India: Deceptive Similarity Among Alpha-Numerics

The trouble faced by some of the most well established trademark owners is the fear of a deceptively similar mark emerging in the market. While such marks are most likely to confuse the unsuspecting consumers it is the original TM owner’s reputation and goodwill, which is at stake. The Intellectual Property Appellate Board [IPAB], Chennai in Tata Engineering & Locomotive v. Deputy Registrar of Trade Marks & Ors. 2006 (32) PTC 830 (IPAB) had an opportunity to consider this aspect.

M/s Super Cassettes Industries had filed an application to register their mark, the letter ‘T’ in a circle along with the word SERIES, in respect of their range of electric and electronic goods, falling under Class 9 of the Trade and Merchandise Marks Act, 1958. Upon advertisement of the acceptance in the Trade Marks Journal, M/s Tata Engineering and Locomotive Company Ltd. (TELCO) (the appellants in the present suit) filed their notice opposing the registration. They contended that they were registered proprietors of the trademark letter ‘T’ in respect of goods falling under Classes 6, 7, 9 and 12 of the Act, and that vide this, they had attained goodwill and reputation. They averred that the impugned mark would offend the provisions of Sections 9, 11(a), 12(1) and 18(1) of the Act. In its counter statement, the respondents, refuted the averments in the notice, further contending that they were in the business since 1979 and by virtue of long, continuous and extensive use and publicity, their trademark had become distinctive and had acquired repute in their scheme of trade. The Deputy Registrar of Trademarks, the first respondent in the case, had heard the matter and had directed the application to be registered. He further stated that the appellant could not monopolize the letter ‘T’.

TELCO contended that the letter ‘T’ in a circle was the registered trademark of the Tata Group Industries. The mark being available on every product, irrespective of the field, had become their recognition and that they had obtained goodwill and reputation vide its use. They stated that the adoption of the same mark by the respondents would create confusion in the mind of the public as such and hence its registration not be permitted.

The Deputy Registrar had permitted the same on the ground that the characteristic feature ‘T’ and not on the circle, hence eliminating any chance of deception or confusion. The Counsel for the appellant further held that the grounds brought forth by the Deputy Registrar would not hold good, since the Registrar had proceeded on the grounds that the circle around the ‘T’ had been removed.

The Counsel for the Respondent, Super Cassettes Industries contended that they were seeking registration of a mark distinct from that of the appellants. Furthermore, the goods being on entirely different lines of trade could not be confused with. In reply to these averments, they furnished details regarding various products that they had registered. They stated that the registration of ‘T-Series’ was made in a particular fashion, and that they did not see any reason to change the same.

It was further stated that the letter ‘T’ used within a circle with the term ‘SERIES’ below could not be bona fide. Furthermore, the appellants sought to remove the circle from the impugned mark implied that they did not want to monopolize the letter ‘T’, but were rather particular that the letter not be used in the style adopted by them, which was their logo.

Relying on the popular Benz case (Daimler Benz Aktiegesellschaft & Anr v. Hybo Hindustan, AIR 1994 Delhi 239), the Tribunal was of the view that Super Cassettes could not be allowed to use the letter ‘T’ within a circle. Accordingly the appeal was partly allowed modifying the impugned order of the Deputy Registrar and the second respondent was ordered to remove the circle around ‘T’ and was required to get the registration of the mark ‘T-Series with the letter ‘T’ done having the word ‘Series’ in a rectangle.

The Board vide this order has clarified further that no trademark holder is entitled to monopolize over an alphanumeric expression yet upheld the aspect that any deceptively similar mark shall not be registrable.

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