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By: Tamanna Gupta, Student, RGNUL Punjab.
Recently, the tussle between two leading conglomerates, Emami Ltd & Hindustan Unilever Ltd. (HUL) hit the headlines. In Hindustan Unilever Limited v Emami Limited (2020), Both the companies contended that the trademark of the phrase “Glow & Handsome” belonged to their respective organization. The row over the trademark began when HUL rebranded its skin lightening products in light of anti-racism protests. HUL removed the word “fair” from its skin lightening creams, replacing it with the word “glow”, thus rebranding the products as “Glow & Lovely” & “Glow & Handsome”. While HUL claims that it applied for the trademarks way back in September 2018, Emami claimed ownership of the trademark. However, the court denied relief to Emami stating that ‘prima facie’ it could be discerned that HUL applied for the trademark first, thus it has a right over using the phraseology for marketing, etc.
Several claims regarding Trademark Infringement under Section 29 of the Trademarks Act, 1999 have reached the court in recent times, which has led to an ambiguity in the criteria for deciding claims involving trademark infringement & deceptive similarity. While several tests have been laid down both nationally & internationally, the haphazard approach of the court in deciding the rights of the prevailing party with respect to use of trademark has led to complications, leaving the parties in a lurch as to the proper recourse. This article analyzes the divergent precedents laid down by the courts, further suggesting compliance with international precedents in order to present a unified stance in cases involving trademark infringement.
Laws Governing Trademark Infringement
In the Indian Context, the Trademarks Act, 1999 governs the disputes arising due to claims over trademark infringement. Section 2(h) of the Trademarks Act, 1999 defines “deceptively similar”, stating that a particular trademark shall be deemed to be deceptively similar in nature to another if there is a close resemblance between the two that is likely to deceive consumers or cause confusion amongst the consumers regarding the two. Furthermore, Section 29 of the Trademarks Act, 1999, under Clause (2) lays down the requirements for “Infringement of Registered Trademark”, stating under Section 29(2)(b) that similarity to another registered trademark is a ground for infringement.
The Indian Trademark law falls in line with the acts governing common law countries, as can be ascertained from the provision regarding trademark infringement laid down under Section 10(2)(b) of the Trademarks Act, 1994 of the United Kingdom, that states that “similarity” is a ground for trademark infringement. In Australia, The Trademarks Act, 1995defines “deceptively similar” under Section 10 of the act, the definition in consonance with the Indian act. Despite such a watertight compartmentalized definition in the Indian Context, courts find themselves at sea when deciding claims regarding trademark infringement, due to varying precedents in cases involving deceptively similar trademarks & trademark infringement.
Conflicting Precedents & The Paradox of “Deceptively Similar”
When it comes to trademark infringement cases that are resolved by the courts, the court mainly has to deal with two categories of cases-
- Cases wherein both the goods/services/products have a similar/identical name but both conflicting companies cater to different consumer base.
- Cases wherein both the goods/services/products have a similar/identical name and the companies also work in the same line of business/ have the same consumer base.
In cases involving “deceptively similar claims”, but with companies working in different lines of business, or serving a different consumer base, the courts have laid down a pretty uniform interpretation. In the case of AMF Inc. v Sleekcraft Boats (1979), the plaintiff, involved in sale of boats meant for recreation, owned the trademark “Slickcraft”, while the defendant, dealing with sales of high speed performance boats, used the mark “Sleekcraft” for commercial purposes. While the court acceded to the fact that the name of the products sounded similar, the court stated that the two types of boats served substantially different markets, thus taking this factor into consideration, before ultimately deciding against the respondents. Thus, the jurisprudence regarding whether the businesses serve the same consumer base also came into play, which led to easy disposal of cases wherein the market was completely divergent from one another. However, most claims involving trademark infringement involve companies serving the same clientele, which leads to the question of which party should be given precedence.
In cases involving a similar/identical name and companies working in the same line of business, the courts have laid down various precedents. In the case of M/S Lakme Ltd. v M/S Subhash Trading (1996), involving an infringement claim by petitioner company “Lakme”, a cosmetic giant, against the respondent for using the mark “LikeMe”, and selling cosmetic products, the court stated that both the marks were “separate marks”, and do not cause confusion, despite the fact that both catered to the same target consumer base. Similar ratios were stated in the case of SM Dyechem Ltd. v Cadbury (India) Ltd. (2000) & M/S Allied Blenders & Distillers Pvt. Ltd. v Govind Yadav & Anr., wherein arguments regarding the fact that similar pricing, packaging & even the name of the product was likely to cause confusion amongst the “same consumer base”, were dismissed by the court.
However, the court laid down a contrasting decision in the case of Cadila Health Care Ltd v Cadila Pharmaceutical Ltd (2001), wherein the plaintiff marketed medicines by the name of “Falcigo”, while the defendant sold medicines under the name “Falcitab”. Taking note of the fact that both the drugs were used to cure the same disease, the court held the marks to be phonetically & deceptively similar. The court also stated that due to the diversified population of the country, and factor such as illiteracy, confusion regarding the said products is likely to arise amongst the masses, thus holding them to be “deceptively similar”.
Haphazard Application of “Test of Likelihood of Confusion”
The test of “likelihood of confusion”, literally means analyzing both the trademarks, to find out whether any likelihood of confusion between the consumers is possible, which might lead to a consumer mistaking one product as the other and vice versa. While the term “likelihood of confusion” is not defined under the Trademarks Act 1999, several courts have laid down jurisprudential principles as to the components of the test. In the case of Frisch Rests Inc. v Elby’s Big Boy (1982), the court laid down several factors that could lead to an inference regarding the likelihood of confusion. The court stated that factors such as relatedness of goods or services marketed, likelihood of expansion of product line, and marketing channels used have to be taken into consideration, in order to decide claims involving trademark infringement.
However, Indian Courts in most cases has not taken the aspect of “similarity of business” into consideration, rather relying solely on factors such as the appearance, spelling and phonetics of the trademarks in question. It can be inferred that the Indian jurisprudence & precedents are restricted to the trademark in question, completely disregarding external yet important factors such as consumer base, marketing & expansion of product lines. However, with the rise of claims involving trademark infringement, the direction in which Indian Courts proceed is yet to be ascertained.
With the rise of disputes involving Trademark Infringement in the Indian Context, it is imperative that Indian Courts should also expand its horizons and expand factors taken into consideration while applying the “test of likelihood”, in cases involving trademark infringement. While the Indian jurisprudence in this context is yet to evolve, the Indian courts can also give wide berth with regards to inclusion of factors in applying the “test of likelihood” in resolving claims involving trademark infringement & deceptive similarity of trademarks.
By: Tamanna Gupta, Student, RGNUL Punjab.