Case Note & Summary
The petitioner, Creative Tours & Travels (India) Private Limited, filed a writ petition under Article 226 of the Constitution of India challenging an order dated 26 November 2012 passed by the Intellectual Property Appellate Board (IPAB). The IPAB had allowed Miscellaneous Petition Nos.232 and 233 of 2012 filed by the respondent, Creative Travel Private Limited, and directed expunging of the petitioner's trademark 'Creative Tours & Travels' from the register. The IPAB also imposed costs of Rs.10,000 on the petitioner. The petitioner claimed to be a company incorporated under the Companies Act, 1956, and had been using the mark since 1994. The respondent, Creative Travel Private Limited, had registered the mark 'Creative Travel' in 1992 and alleged that the petitioner's mark was deceptively similar. The legal issues centered on whether the marks were deceptively similar under Section 9(2)(a) of the Trade Marks Act, 1999, and whether the petitioner could claim honest concurrent use under Section 12. The petitioner argued that the marks were not similar and that there was no likelihood of confusion, while the respondent contended that the dominant feature 'Creative' was common and the services were identical. The court analyzed the marks and found that the word 'Creative' was the essential feature, and the addition of 'Tours & Travels' was descriptive. The court held that the marks were deceptively similar and likely to cause confusion. The court also rejected the petitioner's claim of honest concurrent use, noting that the adoption was not bona fide as the petitioner was aware of the respondent's mark. The court further held that delay in opposing the mark did not bar rectification due to the public interest in avoiding deception. The Bombay High Court dismissed the petition, upholding the IPAB's order.
Headnote
A) Trade Marks - Deceptive Similarity - Section 9(2)(a) Trade Marks Act, 1999 - The court considered whether the mark 'Creative Tours & Travels' is deceptively similar to 'Creative Travel' for travel services - Held that the dominant feature 'Creative' is common and the addition of descriptive words does not avoid confusion, as both marks are used for identical services, leading to likelihood of confusion among consumers (Paras 10-15). B) Trade Marks - Honest Concurrent Use - Section 12 Trade Marks Act, 1999 - The petitioner claimed honest concurrent use since 1994, but the court found that the petitioner failed to prove honest adoption without knowledge of the respondent's mark - Held that the claim of honest concurrent use is not available when the adoption was not bona fide and the marks are deceptively similar (Paras 20-25). C) Trade Marks - Delay and Acquiescence - The respondent's delay in opposing the mark was not fatal as the petitioner's use was not honest and the public interest in avoiding confusion outweighs delay - Held that mere delay does not bar rectification when the mark is inherently deceptive (Paras 30-35).
Issue of Consideration
Whether the IPAB was correct in expunging the petitioner's trademark 'Creative Tours & Travels' on the ground of deceptive similarity with the respondent's registered trademark 'Creative Travel' under the Trade Marks Act, 1999.
Final Decision
The Bombay High Court dismissed the writ petition, upholding the IPAB order dated 26 November 2012 which directed expunging of the petitioner's trademark 'Creative Tours & Travels' and payment of costs of Rs.10,000 to the respondent.
Law Points
- Deceptive similarity
- likelihood of confusion
- trademark infringement
- honest concurrent use
- delay and acquiescence
- territorial jurisdiction of IPAB
