11 June 2019

Trademarks – Passing-off when mark used in cognate and allied products

11th June 2019

In a case where Plaintiff and Defendant sold tea and biscuits respectively under the mark TODAY, Delhi High Court has held that adoption of the mark for biscuit, which is a cognate and allied product of tea, will result in deception thus passing off as both are served and consumed together.

The Court for this purpose observed that as the expression ‘Chai-biscuits’ conveys, tea and biscuits go hand in hand.

The High Court granted permanent injunction in favour of the plaintiff observing that use of the trademark registered for various products under clause 30 is infringement under Section 29 of the Trademarks Act.

It observed that clause 30 covered coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes, flour and preparations made from cereals, bread, biscuits, cake, pastry, rusk and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard, pepper, vinegar, sauces and ice. Plaintiff was held prior user considering its trademark registry, invoices, etc.

Holding that the use of an identical mark in respect of tea and biscuits is bound to result in confusion and deception as the said products are stored, served and consumed together, the Court in the case of Today Tea Ltd. v. Today Foods Pvt. Ltd. also observed that such use of identical mark for tea and for biscuits would create an immediate connection that they originate from the same source.

It was noted that Plaintiff’s TODAY tea being extremely well known, use of an identical mark for biscuits is bound to result in confusion and deception and thus passing off is inevitable.

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