26 May 2017

Trademark infringement – Similarity of marks to be considered first

Observing that the marks FERANTA and INTAS’ FERINTAS are sufficiently distinguishable and does not satisfy Section 29(2)(b) of the Trade Marks Act, a Single Judge of the Bombay High Court has refused to grant an interim injunction in favour of the Plaintiffs in a trademark infringement and passing off suit.

The Court in it decision dated 5-5-2017 in this regard rejected the view that there was visual, phonetic and structural similarity between the marks, and that the Intas’ mark was deceptively similar, causing confusion.

The Court noted that while the plaintiff’s mark was a word mark, the mark of the defendant was a composite word and label mark, with the characters FER in black and INTAS in rust red colour.

It was held that the use of the word INTAS’ visually and structurally distinguished the product of the defendant from that of the plaintiff, and that the comparison has nothing to do with dissection of marks into etymological constituents.

Looking at the two marks as a whole, the Court was of the view that there was not the remotest chance of buyers being misguided or confused. Similarly arguments of harm to public interest and consideration of question of balance of convenience were also rejected by the Court citing absence of similarity.

Finally, dismissing the motion, the Court commented on the sequencing in a case involving infringement, and observed that identity or similarity of the mark should be first considered before considering similarity of goods.


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