July 10 2006
When it comes to establishing a place in the market, brand names and trademarks provide the widest scope for dispute. Imitation and deception are rife within this area, and the use of well-established marks and names by smaller players seems to be the name of the game.
The most common remedy in this regard is the filing of a suit for trademark infringement and passing off. All around the world legal battles are being fought in pursuit of injunction orders or awards for damages caused to sales and reputation.
This update contrasts the different approaches to trademark disputes in India and Canada.
The success rate of trademark suits primarily depends upon the trademark rules applicable in the place where the suit originates. In a recent case toy manufacturer Mattel, which produces Barbie dolls, filed an appeal in the Canadian Supreme Court to prevent a Montreal business, Barbie's Bar and Grill, from using the well-known BARBIE brand name. In another case Veuve Clicquot, known for its French champagnes, was pursuing another Montreal enterprise, Les Boutiques Cliquot, from using its name.
The Canadian Supreme Court held that 'famous' brand names do not extend to unrelated products or enterprises unlikely to cause confusion, and found that the fame of the BARBIE mark was "tied to dolls and doll accessories"; hence "in connection with very different products and services", its use was permitted. The court took a similar view of Veuve Clicquot's "top-quality luxury good", finding that these were unlikely to be confused with the "mid-priced women's wear" produced by Les Boutiques Cliquot.
The scenario in India regarding suits filed on similar grounds is markedly different. As stated in Section 11(2)(b) of the Trademarks Act 1999, marks that are similar but relate to different goods or services are not liable for registration. The only exception to this is set out in Section 12 - a user of the mark can establish itself to be an "honest concurrent user". Furthermore, in the event of an unregistered mark being infringed, Section 29(4)(b) applies.
In a recent suit seeking a permanent injunction (Aktiebolaget Volvo v VN Prasad 2006 (32) PTC 327(Del)) the Delhi High Court ruled that the defendant had tried to make use of Volvo's reputation and convey that it was connected to Volvo. Following earlier court orders, the defendant had altered 'Volvo' to 'Volwo'. The court held 'Volwo' and 'Volvo' to be deceptively similar and restrained the defendant from using either term through a permanent injunction. It also granted punitive damages to Volvo.
The principle governing suits for infringement was laid down in Kaviraj Pandit Durga Dutt Sharma v Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980) as follows:
"In an action for infringement the onus would be on the plaintiff to establish that the trademark used by the defendant in the course of trade in the goods in respect of which his mark is registered is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks - the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff's mark."
When it comes to infringement issues, Indian courts have been highly stringent in their decisions. A series of decisions including the recently decided La Chemise Lacoste v RH Garments (2006 (32) PTC 481 (Del) stand as witness to this. Lacoste filed a suit for infringement against RH Garments for using the LACOSTE mark on its products. Lacoste was awarded an order for permanent injunction against RH Garments. Similarly, in Hindustan Pencils Ltd v Aparna Enamel Industries (CS (OS) No 1528/2003) the court decided in favour of Hindustan Pencils, awarding damages and a permanent injunction (for further details please see "Court Upholds Pencil Manufacturer's Infringement Claim").
India and Canada follow radically different theories to decide infringement cases. While existing brand names and reputation seem to hold more weight than the line of trade, the Canadian courts seem to be guided by the public's ability to differentiate and prevent themselves from being deceived. Perhaps the Indian courts would have taken a different approach had the Barbie and Veuve Clicquot Cases been decided in India.
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