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June 14, 2021

Court Case Bulletin (CCB): Generic Part of Trademark Does not Necessarily Compromise Test of Deception

Author: Intern - Chetna Singh

In the matter of Natures Essence Pvt Ltd v Protogreen Solutions Pvt Ltd & Ors [2021 SCC OnLine Del 1538] the High Court of Delhi [C. Hari Shankar, J]  by its judgement dated March 9, 2021, held that any claim of monopoly over a generic word component is irrelevant to the test of deceptive similarity of marks. 

Section 29 (1) of the Trade Marks Act, 1999 provides –“A registered trademark is infringed by…a mark which is identical with, or deceptively similar to, the trade mark...” The case is authority for the proposition that the entire mark against the entire mark test of deceptive similarity for the purposes of this Section is not compromised by the presence of a generic word as component or part of the trade mark. This is notable given the concern of the statute with the limitation on the scope of right accorded to a part of a mark upon registration – Section 17 provides that “(1) When a trade mark consists of several matters, its registration shall confer…exclusive right to the use of the trade mark taken as a whole. (2) Notwithstanding anything contained in sub-section (1), when a trade mark— … (b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered.” 

The defendant had submitted that “…it is asserted that the expression “NATURE” is publici juris” when it is used in the context of beauty and cosmetics products and about 1100 trademarks with the word “NATURE” are registered in the Registrar of Trademarks and that “…the plaintiff cannot claim any exclusive monopoly over the word “NATURE” or “NATURE’S”. The plaintiff had contended  that the expression “NATURE’S” and “NATURE’S ESSENCE” and any goods or products, in the market, sold using brands containing the word “NATURE’S” and “NATURE’S ESSENCE”, are necessarily associated with the plaintiff alone and not with anyone else. Hence,  the defendant’s mark “NATURE’S TATTVA” infringes.

The court ruled in favour of the plaintiff saying it would be totally antithetical to all canons of trademark jurisprudence to question the validity of the plaintiff’s marks because “Nature” is a descriptive word as “once “Nature’s” is used in conjunction with “Inc.”, or “Essence”, it assumes a definite and distinct – as well as distinctive – connotation and meaning, which is totally different from “Nature” per se.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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