ApplesTree vs ApplePlant: How Delhi High Court Interpreted Synonymy In A Trademark Infringement Suit

Interpreting synonymy in a matter related to two similar trademarks - APPLESTREE and APPLEPLANT, which belong to different manufacturers, the Delhi High Court in a recent order said the words 'plant' and 'tree' are a classic example of synonymy where reading one would bring in mind the other and lead to confusion in the mind of purchasers.Justice Jyoti Singh noted that the study of semantic theory goes back to the founder of common linguistics W. Humboldt, and the theory suggests that the words in the English language system are so related that they form a complete lexical system and grouping. "Synonymy would cover the semantic field where words have nearly the same meanings such that they can be interchanged in some degree and most common cases under this head are of relative synonymy as it is difficult to find words which are absolute synonyms of each other," said Justice Singh.The court added, "As an illustration, under this concept, purple, pink, white, brown, violet etc. would fall under the genus 'colours' and similarly, knives, spoons, forks would have a semantic relationship with the genus 'cutlery'. "The court made the observation in an interim order on a trademark suit filed by an abrasive products manufacturer who sold his tools under the trademark ApplesTree. The plaintiff in the suit has accused the defendant of using similar trademarks like ApplePlant and NuApplePlant for marketing of identical products. Commenting on the use of 'plant' and 'tree' in the two trademarks, the court said the confusion will be enhanced where they are used for identical products with class of purchasers and trade channels also being identical."No purchaser, while buying the 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," said the court. Therefore, the court passed an interim injunction restraining the sale, advertisement or promotion of any product under the mark 'APPLEPLANT' or any other mark deceptively similar to 'APPLESTREE' in the suit filed by Vinita Gupta, proprietor of a firm manufacturing and selling abrasive paper and other products under its registered trademark.Claiming that the registered trademark 'APPLESTREE' has been used by them since 2008 and had become well known owing to huge sales of its products, Gupta in the suit accused Amit Arora of using deceptively similar trademark 'NUAPPLEPLANT' for marketing of identical products.The court was told that after becoming aware about Arora's usage of the trademark for similar products, a legal notice was sent to him on January 27, 2022. However, the suit alleges, Arora continued to use the impugned trademark, resulting in filing of the suit.While granting interim injunction in favour of Gupta, the court took a prima facie view that the word APPLE is a prominent part of Gupta's trademark and copying the same, especially when the competing products are identical, would lead to deceptive similarity. "Defendant (Arora) has copied the essential part of Plaintiff's trademarks and has merely added the suffix PLANT as well as a prefix NU thereto," the court said.The court further said that the mark NUAPPLEPLANT is deceptively similar to the mark APPLESTREE when compared and seen visually. "In my prima facie view, learned counsel for the Plaintiff is also right in contending that not only there is a visual similarity in the competing marks but the two are also similar in idea i.e. semantic similarity," the court observed.The adoption of the impugned trademark by Arora prima facie is dishonest, said the court. It further noted that he has not been able to give a plausible explanation as to how he came across and decided to use the mark APPLE as a part of its trademark, considering that the word has no association with the products in question such as abrasive papers."Viewing the two trademarks, the prima facie conclusion that this Court draws is that an attempt has been made by the Defendant to pass off his goods under the impugned trademark by coming as close as possible to the Plaintiff's packaging/label in terms of colour combination, background colour, graphics, etc," the interim order said.The court also said that the addition of the prefix 'Nu' to the impugned trademark cannot take away the semantic similarity of the two competing marks and make them distinguishable. "In my view, Plaintiff has made out a prima facie case for grant of injunction. Balance of convenience also lies in favour of the Plaintiff who has been using the trademark since the year 2018, i.e., prior in point in time to the Defendant who has dishonestly chosen to adopt a deceptively similar trademark in 2019 in respect of identical goods, with a view to pass off...

ApplesTree vs ApplePlant: How Delhi High Court Interpreted Synonymy In A Trademark Infringement Suit

Awstika Das

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