Triple Identity Test For Infringement In Trademark
TRIPLE IDENTIFY TEST FOR INFRINGEMENT IN TRADEMARK
IN THE HIGH COURT OF DELHI
M/S SUMEET RESEARCH AND HOLDINGS PVT.LTD & ANR. VS. M/S SIPRA APPLIANCES
ARISING OUT OF CS (COMM) 428/2016 & I.A 13428/2015
The Plaintiff No. 1 Company was incorporated in 1980 and the word ‘SUMEET’ has been an integral ingredient of its corporate name.
The Plaintiff No. 1 Company is the registered owner of the trade mark ‘SUMEET TRADITIONAL’ under Class 7 of the Trade and Merchandise Marks Act, 1958, for mixers, grinders and inter alia other household electrical appliances.
On 08.02.1992 the Hon’ble Supreme Court held in Power Control Appliance C. vs. Sumeet Machines Pvt. Ltd. that the Plaintiff No. 1 Company is the owner of the Trademark ‘SUMEET’.
The Plaintiff No. 1 Company also owns copyright in the label titled as ‘SUMEET TRADITIONAL’, as an ‘original artistic work’ under Section 2(c) of the Copyright Act, 1957.
The Plaintiff No. 1 Company entered into an Agreement for Subcontract dated 12.04.2013 with the Defendant Company for manufacture of two specific models of mixies. However, the Defendant Company violated the Agreement by unauthorized selling of identical mixies with the Trademark ‘SUMEET’ and ‘SUMEET TRADITIONAL’.
Thus, Agreement dated 12.04.2013 was terminated vide Notice dated 05.06.2013 and Letter of Termination dated 06.06.2013.
The current suit has been filed by Plaintiff Company seeking a Permanent Injunction restraining the Defendant from infringing trademark, copyright, passing off, trade name, etc.
ISSUE BEFORE HC
Whether there was an infringement of trademark which was likely to cause confusion and deception in the minds of purchasing public.
The Learned Single Judge observed that:
Due to extensive use over substantial period of time, the Plaintiffs’ marks SUMEET and SUMEET TRADITIONAL have acquired reputation and goodwill in the marks in India”.
Furthermore, the Hon’ble Court held that the Triple Identity Test to prove the infringement of trademark has also been satisfied by the plaintiff in this case.
TEST ONE – Use of identical or deceptively similar trademark
TEST TWO – Use of trademark in relation to identical goods
TEST THREE – Use of trademark in relation to identical goods having identical trade channels
As observed by the Hon’ble Court:
The defendant has made use of an identical/ deceptively similar trademark in relation to identical goods having an identical trade channel (products sold vide same trading channels)”.
In pursuant to this, the Hon’ble Court granted ex-parte ad-interim injunction in favour of the plaintiffs as the Hon’ble Court observed that:
The use of the impugned mark by the defendant was bound to cause incalculable losses, harm and injury to the plaintiffs”.