Case Note & Summary
The respondent-plaintiff, Ultratech Cement Limited, filed a suit for trademark infringement and passing off against the appellants-defendants, Alaknanda Cement Private Limited and Raghav Cement, alleging that the defendants' use of the mark 'ULTRATUFF CEMENT' was deceptively similar to their registered trademark 'ULTRATECH CEMENT The Engineer's Choice' (Registration No. 1326528). The plaintiff had been using the mark since 31.10.2004, registered w.e.f. 17.12.2004, valid until 17.12.2014. The defendants also manufactured cement. The learned single Judge allowed the plaintiff's Notice of Motion, granting an interim injunction restraining the defendants from using the impugned mark. The defendants appealed. The appellants argued, relying on Section 17(2) of the Trade Marks Act, 1999 and the Supreme Court judgment in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, that the plaintiff's mark was a composite mark and the word 'ULTRATECH' was not distinctive, thus no infringement could be claimed for that part alone. The court, however, found that the dominant feature of the plaintiff's mark was 'ULTRATECH', and the defendant's mark 'ULTRATUFF' was phonetically and structurally similar, leading to a likelihood of confusion. The court held that the exception under Section 17(2) did not apply as the mark as a whole was infringed. The appeal was dismissed, upholding the injunction.
Headnote
A) Trade Marks Act, 1999 - Infringement - Deceptive Similarity - Section 17(2) - Composite Mark - The court considered whether the defendant's mark 'ULTRATUFF CEMENT' infringed the plaintiff's registered composite mark 'ULTRATECH CEMENT The Engineer's Choice'. The court held that the dominant feature 'ULTRATECH' is phonetically and structurally similar to 'ULTRATUFF', and the addition of other words does not avoid infringement. The exception under Section 17(2) for non-distinctive parts was not applicable as the mark as a whole was infringed. (Paras 1-3)
Issue of Consideration
Whether the mark 'ULTRATUFF CEMENT' is deceptively similar to the registered trademark 'ULTRATECH CEMENT' so as to constitute infringement and passing off.
Final Decision
The appeal was dismissed. The interim injunction granted by the learned single Judge was upheld.
Law Points
- Trademark infringement
- passing off
- deceptive similarity
- composite mark
- Section 17(2) Trade Marks Act
- 1999
- phonetic similarity
- Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories
Case Details
Appeal Lodging No. 463 of 2011 in Notice of Motion No. 1183 of 2009 in Suit No. 743 of 2009
Mohit S. Shah, C.J., Girish S. Godbole, J.
Mr. Iqbal Chagla, Mr. Sandeip Parikh, Mr. Hemang Engineer i/by Gordhandas & Fozdar for Appellants; Mr. Virag Tulzapurkar with Mr. Amit Jamsandekar, Alka V. Parelkar i/by V.A. Associates for Respondent
Alaknanda Cement Private Limited and Raghav Cement
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Nature of Litigation
Appeal against interim injunction order in a trademark infringement and passing off suit.
Remedy Sought
The respondent-plaintiff sought an interim injunction restraining the appellants-defendants from using the mark 'ULTRATUFF CEMENT' or any deceptively similar mark.
Filing Reason
The respondent alleged that the appellants' use of 'ULTRATUFF CEMENT' infringed its registered trademark 'ULTRATECH CEMENT The Engineer's Choice' and amounted to passing off.
Previous Decisions
The learned single Judge allowed the Notice of Motion and granted an interim injunction in terms of prayer clauses (a) and (b).
Issues
Whether the mark 'ULTRATUFF CEMENT' is deceptively similar to the registered trademark 'ULTRATECH CEMENT The Engineer's Choice'.
Whether Section 17(2) of the Trade Marks Act, 1999 provides a defence against infringement of a composite mark.
Submissions/Arguments
Appellants argued that the plaintiff's mark is a composite mark and the word 'ULTRATECH' is not distinctive, relying on Section 17(2) and Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories.
Respondent argued that the dominant feature of its mark is 'ULTRATECH' and the defendant's mark 'ULTRATUFF' is phonetically and structurally similar, causing confusion.
Ratio Decidendi
In a composite mark, if the dominant feature is infringed by a deceptively similar mark, the exception under Section 17(2) of the Trade Marks Act, 1999 does not apply. Phonetic and structural similarity between 'ULTRATECH' and 'ULTRATUFF' leads to likelihood of confusion, warranting an injunction.
Judgment Excerpts
By the impugned Judgment and Order dated 20th June, 2011, the learned single Judge (S.J. Kathawala, J.) has allowed the Notice of Motion No. 1183 of 2009 filed by the respondent-plaintiff in terms of prayer clauses (a) and (b).
Learned Senior Advocate Mr. Chagla relied upon Section 17 of the Trade Mark Act, 1999 and submitted that Section 17(2) carves out an exception.
Procedural History
The respondent-plaintiff filed Suit No. 743 of 2009 and Notice of Motion No. 1183 of 2009 seeking interim injunction. The learned single Judge allowed the Notice of Motion on 20th June 2011. The appellants filed Appeal Lodging No. 463 of 2011 against that order. The appeal was heard and dismissed on 18th November 2011.
Acts & Sections
- Trade Marks Act, 1999: Section 17, Section 17(2)
