Identically Different or Dissimilarly Same?
What’s in a name? A rose by any other would smell as sweet. But when there are crores riding on it, a name can be a prized possession. And name calling, or hearing, can be the source of legal battles.
Normally, words found in the dictionary are not granted trademark status. The intention is to create words that are unique. Sometimes, with long usage, geographical exceptions are allowed. Champagne, the bubbly, is actually the name of a region in France. If one produces better stuff, more potent or tastier, it cannot be labelled after the area, unless the grapes are grown there. Kolahapuri chhapals must come from that town. As must Basmati rice from India, Darjeeling tea from the hills and Assamese brew from the neighbouring state; Scotch from the highlands.
Problems start when sight and taste are clubbed with acoustics. Can one market a car called Kadillac? Or Totapuri mangoes as Alfonso? Or Thai rice as Baasmati? The intent is clear. Misleading cannot be allowed, though one can sell Norton biscuits. Or Seiko shoes. No mistaken identity there.
LONDON DAIRY is the make of an ice cream. It sells in tubs, paper packs and cones. There are many varieties. Every type of container has a picture of an ice cream. The predominant colour is a dark blue or black. It has to be kept refrigerated but, obviously, posters hang out in the heat. It’s not priced like ice-golas. The company is incorporated in the Middle East.
LONDONDERRY is Parle’s brand for sweets. Foil packaging is predominantly red, pictures show small sweets. The product sells at two for a rupee. Parle is Mumbai-based.
While it is impossible to go into the nuances of marks and their uses in a single column, these were the important points. For trademarks registration, a class is selected and then a product in that class. Both ice cream and sweets, food items, fall under Class 30. London Dairy specified ice cream; as it was all it sold. Likewise, Parle asked for boiled sweets. It may not be chalk and cheese but even the raw materials vary. One would melt in the mouth. The other would, well, melt. One sold world-wide. The other had humbler clientele. The only convergence seemed homophonic.
You be the judge.
Would you grant interim injunction against selling LONDONDERRY sweets?
The judge, at the very initial stage, conceded that such matters are subjective and only a judge can judge, as he feels right. There are not, and cannot be, measurable rules. He has to weigh the pros and cons and decide, as decide he must. He brought in our favourite theory of the reasonable man and put himself in the former’s shoes. The only question can then be this. Did Parle purposefully plan to deceive buyers of LONDON DAIRY into buying LONDONDERRY sweets? If yes, injunction needs be granted. If not, no action at notice of motion stage against Parle.
Far-fetched, felt the judge of the objections raised by Dairy. No relief for now.
The matter is now going to trial. Would the defence stand the argument on its head and ask if LONDON DAIRY could sell 100-rupee ice creams to a person wanting to put a 50-paise sweet in his mouth? Will the plaintiff ask why Parle could not come up with another name? Londonberry, for instance? Will the contesting parties carry out surveys to determine if the public at large would, or would not, be misled? Can the complainant show loss? Can the defendant prove otherwise? Can phonetics be the sole criteria? Or should other distinguishing facets be brought in? Can one word and a split word be considered the same?
But, then, all three words are of common usage. London and Londonderry are names of cities. Dairy is an everyday term. Will that weigh? Or is it not sufficient? Should both marks be not granted?
The reasonable man all over again. Vive le difference! Or the lack of it!
NB. This article may appear in the Daily Times, NOT Delhi Times.
(Bapoo Malcolm is a practising lawyer in Mumbai. Please email your comments to [email protected])
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