Deceptive Similarity Revisited (Madras HC)

In Law, Deceptive similarity indicates confusion caused either
deliberately or inadvertently over two similar products enough to
mislead an ordinary prudent man that he is likely to choose the
deceptive product over the original product. The significance of the
decision in this case lies in the approach of the Court looking at and
interpreting the deceptive similarity and Section12 of Trademarks Act.
V.Pichandi Sole Proprietor, in a move against G.Charapani Match Works
[V.Pichandi Sole Proprietor & Ors Versus G.Chakrapani Match Works &
Ors,2010 (42) PTC29(Bom)] alleged them for breach of trademark before
the Madras High Court. V.Pichandi Sole Proprietor, the plaintiff is
conducting business in the sale of safety matches under the trademark
PLUS2 particularly in the district of Beed, Aurangabad, Ahmednagar.
G.Chakrapani Match Works, Defendant No1 is manufacturer of safety
matches bearing offending trademark PLUS5. Both are similar and
chances for administration of PLUS5 by consumers in place of PLUS2 is
higher. The customers are purchasing safety matches with trademark
PLUS5 under the belief that they are purchasing safety matches with
trademark PLUS2 and this has put V. Pichandi Sole Propritor into
irreparable loss. It's not only a case of trademark infringement but
also passing off. Thus it was asserted that a perpetual injunction be
granted to avoid such dangerous consequence.
The G.Chakrapani Match Works, averred to be the registered proprietors
of trademark PLUS2. According to him a logo of his personal
photograph, distinguishes it from the trademark of V.Pichandi Sole
Proprietor and contended that the V.Pichandi Sole Proprietor have been
using different designs than the registered trademark. Thus V.Pichandi
Sole Proprietors were not entitled to equitable relief and question
regarding passing off and infringement of trademark doesn't arise. It
was submitted that during the pendency of the case G.Chakrapani Match
Works, successfully registered the trademark PLUS5 with the registrar
of trademark. They further submitted that the Intellectual Property
Appellate Board and Trial Court had dismissed the suit before it on
the ground that no confusion or deception has been substantiated by
the grant of trademark to G.Chakrapani Match Works, of PLUS5 and thus
the writ petition by V.Pichandi Sole Proprietor is pending before
Madras high court.
Further Section 12 of the Act was observed while opining about the
judgement passed by the Appellate Board produced before the Trial
Court. Section 12 of Trademark Act 1999 defines honest concurrent use
of trademark. As per Section 12 in case of honest concurrent use or of
other special circumstances which, in the opinion of the Registrar,
make it proper so to do, he may permit the registration by more than
one proprietor of trade marks which are identical or nearly resemble
each other, whether any such trade mark is already registered or not,
in respect of the same goods or description of goods, subject to such
conditions and limitations, if any, as the Registrar may think fit to
impose.
The Trial Court had concluded on basis of Section 12 that there was no
evidence of infringement of trademark or passing of and this was not a
case to issue temporary injunction. The Trial Court opinioned that
granting temporary injunction in this appeal would be upsetting since
writ petition was pending before the Madras High Court. So if any
interim order has to be sought it should be sought in writ petition
pending before the Madras High Court.
On comparison of claims the Madras High Court held that, this civil
application pending doesn't survive. In this view the Court disposed
of the civil application and the parties were to bear their own cost.