In deciding the question of similarity between two marks, the marks have to be considered as a whole for Trademark Infringement
Legal principles applicable to cases of infringement with particular reference to dissimilarities in essential features of a device or mark.
Under Section 23 of the Act, a plaintiff in a suit on basis of infringement has to prove not only that his trademark is infringed by a person who is not a registered proprietor of the mark or a registered user thereof but that the said person is using a mark in the course of his trade, “which is identical with or deceptively similar to the trade mark of the plaintiff, in such manner as to render the use of the mark likely to be mistaken as the registered trade mark.” Under Section 2(d) the words “deceptively similar” are defined as follows:
“a mark shall be deemed to be deceptively similar to another Dissimilarity in essential features in devices and composite marks more important than some similaritymark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.”
We shall now refer to the broad principles applicable to infringement actions and in particular to devices, labels and composite marks.
Essential Features if copied:
It is well-settled that the plaintiff must prove that essential features of his registered mark have been copied. The onus to prove ‘deception’ is on the part of the plaintiff who alleges infringement. A mark is said to be infringed by another trader if, even without using the whole of it, the latter uses one or more of its “essential features.” The identification of an essential feature depends partly on the Courts own judgment and partly on the burden of the evidence that is placed before it. Ascertainment of an essential feature is not to be by ocular test alone; it is impossible to exclude consideration of the sound of words forming part or the whole of the mark. (Kerly, Law of Trade Marks and Trade Names, 11th Ed. 1983, Para 14.21).
It is no answer to a charge of infringement – as contrasted with a passing off action – that the defendant’s mark, whilst including the plaintiff’s mark, includes other matters too. Still less is it an answer that by something outside that actual mark the defendant has distinguished his goods from those of the plaintiff by adding his own name (Kerly para 14.22). But this principle is not absolute. It is also accepted that addition of his own name by defendant is an element to be considered and may turn the scales in favour of the defendant. In same para 14.22, Kerly says:
“But the use of the defendant’s name as part of the mark complained of is an element to be considered and in some cases it has turned the scale in his favour” (Jewsbury and Brown v. Andrew and Atkinson, (1911) 28 RPC 293)”
Jewsbury case was a case relating to infringement. (Of course, in Para 14.25 Kerly also refers to cases where addition of defendant’s name has not turned the scales).
So far as resemblance in words is concerned, Justice Parker in Pianotist Co’s Applications (Pianola) has stated as follows:
“You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy the goods. In fact, you must consider all the surrounding circumstances and you must further consider what is likely to happen if each of these trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If considering all those circumstances, you come to the conclusion that there will be confusion – that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but there will be confusion in the mind of the public which will lead to confusion in the goods – then you may refuse registration, or rather you must refuse registration in that case.”
This dictum has been quoted with approval by supreme Court in Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449 and Roche v. Geoffrey Manners and Co. Pvt. Ltd., AIR 1970 SC 2062.
Devices and Composite Marks:
But the considerations relating to words, however, differ appreciably when device marks are to be compared or when a device mark is to be compared with a word mark. (Kerly Para 17.07). After referring to the factors mentioned by Parker, J. in the above case, it is stated in Halsbury’s Laws of England, (Vol. 38, 3rd Ed., Para 986) as follows:
“These considerations differ to some extent when device marks are being compared or when a device mark is compared with a word mark.”
Dissimilarity in essential features in devices and composite marks more important than some similarity:
It has been stressed for the appellant that since the word PICNIC is used by defendant while plaintiff is using its misspelling PIKNIK, this is an essential feature which is similar phonetically or visually, and there is therefore infringement. It is argued that presence of even one essential feature in defendant’s mark is sufficient. In our opinion, in the case of devices and composite marks, the above principle has not been strictly applied. The English Courts have laid emphasis more on dissimilarities in essential features rather than on similarity. The “whole thing” principle is based on first impression as seen by the Court. We shall now refer to these principles laid down in the English cases.
When the question arises whether a mark applied for bears such resemblance to another mark as to be likely to deceive, it should be determined by considering what is the leading character of each. The one might contain many, even most, of the same elements as the other, and yet the leading, or it may be the only, impression left on the mind might be very different. On the other hand, a critical comparison of the two marks might disclose numerous points of difference. and yet the idea which would remain with any person seeing them apart at different times might be the same. Thus, it is clear that a mark is infringed if the essential features, or essential particulars of it, are copied. In cases of device marks, especially, it is helpful before comparing the marks, to consider what are the essentials of the plaintiff’s device. (Kerly para 17.08). The trade mark is the whole thing – the whole picture on each has to be considered. There may be differences in the parts of each mark, but it is important to consider the mode in which the parts are put together and to judge whether the dissimilarity of the part or parts is enough to make the whole dissimilar. It has been said that if the only resemblances between two marks are in parts which are common, so that the owner of the one has taken nothing which is peculiar to the other, then there is at all events no infringement, at any rate unless the plaintiff had a distinctive arrangement of the common elements. But this approach is hardly suited to a comparison word marks:and even in relation to label marks or other features of get-up, it would be more appropriate to consider the case as a whole, with due regard to the background provided by any other marks shown to be in use (Kerly Para 17.17). Therefore, the question is whether the defendant has, so far as the common feature is concerned, – copied any distinctive arrangement of the common elements? Or has copied any unusual feature of the common element (Crispin’s Appln., (1917) 34 RPC 249) (See Kerly Para 17.19, fn. 77). The marks, names or get-up concerned must always be considered as the whole thing, as the true test is whether the totality of the impression given both orally and visually is such that it is likely to cause mistake, deception or confusion (Halsbury Vol. 38, 3rd Ed. Para 987).
