London Dairy’s claim melts!
The Bombay High Court has recently refused to grant an injunction on trade mark infringement and passing off where the only basis for the application for injunction was the existence of phonetic similarity between the marks of the Defendants and the Plaintiff in International Foodstuffs Co LLC v. Parle Products Private Limited and Anr. (Notice of Motion No. 2624 of 2012 in Suit No. 2497 of 2012). The Bombay High Court observed that since phonetic similarity was the only basis of this action a strong prima-facie case has not been made out and there are not sufficient grounds to warrant an injunction in favor of the Plaintiff.
The Plaintiff, International Foodstuff Co. LLC is a Dubai-based company which sells various flavors of ice-cream under the mark “LONDON DAIRY”. The mark is used only in respect of, and only of, ice-cream. The Plaintiff is the registrant of the mark “LONDON DAIRY” since 2001 and in 2007 the Plaintiff obtained registration for the label mark which are both registered in Class 30. The Defendant, Parle Products Private Limited, started selling boiled confectionery sweets under the mark “LONDONDERRY” in 2011. The Defendants have used the mark continuously since then and have also applied for registration of the mark, with the application currently pending.
The Plaintiff on learning that the defendant was using the mark, “LONDONDERRY” filed the present petition for an injunction on grounds of trade mark infringement and passing off.
Contentions by International Foodstuff Co. LLC (Plaintiffs)
- That there is no phonetic distinction between the two marks and the marks cannot possibly be pronounced differently. The plaintiff has a registration in Class 30 which covers the goods for which the Defendants are using the mark.
- That the Defendants dishonestly adopted the mark “LONDONDERRY”.
- Unless the Defendants are able to show that their adoption of the mark is bona fide, the injunction must follow, the Plaintiff being a prior registrant of the mark in question and there being no discernible phonetic distinction between the two.
- The Defendants ought to have conducted a search and if they failed to do so they have only themselves to blame.
- The Plaintiff manufactures confectionery under another mark “Tiffany” and therefore, the Defendants’ use of “LONDONDERRY” for boiled sweets must be held to be a passing off.
ontentions by Parle Products Private Limited (Defendant)
- It is not enough to say that because one has registration in a class that includes very many items therefore protection is axiomatically to that mark in respect of all the items in that class, however dissimilar, however disconnected and irrespective of whether or not there is any use of the mark for those other types of goods.
- Every registrant should be required to be careful to specify the goods within the class, even multiple goods, for which the use is proposed. The Plaintiff has limited their use of the mark to only ice-cream within Class 30.
- The word “London” is disclaimed and “Dairy” can never enjoy any protection. It is very much a common word. It is publici juris; of public right. No protection attaches to it. Even taken as a whole, “LONDON DAIRY” is not a mark that can ever claim protection.
- The Plaintiff had no reputation in India to speak of till 2010. There is nothing to indicate that it had so wide an international reputation that it could claim trans-border protection.
- The Plaintiff is unable to show goodwill and reputation which is one of the three probanda of the ‘classical trinity’ in passing off between 2010 and the time of the Defendants’ adoption of the mark.
- There are a multitude of surrounding circumstances that must be considered and cannot be possibly be ignored: the packaging, the goods themselves, their price point, the distinct words and stylization, etc.
- On neither cause of action the Plaintiff has made out a case for grant of injunction.
Observation/Decision of the Court
- A registration must be read in a reasonable and rationale fashion. The purpose of the statute is not to afford wide ranging protection irrespective of use.
- The argument that all the goods in a class are ‘cognate’ and ‘allied’ cannot be accepted. Visually there is nothing at all common between the two marks. The Plaintiff’s product is entirely distinct. It is packaged differently. It requires refrigeration. It price point is entirely distinct as well. The Plaintiff’s products are indeed expensive by Indian standards, starting at Rs. 80/- and going only northward from there. There is no possibility at all of any person, however average his intellect or imperfect his recollection, confusing one for the other. When it comes to the question of similarity, the test is one of perception. Like beauty, this lies in the eye of the beholder; in trade mark cases, that of the Judge.
- It is sufficient to accept that the Plaintiff’s registration and rights are in any case restricted to the only goods on which it has used them, i.e., ice-cream, and, should it be able to show so, to others that are commonly linked with ice- cream (such as other ice-cream preparations of some kind or the other). However, this cannot be extended to every single item in Class 30. That would take within its sweep all manner of goods such as sugar confectionery, candies, biscuits, pasta, macaroni, noodles, baking powder, spaghetti, mayonnaise, vinegar, coffee, tea, rice, artificial coffee, bread, pastry and so on.
- Passing off is an action in deceit, and the Plaintiff must show or demonstrate, at least prima facie for the present purposes, that the Defendants’ use and adoption is calculated to deceive, such that purchasers of fifty paise boiled sweets in single serve sachets will imagine they are purchasing a product from the repertoire of a maker of expensive ice-cream. The Court was of the opinion that the Plaintiff had prima facie not been able to show that the adoption of the mark was calculated to deceive.
- There may certainly be places that vend both; but those are not the only places one finds the Defendants’ sweets. In a country where every empty urban space is a business opportunity of some kind, the Defendants’ sweet is the kind of thing that one finds sold by street corner vendors, pavement hawkers and so on. None of these are ‘outlets’ for the Plaintiff’s products. No one purchasing a fifty paise sweet manufactured by the Defendants will ever be cast into a state of ‘wonderment’ about whether this confection has anything whatever to do with the Plaintiff’s ice-cream.
- That the words “London Dairy”, when used in relation to ice-cream, might connote the goods of the Plaintiff and the Plaintiff alone. But that is not what the Defendants do. That is not what they do at all. They do not vend or manufacture ice-cream. They vend nothing like it. They are manufacturing a good that falls in the same Class but is entirely distinguishable in every word and in every way except the phonetic. That is surely not enough. What of the visual similarity? The structural? The attendant circumstances? The lack of any meaningful reputation or goodwill? The want of demonstration of deceit or misrepresentation? The very many differences in color, trade dress, the goods themselves and their pricing? Is a court to ignore all these only because of a phonetic similarity?
In view of the above, the Bombay High Court vide it’s order dated April 11, 2016 held that there is no law that says that a solitary test of pronunciation will suffice to defeat all else that weighs against or the visual, structural similarity, the attendant circumstances, lack of meaningful reputation or goodwill, the want of demonstration of deceit or misrepresentation or differences in color, trade dress, the goods and their pricing should be ignored only because of phonetic similarity.
Since the Plaintiff has sought injunction only on the basis of this phonetic similarity and there is no other basis for this action at all, the Bombay High Court held that there is not sufficient warrant for grant of injunction and dismissed the Notice of Motion without costs.