Affirming the principle of overall impression of the rival
Trademarks is dispositive

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Affirming the principle of overall impression of the rival
Trademarks is dispositive

(Rahul Uttamsuryavanshi versus Sunil Kasliwal)
Civil Application No. 957 of 2016

The Hon’ble Bombay High Court reaffirmed the principle envisaged that overall impression of the trademarks is to be compared foremost in any Trademarks infringement case.

Facts:

The Plaintiff brought a suit against the defendant in the trial court for the infringement of his trademark ‘MOR CHHAP’ which he claims to have been using for construction material since three decades. The Plaintiff is the registered proprietor of the said trademark MOR CHHAP with a picture of a peacock spreading its wings and has obtained registration unde class 19 which is valid and persisting.  On the other hand the defendant who also sells construction materail uses the trademark ‘SUPER MOR CHHAP’ with the picture of a peacock under the same class of goods. The Defendant had applied for the registration of his said trademark twice previously but subsequently both were abandoned. The plaintiff had instituted the infringement suit to restrain the defendant from using the deceptively similar trademark and the Trail court had accordingly granted temporary injunction in his favour. The defendant being aggrieved by this order had approached the Hon’ble Bombay High Court in an Appeal.

Arguments on behalf of the Defendant/ Appellant:

The Ld. Counsel on behalf of the Appellant argued on 4 major points:

• The registration certificate granted to the Respondent for the trademark ‘MOR CHHAP’ is valid only upto 24th April, 2015 and so the respondent’ suit for its trademark infringement is not maintainable.
• The respondent could not be exclusively empowered to use the orinary and common words ‘Mor’ and ‘Chhap’ having their own distionary meaning in vernacular language.
• The registration certificate granted to the trademark ‘MOR CHHAP’ was on conditional basis and hence the respondent could not be entitled to claim exclusive rights over the concerned trademark.
• The appellant and his employees have been rendered idle and the loans taken have become useless on account of the order and hence modification of this order is required to allow the applellant to dispose the existing stock consisting of the trademark ‘SUPER MOR CHHAP’.

Arguments on behalf of the Plaintiff/ Respondent:

The Ld. Counsel on behalf of the respondent countered the arguments of the Appellant on 3 central points:

• The registration certificate of the Trademark MOR CHHAP is valid till 24th April, 2025 which makes the present infringement suit maintainable.
• The colour combination and the words comprising of the appellant’s mark are similar to the mark used by the respondent and the two rival marks are phonetically and vusually similar.
• The liklihood of confusion between the two marks is much greater on the account that the construction material sold by the appellant is likely to be predominantly purchased by uneducated masons and labourers.

Judgment:

The Hon’ble single judge Justice J. R. Dhanuka rightly upheld the order of the trial court analysing the focal point of the case that the respondent’s mark is duly registered under the statutory law while the appellant had withdrawn its registration twice which titls the balance of the case in favour of the respondent.

Further the Hon’ble Court relied on the points of similarity between the two rival marks and held that there was an evident similarity in the pictorial representation of the peacock in both the rival marks. The Hon’ble High Court analyzed both side of the srguments and held that the two marks were structurally, visually and phonetically similar. The Hon’ble judge rightly reaffirmed the principle of comparing the rival marks through their overall impression in any Trademark infringement case.

Contributed By : Ferzin Daboo (Advocate)
   Designed By : Vikash Singh