Temporary injunction and Opposition – Trademark registration in Cochin
Temporary injunction – “New Mour Marka”, “Green Star Brand”, and “Green Star Marks”
The relief sought for in the main suit do authorize the court to pass an interim order to restrain the defendant, pending disposal of the suit from using the trademarks opposition. The interim relief sought for is not beyond the relief sought in the main suit. The product involved in this case is “Naswar” which both appellants and respondent are manufacturing and selling to the consumers. The ld. trial judge has passed the order impugned in this appeal after arriving at the conclusion reflected in the order, relevant paragraph thereof is reproduced as under:- “The addition of words “new or green” to the words used in the registered trademarks does not make marks different from the words in the registered trademarks and are prima facie bound to mislead the consumers.
So viewed, the applicant has made out a prima facie case of infringement of his registered trademarks by the non-applicants by use of the marks appearing in Annexure A-7 to the application. The balance of convenience in the circumstances lies in favor of the applicant and against the non-applicants. The applicant is likely to be visited with an irreparable loss and injury making it impossible to compensate the applicant, in case ad-interim relief injunction is not granted in favor of the applicant and against the non-applicant”. The ld. trial Judge in order to arrive at such conclusion was duty bound to spell out the relative similarities and also dissimilarities of trademarks and the pouches.
It is only after referring to and explaining the similarities and dissimilarities the ld. trial Judge would prima facie come to conclusion as to whether the trademark adopted by the appellants is deceptively similar to that of the respondent. The ld. trial Judge has not compared the two trademarks except making reference to the words “New or Green”. This in law would not be sufficient compliance in determining as to whether there has been infringement of trademark registration in coimbatore. The Id. trial Judge was required to examine the trademarks closely and point out similarities and dissimilarities. The ld. trial Judge has not considered these aspects of the matter. It is only after considering the similarities and dissimilarities of the trademark of the parties in all details that the relative strength of the case of the competing parties could be adjudged even for prima facie purposes. Mere recording of prima facie finding of infringement of trademark would not entitle the person having registered trademark to a relief. The relative strength of the case of the competing parties has to be considered and highlighted and thereafter a finding recorded. The court in such type of cases has to put the respective trademarks to phonetically, visual and ocular test. It is on close examination of these facets of case, even for prima facie purposes, that a finding one way or the other way can be recorded. The learned trial Judge has not delineated and considered these important aspects of case in the impugned order.
Right to carry on trade, occupation and business is a fundamental right guaranteed under Article 19 (i) (g) of Constitution. Intellectual property Right to earn livelihood is an important facet of Art. The orders which have the potential of affecting such right cannot be passed, without approaching the problem projected, in strict compliance of the law occupying the field. O. 39 R1 & 2 does authorize court to pass interim orders, but such orders have to be passed in tune with settled principles of law. The order impugned in this backdrop is rendered illegal and is accordingly set aside. The ld. trial judge will re-consider the matter in view of the observations made in this judgment and will accordingly pass orders in accordance with law after hearing the parties. The ld. trial Judge is requested to dispose of the injunction application of trademark registration in cochin preferably within a period of one month from the date the record is received by him. Registry to send back the record immediately. Appeal disposed of along with all connected CMPS.
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Opposition proceedings- Application for registration of word mark ZYDUS
In the present case, having regard to the fact that, first, the goods at issue are in part identical and in part very similar and, secondly, the marks at issue are similar overall, it must be held that the Board of Appeal was correct in law in finding that there was a likelihood of confusion between those marks, even though, as was stated in paragraph 36 above, the relevant public’s level of attention is higher than average (in respect of sanitary preparations) or relatively high (in respect of pharmaceutical and veterinary preparations). That finding is borne out by the fact correctly pointed out by OHIM that the earlier mark is endowed with a higher than normal degree of distinctiveness as it is a created and invented sign with no particular meaning.
The foregoing considerations are not called into question by the applicant’s argument that, given that pharmaceutical preparations and sanitary preparations are not generally purchased orally, the phonetic similarity between the trademarks at issue is of limited significance.
Admittedly, according to settled case law, in the context of the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight and it is appropriate then to examine the objective conditions under which the marks may be present on the market (Case T-129/01 Alejandrov OHIM-Anheuser-Busch (BUDMEN)  ECR II-2251, and Joined Cases T-117/03 to T-119/03 and T-171/03 New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection)  ECR II-3471. The extent of the similarity or difference between the signs at issue may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by them are marketed. If the goods covered by the marks in question are usually sold in self-service stores where consumers choose the product themselves and must therefore rely primarily on the image of the trademark applied to the product, the visual similarity between the signs will, as a general rule, be more important. If, on the other hand, the product is primarily sold orally, greater weight will usually be attributed to any phonetic similarity between the signs INLSPORT, NLJEANS, NLACTIVE and NL Collection. In the present case, the relevant consumers are faced both visually and phonetically with the marks designating the goods at issue. There is no factor which makes it possible to attribute a preponderant weight to the visual aspect or, conversely, to the phonetic aspect in the overall assessment of the likelihood of confusion. In certain cases, those goods are sold by means of self-service in commercial establishments (pharmacies, supermarkets or specialist shops) by being placed on shelves where they may be examined by consumers. In other cases, for example if what are involved are pharmaceutical or veterinary preparations dispensed exclusively on prescription or goods sold over the counter but kept in a place which is not directly accessible to the public, the purchases are made with the assistance of a professional and involve a verbal reference to the marks concerned.
In any event, even if one were to assume that the goods at issue-including veterinary preparations, which the applicant does not refer to in the argument currently being examined are usually purchased without the name of the mark having to be pronounced, and the visual aspect is therefore of greater importance in the overall assessment of the likelihood of confusion, the Board of Appeal’s finding that such a likelihood exists would still be fully justified because, as was stated in paragraphs 52 and 53 above, the trademarks at issue indeed also display a certain degree of visual similarity.
Opposition proceedings- Application for figurative sign Basmali by Siam Grains (Intervener)
Held: the requirement that the opponent be the proprietor of the sign relied on involves proving the acquisition of rights over that sign. Article 8(4) of Regulation No 40/94 does not specify the form which the acquisition of such rights ought to take-The fact that the opponent is formally the proprietor only of the customer base which is undermined does not necessarily mean that it has not acquired rights over the sign relied on, rights which enable it to prevent, should the case arise, the use of a subsequent trademark. In that respect, it should be pointed out that, within the context of an action for passing off, it is the sign used to designate goods or services which acquires a reputation on the market.
It follows from national case-law that a sign used to designate goods or services may have acquired a reputation on the market for the purposes of the law applicable to an action for passing off, even though it originally had a descriptive character or is devoid of distinctive character. Board of Appeal erred in rejecting the opposition of trademark registration in cochin on the ground that the applicant had not proved that it was proprietor of the sign in question, without analyzing specifically whether the applicant had acquired rights over that sign in accordance with the law of the United Kingdom – Contested decision Annulled.