. The defendant said that the trademarks were distinct, visually and phonetically, and were not identical or similar. There was no similarity of packaging, trade dress or layout, as alleged by the plaintiff and there was no likelihood or possibility of confusion or deception among consumers and members of the trade. No monopoly or exclusivity could be claimed by the plaintiff, as the term apple is generic in nature and could not be regarded as distinctive.

Analysing the marks Applestree and NUAppleplant, the court held that the word apple and its representation was a prominent part of the plaintiff’s trademark. Copying the prominent part, especially when the competing products were identical, would lead to deceptive similarity. The defendant had copied the essential part of the plaintiff’s trademarks and merely added the suffix plant and the prefix NU. The court held that not only were the marks visually similar but also similar in idea, that is semantic similarity. Relying on an earlier decision of the Delhi High Court in Shree Nath Heritage Liquor Pvt. Ltd. v M/s Allied Blender & Distillers Pvt. Ltd., the court, in analysing semantic theory, observed:

“No purchaser, while buying products such as abrasive paper, will dissect the trademark to find a scientific (botanical) difference between a plant and tree, especially when both are even otherwise synonymous to each other. A purchaser with average intelligence and imperfect recollection would go by the overall and first impression of the trademark and the similarity in idea is likely to cause confusion.”

The court held that the defendant copied the essential part of plaintiff’s trademarks, merely added the suffix plant and the prefix NU. There was both visual similarity in the competing marks and similarity in ideas, that is semantic similarity. Comparing the trademarks, the court held there was sufficient evidence of the defendant attempting to pass off his goods by copying as closely as possible the plaintiff’s colour combination, background colour and graphics of her packaging and labelling.

The court granted the injunction. The balance of convenience was also in favour of the plaintiff, who had been using her trademark prior to the defendant using his. The defendant had dishonestly adopted a deceptively similar trademark for identical goods, so as to pass off his goods as those of the plaintiff.

Manisha Singh is a partner and Malyashree Sridharan is an associate partner at LexOrbis

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