Supreme Court: Trademark of Defendant similar to Plaintiff, confusion among public can be presumed

Nishka Srinivas Veluvali

Published On: January 20, 2022 at 16:38 IST

The Supreme Court while considering an action for Infringement observed that the Defendant’s Trademark is totally same as the Plaintiff’s Registered Trademark and on top of it their products or services are also identical which will eventually create confusion among the public.

The Bench of Justice L Nageshwara Rao, BR Gavai and BV Nagarathna stated that once it is proved that the Defendant is Illegally using the Trademark of the Plaintiff, an Injunction will be issued as this is Infringement.

The Plaintiff had approached the Trial Court seeking the decree of permanent restriction of usage of the Trademark “Sai Renaissance” or any other trade mark identical to the word and Trial Court had ruled in the favour of the Plaintiff.

However, the High Court considering the Defendant’s Appeal, ruled out as there was no Trademark Infringement and set aside the Trial Court Judgement. The Plaintiff was left with the only resort of approaching the Supreme Court.

The Supreme Court observed that the Trial Court as well as the High Court have come to a decision that the Defendant’s Trademark is totally similar to the Plaintiff’s Registered Trademark and further added that the products or services provided by the Defendant are also under the same Class i.e. Class 16 and Class 42 in which the Plaintiff’s Trademark “Renaissance” was registered.

The Bench also noted that the High Court while dismissing the Trial Court’s Order held that the Plaintiff lacked in proving that the Trademark is reputed in India and the usage of the same by the Defendant was honest and thus no confusion will be caused among the public.

However, the considerations of High Court could not satisfy the Supreme Court, hence allowing the Appeal the Supreme Court stated that, “We are, therefore, of the considered view that the High Court fell in error on various counts…… The High Court has failed to take into consideration that in order to avail the benefit of Section 30 of the said Act, apart from establishing that the use of the impugned trade mark was not such as to take unfair advantage of or is detrimental to the distinctive character or repute of the trade mark, it is also necessary to establish that such a use is in accordance with the honest practices in industrial or commercial matters. As such, we have no hesitation to hold that the High Court was not justified in interfering with the well­-reasoned order of the trial court”.

Also read: Copyright Infringement Battle: Wai Wai Noodles vs Yippie Magic Masala

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