Author: Intern - Himani Jaruhar
In the matter of Nishi Gupta vs. Cattle Remedies, [W.P. (C) 13710/2018 & CM Appl. 53530/2018], a single judge [J.R. Midha, J.] of the High Court of Delhi vide judgment dated June 04, 2021, dismissing the writ petition challenging an order by the IPAB (Intellectual Property Appellate Board), has effectively held that the writ petitioner’s unawareness about an earlier registered mark is an unacceptable defense against the removal of impugned trademark for deceptive similarity with the earlier registered mark.
Section 11 of the Trademark Act, 1999 (the Act), states that “a trademark shall not be registered if, because of …its similarity to an earlier trademark and the identity or similarity of the goods or services covered by the trademark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trademark.” The question that arises is whether having no actual knowledge about the earlier registered mark negates ‘similarity’ and thus constitutes a defense to the applicability of Section 11 to the impugned mark? Or is the test of similarity an absolute one, independent of knowledge, awareness and cognizance?
In the instant case, the petitioner brought a writ petition challenging the order passed by the Intellectual Property Appellate Board (IPAB) through which the petitioner’s trademark was removed as per section 57 of the Act, from Register of Trademark as it was found to be violative of section 11 of the Act. The petitioner is the owner of the trademark UTROTON which was registered in 2010 under class 31, whereas the respondent is the owner of the trademark UTEROTONE, which was conceived and adopted for veterinary preparations in 1968 and was registered in 1991 under class 5.
The petitioner contended that she had no knowledge of the respondent’s trademark and her trademark and the respondent trademark are different and used for different purposes. The respondents submitted that both the product and their usage are similar and they contain many common ingredients. Moreover, the stark similarity reflects that the petitioner was well aware of the respondent’s mark and is making false claims through the petition.
The Court, upholding the IPAB order, finding that the mere dropping of an alphabet was mala-fide and made no difference to the visual, structural, and phonetic similarity between the two, held that since the Register is open to public inspection and public search, an applicant is deemed to be aware or have constructive notice of its prior entries. It observed: “…if the trademark having an element of prior continuance and use, has been copied, no amount of explanation, even if it is plausible, is capable of defending infringement of trademark of such prior user.”
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