2013 (10) TMI 501 - HC - Companies Law

Trademark infringement - Permanent injunction - Deceptively similar trademark - Held that - tests of deceptive similarity in the case of infringement is the same as in the case of passing-off action, where the marks are not identical but in my humble opinion the said test in the case of infringement is to be confined only to comparison of the marks and the factors of pricing, trade channels etc., which in a passing-off action, in spite of similarity of marks may deprive the plaintiff of an injunction, can have no applicability in a infringement action once similarity is established - The Act, in Section 29 lays down the test of identity, similarity or deceptive similarity with the registered trademark only and not of confusion as in the case of passing-off, on the anvil of not only similarity of marks but also of prices, trade channels etc. The Act, in Section 2(h) defines deceptive similarity also on the touchstone of resemblance likely to deceive or cause confusion and not extending to pricing, trade channels etc. In my view, since the infringement action is statutory, the test of infringement cannot be extended beyond the parameters of the statute, by incorporating therein factors of pricing, trade channels etc. which are not laid down as tests of infringement in the statute. While comparing only the broad and essential features are to be considered and it would be enough if the impugned mark/label bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him - Following decision of Parle Products (P) Ltd. Vs. J.P. & Co., Mysore (1972 (1) TMI 98 - SUPREME COURT). Plaintiff has been successful in making out a case of infringement by the defendant of its registered trademark OLD MONK and OLD MONK Label by use of the mark TOLD MOM and TOLD MOM Label in relation to rum, even though falling in the Excise category of country liquor - permanent injunction is accordingly passed in favour of the plaintiff and against the defendant, restraining the defendant its directors, wholesalers, distributors, officers and agents from manufacturing, selling, offering for sale, distributing, advertising or directly or indirectly dealing in alcoholic beverages bearing the trademark TOLD MOM and under the TOLD MOM Label or any other mark or label identical and/or deceptively similar to the registered trademark OLD MONK and OLD MONK Label of the plaintiff - Decided in favour of appellant.

Issues Involved:
1. Permanent injunction against the defendant for trademark infringement.
2. Comparison and analysis of the trademarks "TOLD MOM" and "OLD MONK."
3. Defendant's defense and arguments.
4. Plaintiff's rejoinder and arguments.
5. Court's analysis and decision on trademark similarity and infringement.
6. Final judgment and decree.

Detailed Analysis:

1. Permanent Injunction Against the Defendant for Trademark Infringement:
The plaintiff sought a permanent injunction to restrain the defendant from manufacturing, selling, offering for sale, distributing, advertising, or dealing in alcoholic beverages, especially Indian Made Foreign Liquor (IMFL), under the trademark "TOLD MOM" or any mark deceptively similar to the plaintiff's trademark "OLD MONK." The plaintiff also sought ancillary reliefs such as delivery, damages, etc.

2. Comparison and Analysis of the Trademarks "TOLD MOM" and "OLD MONK":
The plaintiff claimed that the defendant's trademark "TOLD MOM" was deceptively similar to its trademark "OLD MONK," which had been in use since 1959 and had acquired significant goodwill and reputation. The defendant argued that "TOLD MOM" was a coined, distinctive, and arbitrary mark, inherently dissimilar to "OLD MONK." The plaintiff contended that the defendant's use of "TOLD MOM" was an attempt to pass off its product as that of the plaintiff's, thereby encashing upon the goodwill and reputation of "OLD MONK."

3. Defendant's Defense and Arguments:
The defendant argued that its mark "TOLD MOM" and the associated label did not infringe the plaintiff's trademark rights. The defendant claimed that "TOLD MOM" was a thoughtfully coined mark, inherently distinctive, and had achieved exceptional success. The defendant also argued that the products were sold through different trade channels, with the plaintiff's product being IMFL and the defendant's being country liquor, which would not lead to consumer confusion. The defendant further contended that the price difference between the products would prevent any likelihood of confusion.

4. Plaintiff's Rejoinder and Arguments:
The plaintiff countered that the defendant's product was described as "rare old rum," similar to the plaintiff's product, and that both products fell under Class 33 of the Trademark Rules, covering alcoholic beverages. The plaintiff argued that the defendant's use of "TOLD MOM" would hurt the plaintiff's goodwill and reputation. The plaintiff emphasized that the trademarks were phonetically and structurally similar, likely to cause deception among consumers.

5. Court's Analysis and Decision on Trademark Similarity and Infringement:
The court analyzed the similarity between the trademarks "TOLD MOM" and "OLD MONK." It noted that the test of similarity should consider the nature and class of consumers, the environment in which the trademark is used, and the overall impression of the marks. The court found a close phonetic similarity between "OLD MONK" and "TOLD MOM," likely to cause confusion among consumers. The court held that the defendant's use of "TOLD MOM" infringed the plaintiff's trademark rights, as both products were described as rum and marketed as alcoholic beverages.

6. Final Judgment and Decree:
The court concluded that the plaintiff had successfully made out a case of trademark infringement. A decree of permanent injunction was passed in favor of the plaintiff, restraining the defendant from manufacturing, selling, offering for sale, distributing, advertising, or dealing in alcoholic beverages bearing the trademark "TOLD MOM" or any mark deceptively similar to "OLD MONK." The plaintiff was also entitled to the costs of the suit.

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