What should be test of deceptive similarity with respect to word having common word, either a prefix or as a suffix? Words common to trade, a facet of deceptive similarity, has generally constrained the courts in laying down ratio-decidendi for judging the similarity between the two common trade words. Deceptive similarity, a vital tribulations though elaborately dealt under the Trade Marks Act, 1999, has often left the court to decide the issue of common trade words on facts and circumstances, may it be the difference between DROPOVIT and PROTOVIT questioned in F. Hoffmann-La Roche vs. Geoffrey Manners[1] or between House of ATLAS and ATLAS questioned in Atlas Cycles (Haryana) Ltd. vs. Atlas Products Pvt Ltd.[2] or between Microtel and Micronics questioned in J.R. Kapoor vs. Micronix India[3], oscillating the relief between the petitioner seeking relief or defendant opposing it.

A similar issue came up for decision before the Delhi High Court in Rich Products Corporation and Another vs. Indo Nippon Foods Limited[4] wherein the court had to decide whether the defendant by using the trademark BELLS WHIP TOPPING was passing off and infringed the copyright granted to the plaintiff in trademark RICH'S WHIP TOPPING. This was one of the case, where the Hon'ble Court dealt with the issue of deceptive similarity for the trademarks having Common Word.

In this case, competing trade marks of parties were having word WHIP TOPPING as part of their trademarks as common element. While BELLS and RICH's were uncommon element in both the competing trademarks in question. This Judgment was pronounced by Shri Rajiv Sikhder, Hon'ble Judge on 19.02.2010 in suit bearing CS(OS) No.246 of 2004 and the title of case was Rich Products Corporation Vs Indo Nippon Food Limited.

In order to appreciate the principle laid down by the Hon'ble High Court in the afore mentioned case, it is necessary to delve into facts of the case. It was a case where the Plaintiff , one of the world's premier food company and a joint venture concern in India, were engaged in making non-dairy toppings, icings, and fillings. According to the petitioners Mr. Rich, founder and chairman of the Board of their company, had discovered vegetable based replacement for whipped cream derived from a new source  soybean, which could be frozen, thawed and whipped.

They claimed their business had revolutionized food processing and had opened up a new world of non-dairy products to the growing frozen food industry. They named their product as Rich's Whip Topping, Rich's Bettercreme Icing and Filling, and Rich's On Top non-dairy dessert topping. RICH'S WHIP TOPPING as trade mark was registered in India since 1991 with a disclaimer that registration was not to give exclusive use of letter S and the word TOPPING but the fact of disclaimer was not disclosed in the suit. Defendant sold similar product in India with the trade mark BELLS WHIP TOPPING since 1995. This was the relevant facts of the subject matter case. Now let us see, what were the issues , which the  Hon'ble High Court of Delhi formulated for deciding the issue.

The Question , which the Hon'ble High Court of Delhi, formulated is that whether the defendant with its mark BELLS WHIP TOPPING had infringed the plaintiffs' registered trademark RICH'S WHIP TOPPING? The second relevant issue which the  Hon'ble High Court of Delhi formulated was that Whether non-disclosure of disclaimer in the grant of trademark registration would make the suit liable for dismissal? The court also formulated another issue like Whether the trademark RICH‟S WHIP TOPPING is a trademark possessing trans border reputation?

Let us see what the Plaintiff contended before the  Hon'ble High Court of Delhi. The Plaintiff claimed the trademark WHIP TOPPING had trademark significance in their product. They further submitted that the defendant had copied their colour scheme, instructions and packaging style. They raised the following contentions: the defendant not only infringed their trademark but also tried to pass off its product as that of the plaintiffs; the case had to be assumed in their favour as their trademark was registered since 1991 and the registration of defendant's trademark was still pending; while comparing trademarks, the trademark, as a whole had to be considered.

If the product with a deceptively similar word mark, packaging and get up for same class of purchaser trading through same channel was introduced, it would amount to passing off even if only a few essential features were common in the word mark; and prior user tilted the balance of convenience in their favour. This was the basic contentions of the Plaintiff which were canvassed by them before the  Hon'ble High Court of Delhi while advancing their argument before the  Hon'ble High Court of Delhi.

