This article is written by Teena Sharma who is pursuing a Certificate Course in Intellectual Property Law and Prosecution from LawSikho.
Trademark is a form of Intellectual Property which could consist of a sign, a symbol, design, word(s) or expression which is capable of identifying and differentiating the product(s) or service(s) of a particular source from that of others. The Trademark that identifies services are known as Service Marks. Trademark is basically used to advertise a product or services and it helps in protecting the consumers from being deceived due to confusion caused due to failure to identify the source and/or origin of particular good(s) and service(s).
It is generally believed by the consumers that all the product(s) or item(s) bearing the particular symbol on it belongs and comes from the same source, manufacturer or service provider. Thus Trademark has the ‘source-identifying’ quality or property of a product or services.
In order for a subject matter to qualify as property, a trademark has to be ‘distinctive.’
The Trade and Merchandise Marks Act, 1958 of India, as a matter of practice, in relation to the registrability of marks provided for a bifurcation depending upon the inherent or acquired distinctiveness of the mark-
- Where in Part A of the trademark register, only inherently distinctive marks were registrable.
- Whereas, in Part B, a trademark even if it was not ‘distinctive’ but was ‘capable of distinguishing could be registered.
The Trade and Merchandise Marks Act, 1958 was ultimately repealed by the Trade Marks Act, 1999. The system of registration of Trademark has simplified under The Trade Marks Act, 1999 by doing away with Part A and Part B, in fact, incorporated both Parts A and B into one register. The Act has introduced in the mark, the expression ‘distinctive character’ which implies the ‘capability of distinguishing.’ The mark attains/acquires a distinctive character due to use and/or has become a well-known trademark.
The Act does not provide any criteria to judge or for determining what is likely to deceive or can cause confusion. So, it varies from case to case and depends on the particular facts. A mark is usually viewed or considered as a whole and it will not be rejected just because its parts are descriptive or lack distinctiveness or customary in trade. Exclusion of marks lacking distinguishing features depends upon the assessment of whether the mark is devoid of distinctive character. Then again the concentration is on how the relevant public would perceive the trademark in question.
The concept of deceptive similarity as a ground for trademark infringement has been widely recognised by the Indian legal system. The term ‘deceptive similarity’ has been acknowledged under Section 2(h) of The Trade Marks Act, 1999 but it lacks rigid criteria to narrow the ambit or scope of adjudication by the judiciary.
The question that whether the use of similar trademarks along with distinct house marks generates enough distinctiveness which allow consumers to differentiate between the two products, differs from case to case. It depends upon the facts of the case and relating circumstances like:
- Mode of purchasing like whether the product is being purchased directly from the Website, other online sites or through offline mode,
- Class of consumers, and
- The extent of similarity.
There has been an increase in the number of IP litigations in India, therefore, the Indian judiciary has made immense contribution in interpreting trademark laws as well as lowering down the confusion regarding the intent of the legislature.
Courts have made it clear from time to time that there cannot be a viable straitjacket formula to be applied to all cases. It largely depends upon the facts of the case and upon an ordinary man’s reasoning, that is, of the average customer. The Courts have time and again opined that the aspect of deceptive similarity is subjective in nature and therefore, each case must assessed on its own taking into account the ‘matter in issue’. There is no streamlined criteria of infringement for all cases would be applicable. Although there is no guidelines used for proving deceptive similarity. but focus should be on a specific principle depending upon the form of similarity, overall, a few principles have been followed time and again like the nature of the mark, the degree of visual and phonetic resemblance between the marks, the similarity between the products or services or the class of purchasers and the mode of purchasing, and lastly, any other circumstances relevant to the case, depending on the facts.
Further, while judging in toto, the responsible factors also include consumer base and packaging. It is, therefore, an appropriate description of the “state of mind of a customer” who, when seeing a mark makes an impression that it differs from the mark on goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection. Thus a deceptively similar mark may induce the consumer to make an error into thinking that a certain good has another origin point, which the consumer associates with the original product/mark.
