As per the Trade Marks Act, 1999, a trademark cannot be registered if it is similar or identical to a trademark already registered with the Trade Marks Registry, India. Section 11 of the Trade Marks Act, 1999, exclusively deals with this issue. In this article, we will take into consideration as to what are identical or similar trademarks with the help of a landmark judgment.
Similar Trademark: –
The criteria for the classification of a mark as an identical trademark is relatively simple and straightforward. A trademark may be considered identical to an existing mark if, it is created or reproduced without any alteration or modification; or where all the essential characteristics, supposably differentiating the trademark from the other are so insignificant that an average consumer is unable to distinguish.
Comparing Trademarks for Similarity: –
Below are some of the main points which shall be taken into consideration while comparing two trademarks: –
- Average intelligence and of imperfect recollection should be made a point of view of comparison,
- The structural, visual & phonetic similarity, the similarity of the idea in the two marks, and the fact as to whether it is reasonable likelihood to cause confusion should be taken into consideration.
- A trademark should not be dissected and then compared. It should be taken as a whole and then compared with the other mark.
The concept of similar or identical marks can further be understood with the help the case law below: –
The appellant Larsen and Toubro Ltd. (L&T), in the instant case Larsen & Toubro Ltd. v. Lachmi Narain Trades. & Ors 2008 (36) PTC 223 (Del.) (DB), is engaged in diverse business activities including transportation and infrastructural development, finance, information technology within and outside the country. Nearly a dozen subsidiary companies using the ‘L&T’ prefix with their names have been incorporated over the years to carry on the said business activities. The annual turnover of the company which runs into thousands of crores and its publicity expenditure which has gone up from 7 crores in 1991-92 to 53 crores in 2001-02 also denotes its popularity.
Aggrieved by the use of the names/abbreviation ‘LNT’ and ‘ELENTE’ as brand names for electrical goods including electrical distribution systems like miniature circuit breakers etc. by the defendants, the plaintiff company filed a suit restraining it from passing of the said goods as that of the plaintiff by confusing the wary customers. The plaintiff’s case was that the defendant intended to capitalize on the goodwill of the plaintiff, for there was no reason for the defendant to adopt such a name and abbreviation. An application seeking an ad interim injunction restraining the defendants from using the mark LNT/ELENTE was also filed. The defendants contested alleging that the name LNT/ELENTE was not similar to the trade mark and trade name used by the plaintiff and that LNT was nothing but the abbreviated form of the defendant’s family business name since 2001, Lachmi Narain Traders. Another plane of argument was that the parties did not indulge in the same ‘field of activity’. The application was allowed ex-parte by a learned Single Judge of the Delhi High Court on 27th June 2003. The Judge despite allowing the injunction by stating that the test of ‘ field of activity’ is no more valid, found favour in the willingness of the defendants to use the trade name “LNT/ELENTE-Lachmi Narain Traders” and said the injunction would not apply should the appropriate changes be made.
The appellants appealed against this, thus bringing the case under the purview of a Division Bench. The appellants referred to the Judge’s own findings in the judgment that “they have, therefore, acquired a secondary meaning as the moment the word ‘L and T’ or ‘L&T’ appear on a product, the consumer will associate the same with the plaintiffs”. It was reiterated that the test of ‘field of activity’ is no longer valid.
The decision of the Division Bench was to allow the appeal to make the ex parte ad interim order absolute and have the defendants restrained from using the trademark/names ‘LNT/ELENTE’ or another deceptively similar name in relation to any of its products.
The decision of the Hon. Division Bench of the High Court in the intent case is praiseworthy as it has substantially reiterated the non-applicability of the test of ‘field of activity’. It has done this by over-riding the learned Single Judge’s acquiescence to the defendant’s suggestion to continue using the trademark in the following manner –“LNT/ELENTE-Lachmi Narain Traders”. They observed that the defendant’s argument about the ability of a layman/average consumer to realize the difference between brand names in ‘different fields of activity’ was highly optimistic in nature, thereby categorically stating the end of the test of ‘field of activity’. The question is more of real likelihood of confusion or deception among the consumers and the resultant damages to the plaintiff, which has undoubtedly been proved in the present context as has been clearly worded in the final judgment.
The decision is also far-sighted in the consideration that it opens up an individual’s/business house’s scope for expansion into any field of profit maintaining his/its existing trademark.
Further, additional precaution is required where the goods comprise of medicinal preparations as the possibility of confusion over marks on medicinal products is more and the subsequent potential harm may be far adverse than in case of ordinary consumer products
-hope it doesn’t alters the meaning