Beyond Classification: Identity of Marks and Market Overlap

The assessment of deceptive similarity in trademarks generally requires a holistic examination, keeping the interdependence of factors such as identity of marks, nature of goods, fields of business, trade channels, etc. of the parties in mind. The Court in the case of Karan Rathore v Registrar of Trade Marks^[1], examined whether an identical word mark could be registered for vehicle covers despite the existence of a prior device mark containing the same dominant element for motor parts. Taking a holistic approach, the Court dismissed the Trade Mark Registrar’s order of registration of the word mark, upholding the prior rights of the Petitioner in his device mark.

Procedural History

Shivam Rathore, Respondent No. 2 filed an Application for the mark “JBR” (impugned mark) on March 18, 2023 under Class 12 in respect of goods “car cover, bike cover and vehicle cover”, claiming use since July 16, 2020. Upon advertisement of the Application in the Trade Marks Journal, the Appellant, Karan Rathore, filed an Opposition against the above-mentioned impugned mark on the basis of his prior registration for the mark,

in Class 12 for “motor parts”. Subsequent to the Opposition proceedings between the parties, the Trade Mark Registrar, i.e., Respondent No. 1 dismissed the said Opposition and allowed the registration of the impugned mark, finding the description of goods of both parties to be dissimilar. Aggrieved thereby, the Appellant filed the appeal before the Court.

Facts:

The Appellant’s mark was coined and adopted by Mr. Jagdish Joshi, the proprietor M/s Tushar Auto Spares, i.e., predecessor in interest of the Appellant, in the year 2000. The Assignment in favour of the Appellant for the said mark was subsequently carried out on May 03, 2023.

Significantly, Respondent No. 2 had earlier obtained explicit permission from the Appellant’s predecessor vide Authorization Letter dated July 06, 2020, to use the impugned mark for selling products thereunder on e-commerce websites. 

Contentions of the Parties:

Appellant:

The Appellant argued that:

• He is the prior adopter and user of the mark, “JBR (device)”, using the same since June 04, 2000 through his predecessor.

• Owing to such long, continuous and extensive use and promotion, his mark had acquired secondary meaning in relation to the Appellant throughout the world, including in India.

• Respondent No. 2, being his cousin, and having previously sought authorisation to use the impugned mark from the Appellant's predecessor, amounted to implicit acknowledgment of the Appellant's rights in his mark.

• Dominant and essential component of the Appellant’s device mark was the term, ‘JBR’ which forms the impugned word mark.

• Respondent No. 2, in the Opposition proceedings, admitted to knowledge about the assignment between the Appellant and his predecessor, as well as prior use of the Appellant’s mark by his predecessor. In this regard, the Respondent No. 2 failed to place on record any document evidencing adoption or use of his impugned mark prior to seeking authorization from the Appellant’s predecessor.

Accordingly, it was submitted that the order passed by the Respondent No. 1 in regard to this Opposition was erroneous.

Respondent No. 2:

In reply to the above-mentioned averments of the Appellant, Respondent No. 2 contended that:

• The Application for the registration of the impugned mark was filed by him prior to the Assignment Deed between the Appellant and his predecessor.

• The impugned mark was a word mark whereas the Appellant’s mark is a device mark, which is totally different from the impugned mark.

• The Appellant’s predecessor never traded in goods overlapping with Respondent No. 2 under his mark. Further, the Authorization Letter given by the Appellant’s predecessor was not related to the goods that Respondent No. 2 deals with and, therefore, he did not seek extension of the said authorization

Court’s Analysis:

Identity of competing marks:

The competing marks of the parties were held to be structurally, phonetically and conceptually identical. The Court held that;

“There is no cavil that the prominent feature of the Appellant’s Mark is the word ‘JBR’ and the Appellant cannot be precluded from the right to exclusive use of the said word in relation to the goods for which it holds registration”^[2]

Similarity of the goods of the parties:

In determining whether there existed any similarity between the goods offered by the parties, the Court relied upon principles enunciated in FDC Limited v. Docsuggest Healthcare Services Pvt. Ltd.^[3] Resultantly, the Court held that the category of goods of both the parties form part of automotive accessories employed for usage with vehicles. As such, the consumer base and purchasing public for both the goods is primarily the same and the trade channels through which they are bought and sold shall also overlap, which is evident from the fact that the Appellant himself deals in both the competing goods in question.

Appellant’s rights:

The Court placed considerable emphasis on the Authorization Letter dated July 06, 2020, which expressly permitted Respondent No. 2 to sell car and bike covers and other motor accessories under the Appellant’s mark on e-commerce platforms. This, in the Court’s view, constituted implicit acknowledgment of the Appellant’s proprietary rights in the mark.

The Court further held that, “It is well-established in law that an owner of a Mark is always entitled to expand its goods and services, as a natural consequence in expansion of its business”.^[4] In accordance with the law laid down in FDC Limited^[5], when the present controversy is perceived from the commercial and business point of view, there could be confusion in the minds of the purchasing public that the competing goods stem from the same trade source.

Held:

The present Appeal was allowed and the order passed by the Trade Mark Registrar was set aside, ordering cancellation of the impugned mark under Section 57 of the Act. It was held that the identity of the competing marks, as well as the similarity of the competing goods, was duly established. Consequently, the prohibition under Section 11 of the Act comes into operation, wherein registration of the impugned mark is likely to cause confusion and ought to have been refused by Respondent No. 1.

Conclusion:

The decision reaffirms many significant principles in Indian trademark jurisprudence:

• A word mark’s similarity to a device mark may be determined by the dominant verbal element in the latter.

• It is necessary to evaluate allied and cognate goods from a consumer and commercial standpoint instead of relying solely on product descriptions.

• Trademark owners maintain the ability to expand into related goods within their usual course of business. 

  
  

Vrinda Harmilapi

Associate

vrinda.harmilapi@iprattorneys.com

^[1] C.A.(COMM.IPD-TM) 23/2024 & I.A. 9027/2024

^[2] Ibid

^[3] 2017 SCC OnLine Del 6381

^[4] Supra Note 1

^[5] Supra Note 3