Tanisha Rana
Published on: October 10, 2022 at 11:17 IST
The Delhi High Court said in a recent order that the words “plant” and “tree” are a classic example of synonymy where reading one would bring to mind the other and cause confusion in the minds of consumers.
The case involved two similar trademarks, “APPLESTREE” and “APPLEPLANT”, which belong to different manufacturers.
The study of semantic theory dates back to W. Humboldt, the father of common linguistics, as Justice Jyoti Singh stated. According to the theory, the words in the English language system are so connected that they constitute a full lexical system and grouping.
“Synonymy would cover the semantic field where words have nearly the same meanings such that they can be interchanged in some degree and most common cases under this head are of relative synonymy as it is difficult to find words which are absolute synonyms of each other,” said Justice Singh.
The court added, “As an illustration, under this concept, purple, pink, white, brown, violet etc. would fall under the genus ‘colours’ and similarly, knives, spoons, forks would have a semantic relationship with the genus ‘cutlery’. “
The court made the comment in an interim order regarding a trademark lawsuit brought by a maker of abrasive materials who sold his products under the brand name ApplesTree.
In the lawsuit, the plaintiff has charged the defendant of utilising confusingly similar trademarks, such as ApplePlant and NuApplePlant, to promote identical goods.
The court stated that because “plant” and “tree” are used in both trademarks and are used to identify the same type of goods as well as the same trade channels, the likelihood of confusion will be increased.
“No purchaser, while buying the products such as Abrasive Paper, will dissect the trademark to find a scientific (botanical) difference between a PLANT and TREE, especially when both are even otherwise synonymous to each other.”
“A purchaser with average intelligence and imperfect recollection would go by the overall and first impression of the trademark and the similarity in idea is likely to cause confusion,” said the court.”
In the case brought by Vinita Gupta, owner of a company that manufactures and sells abrasive paper and other products under its registered trademark, the court issued an interim injunction prohibiting the sale, advertisement, or promotion of any product under the mark “APPLEPLANT” or any other mark confusingly similar to “APPLESTREE.”
In the lawsuit, Gupta accused Amit Arora of using the confusingly similar brand “NUAPPLEPLANT” to advertise goods that were identical to those for which the registered trademark “APPLESTREE” was being used by them since 2008.
The court was informed that on January 27, 2022, a legal notice was sent to Arora after it was discovered that he was using the trademark for similar goods.
The lawsuit claims that despite this, Arora continued to utilise the disputed trademark, which prompted the filing of the lawsuit.
The word “APPLE” is a major component of Gupta’s trademark, and replicating it would result in a false likeness, especially when the competing items are identical, the court reasoned when granting an interim injunction in Gupta’s favour.
According to the court, “Defendant (Arora) has copied the essential portion of Plaintiff’s trademarks and has just added the suffix PLANT and a prefix NU thereto.”
According to the court, when compared and physically viewed, the marks NUAPPLEPLANT and APPLESTREE are misleadingly similar.
The court stated, “In my prima facie view, learned counsel for the Plaintiff is also right in asserting that not only is there a visual similarity in the competing marks but also that the two are similar in idea, i.e. semantic similarity.”
According to the court, Arora’s adoption of the contested trademark is dishonest on its face.
As the word “Apple” has no connection to the products in question, such as abrasive papers, it was further highlighted that he has been unable to provide a convincing explanation for how he discovered and chose to utilise the mark as part of its trademark.
The interim order stated that, “viewing the two trademarks, the prima facie conclusion this Court draws is that an attempt has been made by the Defendant to pass off his goods under the impugned trademark by coming as close as possible to the Plaintiff’s packaging/label in terms of colour combination, background colour, graphics, etc.”
The court further ruled that the two rival marks’ conceptual similarity could not be eliminated and their distinction made possible by the addition of the prefix “Nu” to the impugned trademark.
“In my view, Plaintiff has made out a prima facie case for grant of injunction. Balance of convenience also lies in favour of the Plaintiff who has been using the trademark since the year 2018, i.e., prior in point in time to the Defendant who has dishonestly chosen to adopt a deceptively similar trademark in 2019 in respect of identical goods, with a view to pass off his goods as that of the Plaintiff. In case the interim injunction is not granted, irreparable injury shall be caused to the Plaintiff,” the court said.
Therefore, the Court passed the interim injuction orders against the Defendants.