Case Note & Summary
The plaintiff, Ultra Tech Cement Limited, filed a suit alleging that the defendants, Alaknanda Cement Pvt. Ltd. and another, were infringing its registered trademark 'ULTRATECH CEMENT The Engineer's Choice' and passing off their cement as that of the plaintiff by using the mark 'ULTRA TUFF'. The plaintiff is a company engaged in manufacturing and marketing cement and allied products, and is the registered proprietor of the trademark 'ULTRATECH CEMENT The Engineer's Choice' registered under number 1326528 in Class 19 of the Trade Marks Act, 1999. The plaintiff claimed that it has been using the mark since 2004 and has acquired a vast reputation and goodwill. The defendants are also in the cement business and adopted the mark 'ULTRA TUFF' for their cement products. The plaintiff contended that the defendants' mark is deceptively similar to its mark, both phonetically and visually, and that the use of the common prefix 'ULTRA' is likely to cause confusion among consumers. The defendants argued that the marks are not similar as the plaintiff's mark is a composite mark with additional words 'CEMENT The Engineer's Choice', while their mark is 'ULTRA TUFF', and that there is no likelihood of confusion. The court, after hearing arguments, held that the dominant feature of the plaintiff's mark is 'ULTRATECH', and the defendants' mark 'ULTRA TUFF' shares the common element 'ULTRA', making it deceptively similar. The court noted that in the cement trade, goods are often purchased by illiterate or semi-literate persons who rely on the overall impression of the mark. The court found that the defendants' mark infringes the plaintiff's registered trademark and also amounts to passing off. The court granted an injunction restraining the defendants from using the mark 'ULTRA TUFF' or any other mark deceptively similar to the plaintiff's trademark. The court also ordered the defendants to pay costs.
Headnote
A) Trade Marks Act, 1999 - Infringement - Section 29 - Deceptive Similarity - The court considered whether the mark 'ULTRA TUFF' is deceptively similar to the registered mark 'ULTRATECH CEMENT The Engineer's Choice' in respect of cement. The court held that the dominant feature 'ULTRA' is common and the overall phonetic and visual similarity is likely to cause confusion among consumers, especially in the cement trade where goods are often purchased by illiterate or semi-literate persons. The court found that the defendants' mark infringes the plaintiff's registered trademark. (Paras 1, 10-12) B) Trade Marks Act, 1999 - Passing Off - Deceptive Similarity - The court examined whether the defendants' use of 'ULTRA TUFF' amounts to passing off their cement as that of the plaintiff. The court held that the plaintiff has established a strong reputation and goodwill in its mark 'ULTRATECH CEMENT', and the defendants' mark is deceptively similar, leading to a likelihood of confusion. The court granted an injunction restraining the defendants from using the mark 'ULTRA TUFF' or any other deceptively similar mark. (Paras 1, 13-15) C) Trade Marks Act, 1999 - Composite Mark - Dominant Feature - The court analyzed the composite mark 'ULTRATECH CEMENT The Engineer's Choice' and held that the word 'ULTRATECH' is the dominant and essential feature. The defendants' mark 'ULTRA TUFF' shares the common prefix 'ULTRA' and is phonetically and structurally similar, making it likely to cause confusion. The court rejected the argument that the marks are dissimilar because of the additional words in the plaintiff's mark. (Paras 10-12)
Issue of Consideration
Whether the defendants by using the trade mark 'ULTRA TUFF' are guilty of infringing the plaintiff's registered trade mark 'ULTRATECH CEMENT The Engineer's Choice' and/or passing off their goods as that of the plaintiff.
Final Decision
The court allowed the Notice of Motion and granted an injunction restraining the defendants from using the mark 'ULTRA TUFF' or any other mark deceptively similar to the plaintiff's trademark 'ULTRATECH CEMENT The Engineer's Choice'. The defendants were also ordered to pay costs.
Law Points
- Trademark infringement
- passing off
- deceptive similarity
- phonetic similarity
- composite mark
- class of goods
- Trade Marks Act 1999