Plaintiff– MESO Private Limited
Defendants- Liberty Shoes Ltd and Liberty Lifestyle
History of the Case
MESO Private Limited used to manufacture and sell as well as export its different varieties of cosmetic products which included two perfumes with the trademarks Legend and Flirt with the house mark: Devon.
MESO was assigned the trademark ‘Flirt’ by Shebro On 28 June, 2016 and the trademark ‘Legend’ by Ultima on 14 January, 2019. But both these marks were registered in the years 1994 and 1988respectively.
Whereas Liberty Group manufactured and sold footwear and lifestyle products including fashion accessories for different class of consumers. Liberty Group introduced luxury lifestyle products in October 2018 with a new brand namely: Liberty Lifestyle. Under the brand name- Liberty Lifestyle it announced to launch new Eau de Perfume range of 12 perfumes which included perfumes with the marks- Legend and Flirt. It got wide publicity and the said brand of perfumes were to be sold on their website- www.libertylifestyle.co.in including other e-commerce websites like Amazon, Flipkart, etc.
On 3 November 2018, MESO sent a letter to Liberty Lifestyle asking them to cease using the marks Legend and Flirt including any other mark(s) which are identical to or deceptively similar to that of MESO’s trademarks. Their claim were defied by Liberty Lifestyle in reply, stating that the mark(s) Legend and Flirt were generic, common, and dictionary words which were used by others as well.
A suit for trademark infringement and passing off was filed by Meso against Liberty for the launch of two perfumes with the mark(s) ‘Legend’ and ‘Flirt’.
Whether the use of house name along with the registered mark negate the likelihood of confusion?
Section 29(2)(c) – Trade Marks Act, 1999
The primary contention of Meso was that its Marks were registered in the year 1988 and 1994 respectively and it claims that it has prior use.
Meso obtained an ex-parte ad-interim injunction before the Single Judge, restraining Liberty from using the names or marks ‘Legend’ and ‘Flirt’. Thereafter, the Hon’ble Court held in Meso’s favour that the rival marks were identical and such adoption by Liberty was deliberate and dishonest and could not be coincidental as there were no reasons to adopt identical trademarks.
Liberty, thereafter, applied for vacation of the Court’s ex-parte order. The Court was vacated on the ground that-
Firstly, both the marks ‘Legend’ and ‘Flirt’ were commonplace marks;
Secondly, on the ground that Meso was using the brand name Devon prefixing the marks ‘Legend’ and ‘Flirt’ and on the other hand, Liberty was using brand name ‘Liberty’ prefixing its respective marks; and
Thirdly, it was observed that there were several perfumes in the market with the marks ‘Flirt’ and ‘Legend’ along with their brand name.
Thereafter, Meso Private Limited (‘Meso’) filed an appeal before the Bombay High Court (Meso Private Ltd. v Liberty Shoes Ltd. & Ors.), it was held by the Division Bench of the Bombay High Court that the premium lifestyle product, such as perfumes are not chosen by the consumers causally. The choice of product like perfume depends upon the fragrance, blends, diffusion, distillation and concentration of perfume.
Therefore, a product like perfume cannot be chosen with indifference. Recommendations for buying such products are exchanged on the basis of house name. So there was no likelihood of confusion and no infringement by the Liberty Shoes Ltd (‘Liberty’) in relation to marks ‘Legend’ and ‘Flirt’ used for perfumes because the said marks in question were used along with their house name/marks by both ‘Liberty’ and ‘Meso’ and hence the two sets of perfumes would easily be distinguished by the consumers.
This judgment by the Appeal Court raises an important question that at the interim stage, whether the Single Judge should have gone deep into the validity of a mark to find out that a mark being common to the trade or generic in such a way that it deems to shock the conscience of the Court? Thus, this aspect was not been reviewed by the Appeal Court in detail. To shed more light on the jurisprudence relating to registered marks being generic or common to the trade, we have to wait for further court decisions.
- K & K, A Holistic Compendium, Indian Trademark Case Summery for 2019-author- Tarun Khurana, Abhishek Pandurangi and Niharika Sanadhya
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