Intellectual Property RightsPassing off & Infringement of Trademark

April 25, 20160
The following are the leading decisions in infringement & passing off   the trademark:
In the case of Gorbatschow Wodka KG vs. John Distilleries Limited, the plaintiff claimed that the shape of its bottle of Vodka was distinctive and formed an intrinsic part of its goodwill and reputation. The bottle which the defendant had adopted was alleged to be deceptively similar to that of the plaintiff.
“13…The basis and foundation of the action is that the Defendant has adopted a bottle for the sales of its product which in its shape bears a striking resemblance to the bottle of the Plaintiff. Parliament has, therefore, statutorily recognized that the shape in which goods are marketed, their packaging and combination of colors form part of what is described as the trade dress. A manufacturer who markets a product may assert the distinctive nature of the goods sold in terms of the unique shape through which the goods are offered for sale.”
”16. …  The shape of the bottle which the Plaintiff has adopted has no functional relationship with the nature of the product or the quality required of the container in which Vodka has to be sold. The shape, to use the language of a leading authority on the subject, is capricious. It is capricious in the sense that it is novel and originated in the ingenuity and imagination of the Plaintiff.”
“17. … Prima facie, a comparison of the shape of the bottle which has been adopted by the Defendant with the bottle of the Plaintiff would show a striking similarity. As a matter of fact, Counsel appearing on behalf of the Defendant did, during the course of the submission, concede that there are similarities”
In the case of Conopco Inc Vs Banwarilal 1997 (43) DRJ 674, the petitioner claimed that they have enormous reputation with the trade and general public because of which their trademark has become distinctive and is exclusively associated and identified. In case the trademark applied by the respondent is allowed it would lead to passing off of the goods.
“21. … the goods of both the parties are being sold and on a comparison of the same this Court found that the containers are of the same shape and size. The floral design and colour scheme on both the containers belonging to the rival parties are also same. Thus, there is nothing strange when learned Counsel for the petitioner contends that in the case the impugned trade mark Ponas is allowed to be registered it would cause irreparable pecuniary loss, damage, as well as loss to the reputation of the petitioner.”
In the case of The Coca Cola Company vs. Narsing Rao,  the plaintiff claimed permanent injunction Kelby club soda as the shape of the bottle and other mark were deceptively similar to the registered trade mark of the plaintiff KINLEY club soda, Kinley, and the bottle shape. The court observed that,
“…the defendants mark KELBY is confusingly and deceptively similar to KINLEY and the style of writing KELBY being virtually identical to the style of writing KINLEY; that the KELBY Club Soda (label) being virtually identical to the KINLEY Club Soda (label); and that the KELBY Club Soda being offered for sale in a bottle, the shape of which is virtually identical to the bottle used by the Plaintiff No. 1’s for its product KINLEY Club Soda.”
In Cadila Healthcare Limited v. Cadila Pharmaceuticals Limited the Apex Court stated that in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered:
a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.
b) The degree of resemblance between the marks, phonetically similar and hence similar in idea.
c) The nature of the goods in respect of which they are used as trademarks.
d) The similarity in the nature, character and performance of the goods of the rival traders.
e) The class of purchasers who are likely to buy the goods hearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
f) The mode of purchasing the goods or placing orders for the goods and
g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
 In Symphony Ltd vs Wim Plast Ltd the plaintiff filed a case for permanent injunction against the piracy of registered design under section 22 of the designs act. The respondents were restrained from marketing, selling, advertising, indirectly dealing in ‘Air Cooler’, which have the same design, shape, configuration and design identical, imitate of the petitioner’s design .The court observed that
“19. …the documents produced viz. brochures of the other products then, the perusal of the brochures would also leave no room of doubt in saying that there is marked similarity between the design of the plaintiff and those of the defendants, which has been assailed to be imitation by the plaintiff.… those features of distinctive, if are not capable to readily notice to the consumers, then the same will have to be treated as merely imitation and those fine difference will have to be treated as incorporated merely to avoid the charge of imitation.”

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