TRADEMARK INFRINGEMENT WEIGHING OF “SIMILARITY OF MARKS” AND “LIKELIHOOD OF CONFUSION”

On May 5, 2017 an interesting principal of law was put forward by the Bombay High Court in Ajanta Pharma Limited v. Theon Pharmaceuticals Ltd and Anr. Herein the term “likelihood of confusion” is categorically explained in light of the provision of Section 29 (1) and (2) of the Trade Marks Act, 1999.
Briefly mentioning the fact: the plaintiff had its trademark, which read “FERANTA”; whereas, the defendant had its trademark, namely, “FERINTAS”. In August 2016 an ex-parte injunction was granted in favour of the plaintiff. Subsequently, the defendant on September 2016 agreed to discontinue using FERINTA. It said it would, instead, use the mark INTAS' FERINTAS. Since then, Intas has been using its mark in that manner: INTAS' set above the word FERINTAS, with FER in black, and the rest in a rust red colour.
However, the aforesaid situation seemed to bother the plaintiffs and they filed a suit of trademark infringement seeking an order of injunction. Now, one of the arguments put forth by the defendants (Intas), to show absence of infringement, attempted to show that the mark was named in accordance with standard industry practice. The standard industry practice of naming products, in the current case, involved combining a key ingredient’s name with that of the corporation. For example, FER (Iron) + INTAS. This led to the finding out of the actual meaning and application of the term “likelihood of confusion”.
It is pointed out in this case that both the plaintiffs and the defendants were indulged in selling goods under Class 5. The further subdivisions appear to distinguish the nature of product that both parties sell respectively. It is observed from the facts of the present case that the plaintiffs’ product pertains to medicinal use and that of the defendants’ are a dietary supplement. However, it was opined that although the goods are different but they are likely to be sold over the same counter in the trade, thereby creating a likelihood of confusion among the purchasing public.
Section 29(1), as submitted by the counsel for the defendant, is mark-centric. It speaks of marks that are identical, or a rival mark that is ‘deceptively similar’, and, by definition, ‘deceptive similarity’ takes within its sweep the likelihood of confusion. This was, indeed, the state of the earlier law before the 1999 Act. Section 29(2) is a subsequent observation of the law. Its concern is effect-centric. It speaks not of deceptive similarity but of the likelihood of confusion and it contemplates three situations: (1) identity of marks plus similarity of goods and services; (2) similarity of marks plus similarity or identity of goods and services; and (3) identity of marks plus identity of services. Here, the two marks are not identical. Such observation eliminates the legal principal as mentioned under Section 29(2)(a) and 29(2)(c), and leaves only 29(2)(b): where the marks are allegedly similar, and the goods are identical or similar. The test in 29(2) is not of deceptive similarity, but of likelihood of confusion; and, therefore, if this likelihood of confusion is not established, no injunction can be granted. Section 29(2) is a bulwark against unreasonable and unfair monopolization. In the simplest terms: in a Section 29(2) case, mere similarity of marks is insufficient. It must be accompanied by a similarity or identity of goods; and even that will not completely fulfil the requirements of Section 29(2), for a likelihood of confusion must be shown.
The final judgment as we may correctly assume from the submissions as made by the counsel of the defendant is that the same was ruled in their favour and no injunction order was granted against the defendants.

As written by:

Ms. Sulagna Nandy
Trademark Attorney

L. S. Davar & Co.

Send message