Case Note & Summary
Parle Products (P) Ltd., manufacturers of biscuits and confectionery, owned registered trade marks including the word 'Gluco' and a wrapper registered under the Trade Marks Act, 1940 as No. 9184 of 7 December 1942, used for half-pound biscuit packets known as 'Parle's Gluco Biscuits'. The wrapper depicted a farmyard with a girl carrying a pail of water, cows and hens on a buff background. In March 1961, the appellants discovered that J.P. & Co. Mysore was manufacturing and selling biscuits in a wrapper which they considered deceptively similar to their registered trade mark. Despite a lawyer's notice, the respondent continued the activity, leading the appellants to file a suit for an injunction restraining infringement of their registered trade mark. The trial court meticulously compared the two wrappers and found greater dissimilarities, holding that there was no chance of deception. The Mysore High Court confirmed the dismissal, stating that although the general get up was similar, the distinguishing features were noticeable and that a purchaser asking specifically for Parle biscuits would not be deceived. The appellants appealed by special leave to the Supreme Court. The core legal issue was whether the respondent's wrapper was deceptively similar to the appellant's registered trade mark, and the correct test for determining deceptive similarity in an infringement action as opposed to passing off. The appellants argued that the wrapper was deceptively similar and infringed their statutory rights. The respondents denied deceptive similarity, pleading ignorance of registration and pointing to differences in design, such as a girl carrying a hay bundle instead of a pail, different animals and buildings, and distinct words. The Supreme Court held that the lower courts fell into error by comparing the wrappers side by side and focusing on differences. Under Section 2(d) of the Trade and Merchandise Marks Act, 1958, a mark is deceptively similar if it so nearly resembles another as to be likely to deceive or cause confusion. The proper approach is to consider the broad and essential features and overall similarity, not minor details. The court relied on Durga Dutt v. Navaratna Laboratories to distinguish infringement from passing off: infringement is a statutory remedy protecting the exclusive right to use the mark, and if essential features are adopted, added matter differences are immaterial and no proof of actual deception is required. Applying this test, the court found that the packets were practically the same size, the colour schemes almost identical, and the designs bore such close resemblance that one could easily be mistaken for the other. The Supreme Court allowed the appeal, set aside the concurrent findings of the trial court and High Court, and held that the respondent's wrapper was deceptively similar to the appellant's registered trade mark, thereby infringing it. The suit for injunction succeeded.
Headnote
A) Trade Marks - Infringement - Deceptive Similarity - Trade and Merchandise Marks Act, 1958, Sections 2(d), 29(1) - A registered trade mark is infringed by use in the course of trade of a mark identical with or deceptively similar to the registered mark in relation to the goods covered by registration. Deceptive similarity means a mark so nearly resembling another as to be likely to deceive or cause confusion. The court must consider the broad and essential features of the two marks as a whole, not compare them side by side; overall similarity likely to mislead a person usually dealing with one to accept the other is sufficient. Held that the lower courts erred by focusing on dissimilarities; respondent's wrapper was deceptively similar to appellant's registered wrapper. B) Trade Marks - Infringement vs Passing Off - Statutory Remedy and Essential Features - Trade and Merchandise Marks Act, 1958, Section 28(1); Trade Marks Act, 1940, Section 21(1) - In an action for infringement, the plaintiff must show that the defendant's use is likely to deceive, but if the essential features of the plaintiff's mark are adopted, no further evidence of actual deception is required. Added matter differences are immaterial in infringement, whereas in passing off they may distinguish goods. Held that applying the passing off approach was erroneous; infringement is a statutory right to exclusive use and use of deceptively similar mark is sufficient.
Issue of Consideration
Whether the respondent's biscuit wrapper was deceptively similar to the appellant's registered trade mark and thereby infringed the appellant's exclusive right; and the correct legal approach to determine deceptive similarity in a trade mark infringement action.
Final Decision
Appeal allowed; the concurrent findings of the trial court and the High Court that the respondent's wrapper was not deceptively similar were set aside; the Supreme Court held that the respondent's wrapper was deceptively similar to the appellant's registered trade mark and infringed it. The suit for injunction succeeded.
Law Points
- Deceptive similarity under Section 2(d) of Trade and Merchandise Marks Act
- 1958
- Infringement under Section 29(1)
- Exclusive right under Section 28(1)
- Broad and essential features test
- Overall similarity rather than side-by-side comparison
- Distinction between infringement and passing off
- Sine qua non of defendant's use in infringement
- Added matter differences immaterial if essential features adopted
