TM registration – inoculation against infringer claims?

Delhi High Court recently decided an unusual dispute involving one registered proprietor alleging infringement by another. The court found for the plaintiff under sections 28 and 29 of the Trade Marks Act, 1999 (act).

The plaintiff, Jaquar and Compay Private Limited, the registered proprietor of the trademarks Artize – Born From Art and Tiaara alleged that the defendant, Ashirvad Pipes Private Limited had infringed its marks through the use of the registered mark, Artistry, and the unregistered Tiara mark. The plaintiff applied for an injunction. The plaintiff had already filed a rectification petition for the removal and cancellation of the defendant’s Artistry mark.

The plaintiff submitted that it had been the prior user of the Artize and Tiara marks since 2008 and 2016, respectively. It argued that the defendant’s use of marks on goods in the same sector as those of the plaintiff proved its bad-faith adoption of those marks. The plaintiff alleged the defendant intended to create a false association with the plaintiff.

The defendant submitted that it was the registered proprietor and there could be no claim for infringement. There was, at most, a claim for passing off. The mere existence of a prior mark did not of itself show bad-faith adoption. It relied on the Pianotist test and the judgment in the Lakshmandhara case, arguing that a mark must be considered by taking into consideration all surrounding factors and that consumers of luxury goods were discerning consumers.

The defendant claimed that the petition was not maintainable because the plaintiff’s rectification application was pending and the civil court must find valid grounds for doubting the validity of the mark to permit the plaintiff to plead infringement.

The plaintiff replied that infringement must be assessed on the basis of initial interest confusion. It should not be assumed a consumer had the opportunity to compare the marks side by side. The judgment in Raj Kumar Prasad allowed for an injunction against a registered mark if the plaintiff pleaded invalidity of the defendant’s mark.

The defendant asserted that the claim for infringement was made on the sole grounds of priority of the plaintiff’s mark. It stated that although rectification petitions had been filed, the plaintiff was required to file an application under section 124 of the act for the court to find the grounds existed to challenge the validity of the defendant’s mark. This in turn would give way to an allegation of infringement. Because no such application had been made, the plaintiff could at most allege passing off.

The court held that the validity of the plaintiff’s registration was not a prerequisite for an infringement claim. Only the requirements under the section had to be satisfied. The court did accept that the validity of the plaintiff’s registration was a necessary requirement for obtaining relief against infringement. The court held that Raj Kumar Prasad dealt with the legal implications of a registered mark being infringed by another registered mark. Sections 28(3) and 124(1), when read together, allowed an infringement action against a registered mark. The court also decided it could grant interlocutory orders between the filing of the case and receipt of the findings as to the validity of the infringing mark.

The court analysed the similarities between the marks and held that the use of a device did not mitigate the phonetic similarities between the words, which were the prominent part of the marks. When the marks were phonetically similar and the trade dress had identical colour combinations, the arguments that consumers of luxury goods were discerning consumers were deeply flawed and required evidence. The court took a consumer as one of average intelligence and imperfect memory and marks must be analysed accordingly.

As to initial confusion, the court held that a consumer did not have the opportunity to compare infringing marks side by side. If, at first glance, a consumer began to consider an association between the two marks, deceptive similarity was established.

The court held that there was deceptive similarity between the marks and that the conditions in sections 29(1) and 29(2)(b) were satisfied. There was ample evidence on the face of it to support the validity of the plaintiff’s mark. The court granted the injunction.

Manisha Singh is a partner and Tushitta Murali is an associate at LexOrbis.