'Family Of Marks' Concept Not Expressly Recognised Under Trademarks Act, But Can Be Applied To Injunct Specific Marks: Delhi High Court

The Delhi High Court has held that though the Trade Marks Act 1999 does not expressly recognise the concept of a 'family of marks' however, the same is judicially developed and can be invoked by a registered trademark owner to seek injunction against specific marks.A division bench of Justices C. Hari Shankar and Ajay Digpaul ruled,“When an entity is the proprietor of a number of registered trademarks containing a common prefix or suffix, or a common first or second word, any other mark by a third party which would contain the same first or second word, if used for similar goods or service, could result in likelihood of confusion…It is this concept which is elliptically described as the “family of marks” concept. Thus, the concept of a family of marks is not alien to the Trade Marks Act, but merely a recognition of the principles that underlie the statute.”The bench however clarified that the injunction granted under this concept cannot be absolute and has to be decided on a case to case basis, against marks which are specifically under challenge before the court. It reasoned,In this case, the Appellant having registered trademark 'CONTIN' sought to restrain the Respondent from using impugned 'FEMICONTIN' mark or any of the CONTIN family of marks.As the single judge had rejected the suit, the Appellant approached the High Court.The Appellant claimed exclusivity over the use of CONTIN as a prefix or a suffix in any trademark by any third party for goods covered by Class 5 or which are allied or cognate thereto.Disagreeing, the High Court held,“Though the principle of a family of marks is well recognised, the Court cannot, without actual facts before it, presume that every mark of which CONTIN is a part, and which may deal with pharmaceutical preparations, is necessarily infringing in nature. One may, for example, hypothetically, envisage the use of a mark with the word “CONTINUOUS” or “CONTINGENT” which, hypothetically, may not be infringing even if it is used for pharmaceutical preparations, and contains “CONTIN”.”In this regard, the High Court relied on Bennett Coleman and Co. Ltd v Vnow Technologies Pvt Ltd (2023) and Bennett Coleman and Co. Ltd v Fashion One Television LLC (2023) where the marks VNOW and FASHION NOW used by the Respondents were in question.The High Court had allowed the petitions in both the cases, noting the proprietorial rights of Bennett Coleman in the “NOW” family of marks, which included TIMES NOW, ET NOW, etc.However, the High Court did not grant an absolute injunction, across the board, in favour of the family of marks holder and against all third parties from using the common feature of the family of marks in any case.The single judge had also ruled that the family of marks concept applies only to passing off, and not to infringement.Disagreeing with this view, the division bench cited Amar Singh Chawal Wala whose infringement claim against Shree Vardhman Rice over use of 'Qilla' mark for rice was allowed.“The finding of the learned Single Judge that the family of marks concept would apply only to passing off, is not correct,” the High Court ruled.Appearance: Mr. Pravin Anand and Ms. Prachi Agarwal, Advs for Appellant; Mr. Gagan Gupta, Sr. Adv. with Mr. Saurabh Gupta, Adv. for R-1Case title: Modi Mundipharma Pvt. Ltd v. Speciality Meditech Pvt. Ltd. & Anr.Citation: 2025 LiveLaw (Del) 746Case no.: RFA(OS)(COMM) 8/2023Click here to read judgment

'Family Of Marks' Concept Not Expressly Recognised Under Trademarks Act, But Can Be Applied To Injunct Specific Marks: Delhi High Court

Kapil Dhyani

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