India: ‘Deceptive Similarity’ - Most Concerned Problem In Trademarks

India: ‘Deceptive Similarity’ - Most Concerned Problem In Trademarks
18 May 2007
Article by Manisha Singh Nair

‘Deceptive similarity’ is one of the vital tribulations that is sought to be resolved by the Trademarks Act, 1999. As per section 2 (h) a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion and mark as per section 2 (m) includes a device, brand, heading, label, ticket, name signature, word, letter, numerical, shape of goods, packaging or, combination of colors or any combination there of.

In Bombay Metal Works (P) Ltd v. Tara Singh & Ors 2006 (33) PTC (Bom.)(DB), is one such case where even after obtaining an injunction, the plaintiff is forced to make attempts to sustain the protection of marks.

Facts of the case

Tara Sing & Ors were restrained by an injunction order, from manufacturing, selling, offering for sale, advertising directly or indirectly dealing in cycle parts under the impugned Ball Head Racers and Screw Head Racers or any other packing which could be substantially similar to that of Bombay Metal Works Ltd.

Despite the said order, Tara Singh continued the manufacturing and selling of the goods there by violating the said order. Aggrieved by the non-compliance of the order, Bombay Metal Works filed a contempt application under section 2 (a), 11 and 12 of the Contempt of the Court Act. Surprisingly the Judge not only rejected the contempt application, but also gave a finding that the impugned packaging of Tara Singh cannot be considered as deceptively similar to the packing of the Bombay Metal Works. Aggrieved by the said order, Bombay Metal works preferred the appeal.

Contentions

The main contention of the Tara Singh was that the appeal is not maintainable and that it shall lie to the High Court only if the contemnor has been punished and not in any other case. On the other hand, Bombay Metal Works contented that they have filed the appeal not as contempt appeal but as the First Appeal Order (FAO) and hence it is maintainable.

Judgment

The Appeal court on perusal of earlier single bench orders found that the parties had virtually settled their dispute and Tara Singh had given an undertaking that they shall change the color scheme and out look of their packaging. The Appellate Court further opined that as Tara Singh had agreed to change the color scheme and design of the packing, there is a prima facie breach of an interim injunction order and hence Tara Singh & Ors are estopped from acting contrary to their undertaking. Holding the above line, the Court upheld the appeal.

This case underlines the difficulty of protecting the marks. The undertaking by the respondents in the case itself proves that they are accepting that their packing is deceptively similar to that of the appellants. One of the significant tactics primarily applied by new manufactures is to pass off their goods as that of another. The trademark holder needs to be alert of the infringements and the prospective infringements. Close monitoring of the developments has emerged as a key factor. Timely judicial intervention is another prime factor that has become inevitable to the protection of a trademark.

Source: http://www.mondaq.com/article.asp?articleid=48587