When Defendant's Trademark Is Identical To Plaintiff's Registered Trademark & Their Goods Or Services Are Identical, Confusion In Public Shall Be Presumed : Supreme Court

The Supreme Court observed that, in an action for infringement, when the trade mark of the defendant is identical with the registered trade mark of the plaintiff and that the goods or services of the defendant are identical with the goods or services covered by registered trade mark, the Court shall presume that it is likely to cause confusion on the part of the public.In an infringement action, an injunction would be issued as soon as it is proved that the defendant is improperly using the trademark of the plaintiff, the bench comprising Justices L. Nageswara Rao, BR Gavai and BV Nagarathna observed.The appellant-plaintiff filed a suit claiming a decree of permanent injunction to restrain the defendants from using the trade mark "SAI RENAISSANCE" or any other trade mark identical with their trade mark "RENAISSANCE",. The trial court partly decreed the suit by restraining the defendants from using the trademark "SAI RENAISSANCE" or any other trade mark which incorporates the plaintiff's trade mark "RENAISSANCE" or is deceptively similar thereto. The High Court, allowing defendant's appeal, observed that there was no infringement of trade mark, and set aside the Trial Court judgment. This made the plaintiff approach the Apex Court.The court, in the judgment, after briefly discussing legislative history/scheme with regard to the trademark laws (Trade Marks Act, 1999) (Para 25- 42) and observed thus:"42. It could thus be seen that in all legal proceedings relating to trade mark registered under the said Act, the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof. 43. The legislative scheme is clear that when the mark of the defendant is identical with the registered trade mark of the plaintiff and the goods or services covered are similar to the ones covered by such registered trade mark, it may be necessary to prove that it is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. Similarly, when the trade mark of the plaintiff is similar to the registered trade mark of the defendant and the goods or services covered by such registered trade mark are identical or similar to the goods or services covered by such registered trade mark, it may again be necessary to establish that it is likely to cause confusion on the part of the public. However, when the trade mark of the defendant is identical with the registered trade mark of the plaintiff and that the goods or services of the defendant are identical with the goods or services covered by registered trade mark, the Court shall presume that it is likely to cause confusion on the part of the public."Then it refers to Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories [1965] 1 SCR 737, Ruston & Hornsby Limited v. Zamindara Engineering Co. (1969) 2 SCC 727 and noted thus:"45.It could thus be seen that this Court has pointed out the distinction between the causes of action and right to relief in suits for passing off and for infringement of registered trade mark. It has been held that the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trade mark, cannot be equated. It has been held that though an action for passing off is a Common Law remedy being an action for deceit, that is, a passing off by a person of his own goods as those of another; the action for infringement is a statutory right conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive rights to the use of the trade mark in relation to those goods. The use by the defendant of the trade mark of the plaintiff is a sine qua non in the case of an action for infringement. It has further been held that if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the getup, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark, would be immaterial in a case of infringement of the trade mark, whereas in the case of a passing off, the defendant 38 may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff"47.It could thus be seen that this Court again reiterated that the question to be asked in an infringement action is as to whether the defendant is using a mark which is same as, or which is a colourable imitation of the plaintiff's registered trade mark. It has further been held that though the get up of the defendant's goods may be so different from the plaintiff's goods and the prices may also be so...

When Defendant's Trademark Is Identical To Plaintiff's Registered Trademark & Their Goods Or Services Are Identical, Confusion In Public Shall Be Presumed : Supreme Court

LIVELAW NEWS NETWORK

"In an infringement action, an injunction would be issued as soon as it is proved that the defendant is improperly using the trade mark of the plaintiff".

Tags