Determining Similarity Between Rival Marks Part 2

The first part of this article exclusively dealt with the Anti-Dissection rule and the second part of this article shall pertain to the rule of dominant feature.

Introduction

It is the settled position of law that two conflicting marks have to be compared as a whole and parts of the marks cannot be dissected for ascertaining any similarity between them. This is the settled rule of anti-dissection. However, in certain cases where dominant or essential features of a trademark have been used in a rival mark thereby creating a deceptive similarity between the two rival marks, courts have observed trademark infringement. Thus, over the years, courts have propounded the rule of dominant feature. A dominant feature is a significant feature of a trademark that a consumer of average intelligence and imperfect recollection is likely to remember and rely on for purposes of identification of the product.

SECTION 11 OF THE TRADE MARKS ACT, 1999

Although, the rule of dominant feature does not directly have its roots in the provisions of The Trade Marks Act, 1999, Section 11(1)(b) of The Trade Marks Act, 1999 clearly stipulates that a trademark shall not be registered if because of its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.Thus, it can be inferred that in cases where there is trademark infringement due to deceptive similarity between two rival marks caused by the use of the dominant/essential feature of a trademark in the rival mark, the same can be construed to be a relative ground of refusal of registration of the said mark under Section 11(1)(b).

DOMINANT FEATURE-CASE LAWS

In a plethora of cases, courts have denied registration of a mark or granted injunction on account of trademark infringement caused by the use of the dominant feature of a trademark in the conflicting mark.

In Amar Singh Chawal Wala v. Shree Vardhman Rice and Genl. Mills, the issue before the Division bench of the Hon’ble Delhi High Court was the deceptive similarity between two rival trademarks ‘Lal Qilla’ and ‘Hara Qilla’ in respect of rice. The Division Bench held that the impugned trade mark ‘Hara Qilla‟ contained the essential feature of the plaintiff’s trade mark i.e. the word ‘Qilla‟ which along with the device of a fort was deceptively similar to the registered trademarks, ‘Lal Qilla’ and ‘Golden Qilla‟. It was further held that significantly the said deception was amplified by the phonetic similarity in the constituent and dominant element ‘Qilla‟ of the rival marks Golden/Lal Qilla and Hara Qilla. This decision of the Division bench of the Hon’ble Delhi High Court was later affirmed by the Hon’ble Supreme Court in Shree Vardhman Rice and General Mills v. Amar Singh Chawalwala, (2009) 10 SCC 257.

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Determining Similarity Between Rival Marks Part 2

In Avtar Singh v. Sakshi Srivastava, the Hon’ble Delhi High Court observed that the rule of anti-dissection does not impose a complete embargo upon consideration of the constituent elements of a composite mark. The issue before the Hon’ble Delhi High Court in this case was whether the impugned trademark WOODLEY was deceptively similar to the trademarks of the plaintiffs WOODLAND or WOODS. The Hon’ble Delhi High Court observed that what has to be seen is whether the two marks are structurally and phonetically similar and cause deception in the minds of consumers. After a comparison of the two marks. The Hon’ble Delhi High Court opined that it was clear that the impugned trade mark of the defendants WOODLEY was structurally and phonetically similar to that of the plaintiffs and is likely to cause confusion in the minds of consumers. In view of the Hon’ble Delhi High Court, the word ‘WOOD’ was a dominant feature of the mark of the plaintiffs, even though it was not a registered trade mark.

In S.M. Dyechem Ltd. v. Cadbury (India) Ltd., the Hon’ble Delhi High Court observed that a mark is said to be infringed by another trader if, even without using the whole of it, the latter uses one or more of its “essential features”. The identification of an essential feature depends partly on the courts’ own judgment and partly on the burden of the evidence that is placed before it. Ascertainment of an essential feature is not to be by ocular test alone; it is impossible to exclude consideration of the sound of words forming part or the whole of the mark.

In South India Beverages Pvt. Ltd. v. General Mills Marketing, the Hon’ble Delhi High Court observed that even though a mark is to be considered in entirety, yet it is permissible to accord more or less importance or ‘dominance’ to a particular portion or element of a mark in cases of composite marks. Thus, a particular element of a composite mark which enjoys greater prominence vis-à-vis other constituent elements, may be termed as a ‘dominant mark’.

RELATIONSHIP BETWEEN ANTI-DISSECTION RULE AND THE RULE OF DOMINANT FEATURE

On the face of it, the rule of anti-dissection and the rule of dominant feature appear contradictory to each other. However, in actuality these two rules are complementary to each other.In South India Beverages Pvt. Ltd. v. General Mills Marketing, the Hon’ble Delhi High Court categorically observed that the principle of ‘anti-dissection’ and identification of ‘dominant mark’ are not antithetical to one another and if viewed in a holistic perspective, the said principles rather compliment each other.

In P.K. Overseas Pvt. Ltd. v. Bhagwati Lecto Vegetarians Exports Pvt. Ltd., the Hon’ble Delhi High Court noted that to a layman it may appear to be a legal paradox, for on the one hand there is a rule that you cannot dissect a composite mark and on the other hand you have a rule which has the feature of dissecting. On one hand, it is frequently asserted in trademark infringement cases that the trademark must be seen holistically and should not be dissected into composite parts. In other words, the rule of anti-dissection is reaffirmed time and again by various courts in trademark infringement cases but on the other hand, the theory of a dominant part of a trademark is propounded which essentially requires a Court to look at the trademark compositely but identify if any part thereof is the dominant part.

CONCLUSION

The general rule is that when determining the similarity between two conflicting marks, the marks have to be compared as a whole and individual parts or components of the marks cannot be dissected. Despite that, the rule of dominant feature ensures that there is no bar on the courts to dissect composite marks to ascertain whether any part of the rival mark is a dominant feature.

Author: Sonakshi Pandey, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

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