India: Deception and Vernacular Lingo: Is confusion the Catch Point?

Linguistic vibrance and colloquial jargons are colourful add-ons to the cultural flora of a region. But where technical aspects such as registration of trademarks are concerned, vernaculars often tend to inculcate deceptiveness amongst the brands. Trademark law in this regard emphasizes that the similarity must result in a likelihood of confusion or deception. This is certain amongst products /goods belonging to similar trade lines or bearing similar marks.

The case at hand, M/s Ram Gopal Soap Factory v. Godrej Soaps Ltd. & Ors. 2006 (32) PTC 847 (IPAB) is a standpoint in the matter.

Soap manufacturers, M/s Ram Gopal Soap Factory, Jaipur, filed an application to register the trademark "CHABI" (in the Devanagari script) which was put to use on its washing soap, for sale in Jaipur and Pali districts in Rajasthan. The applicants claimed to be users of the mark since 1978. On the publication of their application in the Trade Marks Journal, M/s Godrej Soaps Limited, gave a notice of their intention to oppose the registration of the mark. Sections 11(a), 12(1) and 18(1) of the Trade and Merchandise Marks Act, 1958, laid the foundation for the opposition. Both the parties filed evidence in this regard.

The Assistant Registrar, in the light of Section 12(1), noticed that the opponent is the registered proprietor of the trademark "CHAVI" in respect of all kinds of toilet soaps, limejuice, glycerin, and other toilet preparations. They had also registered the same with respect to soaps, scouring powder as well as detergents (for purposes other than industry and manufacture). The Registrar found the mark "CHAVI" to be similar to "CHABI"; the former impugned mark being used for toilet soaps, while the latter mark used for "washing soaps". On the basis of the similarity in script and trade it was concluded that the two conditions satisfied Section 12(1).

Examining Section 12(3) of the Act, the applicants were held not entitled to registration. The section dealing with the concept of an "honest-concurrent user" was held to be inapplicable, since in the Assistant Registrar’s opinion, the use of the mark "CHABI" did not appear to be an honest adoption. The mark was already held to have been registered in the opponents name, had acquired reputation vide it, hence its use conveyed the impression of the goods being related to that of the opponents. In this light, the Assistant Registrar held the ground of Section 18(1) to have failed.

Sh. Tirath Das, a former partner of M/s Ram Gopal Soap Factory, filed a counter statement, stating that since the mark applied for had fallen into his share, he was the rightful proprietor of the mark. An application to register the mark was jointly filed by Sh. Tirath Das and another partner, but the Assistant Registrar refused the same under Section 18(4) of the Act, in view of the fact that the applicant did not possess proprietorship of the mark applied for.

Sh. Tirath Das filed an appeal in the capacity of being the proprietor of the mark and partner of the factory. He submitted that the Assistant Registrar had wrongly decided the matter under Sections 12(1), 12(3) and 18(1) and further, having identified Section 11(a) had ignore to pass orders under that Section.

The Counsel for the appellant, drawing the Board’s attention to the sales figures of the applicant’ brand "CHABI", stated that it was in use since 1978 and has established a position for itself in Jaipur and Pali. "CHAVI", the opponent’ brand was nowhere found in those regions. Bringing forth the sales figures of the opponents, the Counsel for the applicants averred that the opponents had something to hide.

The Board held that Section 12(1) of the Act would be applicable only if all the tests in terms of identity and description were met. The Board held that the Section had miserably failed, the two marks being phonetically and visually similar to each other. The two marks in Devanagri script were held to attract further deceptiveness, making them appear more or less the same. The Board also held that in vernaculars, many people would pronounce the applicant’s mark as that of the opponent’s and vice versa.

Considering the fact that the opponents had begun manufacturing their brand way back in 1942, the Board held that having the knowledge of their repute, the applicants had started selling the goods under a deceptive mark, disentitling themselves of the defence of being an "honest-concurrent user". Further, it was held that the mark annulled the provisions of Section 11(a), 12(1) and 12(3) apart from sections 18(1) and 18(4). In this regard, the appeal was dismissed.

It seems that the ambit of the term ‘deceptively similar’ has widened itself from mere resemblance in appearance or name, and has extended itself to include cultural discrepancies. While language and communication may be a marketing barrier that can be overcome with ease, this shall remain a barge pole when it comes to trademark registry.

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