The Defendant raised various contention inter-alia emphasizing on the non-disclosure of disclaimer the defendant submitted that disclaimer, being a non-distinctive character, serve no trademark function. The defendant further contended :non-disclosure of disclaimer, a material fact, made the suit liable for dismissal; trademark and goods for which the trademark was applied were two different things; the expression WHIP TOPPING was a generic term and also the name of the product, thus no exclusivity could be claimed;

All these issued were dealt with by the  Hon'ble High Court of Delhi. The court admitted that plaintiffs were the prior user of the trademark RICH'S WHIP TOPPING and that their trademark was registered prior to that of the defendant. Taking notice of the non-disclosure of disclaimer by the petitioners it held : the expression WHIP TOPPING had become descriptive of the product; WHIP TOPPING by itself was not a registered trademark. Plaintiffs had registered RICH'S and RICH'S WHIP TOPPING; Plaintiffs did not have exclusivity over the expression WHIP TOPPING and also the trademark was somewhat descriptive of the product itself; the distinctive features in the plaintiffs' trade mark and the defendant's trademark were the word RICH'S and word BELLS.

The court held that there was no infringement and no passing off the defendant's product as that of the plaintiffs. Finding the presentation of packaging to be different it held that there was no similarity between the two marks. The court refused to any relief to the plaintiff.

The Supreme Court's proposition[5] the principles being that the words must be compared as a whole and while comparing the marks, greater regard should be paid to the uncommon element in the two marks and upon such comparison if it is found that the uncommon elements are so dissimilar as cannot be confused with each other, then the conclusion would be that the marks are not deceptively similar, today has become the guiding principle to deal with such issue.

Thus, putting this dictat conversely, it becomes clear that if a comparison of the uncommon elements reveals that there is a likelihood of deception and/or similarity, then it can be clearly established that the marks are deceptively similar.

It is important to mentioned here that the  Hon'ble High Court of Delhi, while observing the Plaintiff to proprietor to its subject matter trademark , has refused to recognize its right in the part of common element. The finding is as under:

While it cannot be denied that the plaintiff has a proprietary right in the trade mark RICH‟S WHIP TOPPING in relation to goods referred to in the plaint. And these rights obtain both with respect to those conferred upon the plaintiff under the Trade Marks Act as well as under common law. The rights of the plaintiffs do not extend to a part of the trade mark, i.e., WHIP TOPPING. Rights in the entire or whole does not necessarily translate into a right in a part of the trade mark - as in this case

The court, while dealing with the issue of trans-border reputation and issue of secondary significance, observed the finding as under:

The plaintiff has not been able to discharge its onus with respect to trade mark  RICH‟S WHIP TOPPING with obvious emphasis on WHIP TOPPING has acquired secondary distinctive meaning and, therefore, trans border reputation. The plaintiffs on their own accord having accepted the limitation both in USA and New Zealand with respect to the exclusive right to use the word TOPPING and WHIP TOPPING - both of which form part of its registered trade mark RICH‟S WHIP TOPPING. Similarly, in India the plaintiff has accepted disclaimer in respect of letter S and the word Topping‟ once again as part of its trade mark RICH‟S WHIP TOPPING.

Though it is well settled proposition of law that while comparing the two trademarks, the essential features has to be seen. The true test is that the trademark has to be compared as a whole. The crux is that the court normally disregard the common element available in both the trademarks while examining the deceptively similarity and the uncommon element plays important role in this regard. Ultimately the  Hon'ble High Court of Delhi dismissed the suit.

End-Notes:

1. 1970 AIR(SC) 2062
2. 2002 (25) PTC 563
3. 1994 (14) PTC 260
4. IA.No. 1607/2004 In Cs(Os) 246/2004
5. Remidex Pharma Private Limited v Savita Pharmaceuticals P. Limited and Anr 2006 (33) PTC 157

Written By: Ajay Amitabh Suman, Advocate,  Hon'ble High Court Of Delhi