India: Passing Off and Infringement- The Importance of Dissimilarities

 India: Passing Off and Infringement- The Importance of Dissimilarities

The High Court of Delhi lately put forth that if distinctness between contending marks annul the parallels, the same will prima facie negate the liability of confusion – which provides an intriguing aspect of comparing marks when determining passing off and trademark violation.

In the case of Britannia Diligence Ltd.vs. ITCLtd. & Ors. (CS (COMM)554/2020 and CS (COMM)553/2020 of 05th April 2021), the court dismissed desires of alleged trademark violation and passing off in favor of ITCLtd., with regard to the following marks

 

Petition	Plaintiff’s Marks	Defendant’s Marks
CS(COMM) 553/2020
CS(COMM) 554/2020

The complainant (Britannia Diligence) claimed to be using its NUTRI CHOICE Digestive pack layout mark (RegistrationNo. 4396835, in Class 30) since 2014, while the defendant (ITCLtd.) commenced use of its FARMLITE 5- seed Digestive mark for Class 30 goods in September 2020. Professing posterior mala fide relinquishment by the defendant, damage to its character and liability of confusion in the request, the complainant initiated the substantiated suits.

The court, when interpreting and applying the vittles of Sections 29 (1) and 29 (2) of the Trade Marks Act, 1999, put equal weightage on differences in the prominent features of clashing marks, as opposed to solely counting on their parallels. To punctuate the differences between the marks, the court illustrated upon the following aspects

 Clashing Marks

Points of discrepancy

Brands NUTRI CHOICE 'and FARMLITE’, placed in different coloured background;

.Manufacturing companies Sunfeast and Britannia (both well- known with a niche consumer base) acting as source identifiers;

The defendant’s‘5 seed digestive biscuits have a specific health-conscious clientele;

The defendant’s biscuits have a unique identity strengthened by the pictorial representation of five seeds.

Rival brands prominently visible;

The defendant’s biscuits comprise five ayurvedic constituents ( easily represented on the packaging) and cater to a specific class of consumers;

The defendant’s products have distinct features, unique constituents and are retailed else – hence, rare in the request.

“ Digestive biscuit consumers constitute an entirely different order of consumers from consumers of ordinary biscuits. Whether one applies the‘ liability to cause confusion’ test in Section 29 (2), or the deception' test in Section 29 (1), one has to examine the possibility of deception or confusion keeping this foursquare reality in mind”, the court noted in its order.

The court went on to ask the question whether the propinquity between the parties’ marks is similar that the defendant’s packaging is considered confusingly analogous to that of the complainant (in which case, the complainant would be plant to be infringing).

Alternately, if a consumer of average intelligence and amiss recollection is likely to confuse the product of the defendant to be that of the complainant, on seeing the marks at different points of time, the tort of passing off is made out. Then, the judge plants the packs under comparison sufficiently different to negate a liability of confusion or to come to a finding that the applicable consumer would be deceived.

While rejecting the complainant’s plea, the court added that a conscious attempt at copying a mark by itself doesn't constitute passing off or violation, unless a consumer would be deceived by similar reproduction.

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