We next come to the crucial test laid down by Evershed M.R. in Broadhead’s Application, (1950) 67 RPC 209 at 215 which was a case relating to opposition to registration. The Master of Rolls followed the observations of Lord Russel in Coca Cola Co. of Canada v. Pepsi Cola Co. of Canada (which was an infringement action) (1942) 59 RPC 127 and observed as follows:
“Where you get a common denominator, you must in looking at the competing formulas, pay much more regard to the parts of the formulas which are not common – although it does not flow from that that you must treat the words as though the common part was not there at all.”
Where common marks are included in the rival trade marks, more regard is to be paid to the parts not common and the proper course is to look at the marks as whole, but at the same time not to disregard the parts which are common. Halsbury (3rd Ed. Para 992) also says:where there are common elements to two or more marks, more regard must be paid to the parts that are not common but the common parts cannot be disregarded. (Coca Cola Co. of Canada Ltd. v. Pepsi Cola Co. of Canada Ltd., (1942) 1 All ER 615 (PC).
The above principles have been laid down in English law.
Decisions of supreme court – infringement, essential features and the whole thing
Supreme Court has laid down in Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142 which was a case of infringement, that it would be for the Court to decide whether the marks were similar. It was observed that “in deciding the question of similarity between two marks, the marks have to be considered as a whole.” Again in K.K. Chinna Krishna Chettiar v. Sri Ambal and Co., AIR 1970 SC 146 where the question of similarity arose at the stage of opposition to the appellant’s mark by the respondents (who had a registered trade mark), it was observed that:
“it is for the Court to decide the question on a comparison of the competing marks as a whole.” The resemblance between the two marks must be considered with reference to the ear as well as the eye.” In Roche and Co. v. Geoffrey Manners and Co. Pvt. Ltd., AIR 1970 SC 2062 the question of ‘deceptive similarity’ was raised by the appellant (a registered trade mark holder) for removal of the respondent’s trade mark, in rectification proceedings. (The decision is relevant in an infringement action except that the burden of proof in an infringement action is on the plaintiff while in an application for rectification it is the applicant). It was again observed in the above case that:
“it is necessary to apply both the visual and phonetic tests.” “It is also important that the marks must be compared as whole.” “The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark.” In yet another case of an infringement action, Parle Products (P) Ltd. v. J.P. and Co., Mysore, AIR 1972 SC 1359 the question was in relation to wrapper with the words ‘Gluco biscuit’ and the particular colour scheme, the general get up used for sale of Parle’s Gluco Biscuit’ so printed on the wrapper. There was a farmyard with a girl in the centre carrying a pail of water and cows and hens around her in the background of a farmhouse. The defendant was selling biscuits with the name ‘Glucose Biscuits.’ The wrapper contained picture of a girl supporting with one hand a bundle of hay on her head and carrying a sickle and a bundle of food, with cows and hens around, in the background of a building. supremeCourt held, on those facts, that in an infringement action, it was sufficient if there was ‘overall similarity’ as would mislead a person usually dealing with one to accept the other if offered to him. Here the packets were of the same size and the colour scheme and design were having close resemblance. The marks should not be kept side by side and compared. The essential features of both marking were a girl with one arm raised and carrying something in the other while the cows or hens were near her, in the background of a house. The decision of supreme Court in Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980 was a case where the respondent-registered holder of the trade mark opposed the appellant’s registration. The question of deception arose in that context. Both were using the word ‘Navratna Pharmaceutical Laboratories’ in connection with sale of Ayurvedic medicines. It was held that for judging whether the later mark was deceptive, it was sufficient if the similarity was so close visually, phonetically or otherwise. If the essential features has been proved to be adopted by the opposite party, that was sufficient. The fact that the get-up, packing and other writing or marks on the goods or packets showed marked difference was not material, though such features could be material in a passing-off action and the defendant might escape liability by showing some additional matter to distinguish his goods. The purpose of comparison was to see if the essential features were different. The object of inquiry was to find out if the defendant’s mark was as a whole similar to the plaintiff’s registered mark. Ruston and Hornsby Ltd. v. Zamindara Engineering Co., (1969) 2 SCC 727 was again a case of an infringement action. It was admitted that the words ‘Ruston and Rustam’ were deceptively similar and the fact that to the latter, “India” was suffixed made no difference. The Court pointed out the difference between an infringement action and a passing off action and held that if there was colourable imitation, the fact that the get up was different was not relevant in an infringement action though it might have had relevance in a passing off action, and in that context referred to Saville Perfumery Ltd. v. June Perfect Ltd., (1941) 58 RPC 147 (161).
Broadly, under Indian law as seen above, it can be said that stress is laid down on common features rather than on differences on essential features, except for a passing reference to a limited extent in one case.
The difference in essential features are also relevant under Indian Law:
It appears that Court did not have occasion to decide, as far as we are able to see, an issue where there were also differences in essential features nor to consider the extent to which the differences are to be given importance over similarities.