13 October 2017

Trademark infringement when products involved are different

In a case pertaining to a suit for trademark infringement and passing off, in the mark “Vogue”,  the trial court had vacated the ex-parte interim injunction in favour of the plaintiffs(Advance Magazine Publishers Inc). The appeal against that was dismissed by the Delhi High Court.  The plaintiff was the owner of the mark “VOGUE” used in respect of publications related to fashion while the defendant(Bombay Rayon Fashions Limited) was using the marks LINEN VOGUE/LINEN VOGUE LA CLASSE in respect of cloth/textiles. The plaintiff alleged that the use by the defendant constituted infringement.

The Single Judge (SJ) held that Section 29(2) of the Trademark Act, 1999 would not apply as the products and services of the appellant/plaintiff and that of the respondent/defendant were completely different. It was held that under sub-Section 29(2) aspect of identity and similarity of respective trademarks cannot be looked into independently of the products/services of the respective parties as the legislature uses the expression “and” which irretrievably fastens both the aspects of trademarks and goods/services. Further, it was held that simply because there was some sort of commonality of trade channels and consumers, it cannot be held that there is identity of trade channels and consumers. With respect to the applicability of Section 29(4), the SJ held that since both parties have arguable case, the matter can only be decided after trial. The Court also addressed the concerns that the defendant also publishes catalogues or magazines, however differentiated that from the Plaintiff’s business by stating that the defendant does not sell these catalogues and instead only uses the same for advertisement purpose. Plaintiff’s appeal was accordingly dismissed. 


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