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October 29, 2021

Court Case Bulletin (CCB): Showing Similarity In Non-Essential Features Is Not Adequate For Passing Off Action

Author: Intern - Ashley George

In the matter of ITC Limited vs CG Foods (India) Private Limited [O.S.No.177/2021], a Division Bench [Aravind Kumar, J. and Pradeep Kumar Yerur, J.] of the High Court of Karnataka dismissed an appeal against the lower court’s order denying temporary injunction to the Plaintiff and held that merely showing some ‘similarity’ in the non-essential features of rival marks would not suffice to constitute infringement or initiate a passing off action.

Section 29(2) of the Trade Mark Act, 1999 states: “A registered trade mark is infringed by a person who…uses in the course of trade, a mark which because of— (a) its identity with the registered trade mark … by such registered trade mark; or (b) its similarity to the registered trade mark … by such registered trade mark; or (c) its identity with the registered trade … is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.” The question arises whether ‘similarities’ and not dissimilarities is the relevant test for likelihood of deception and would ‘similarity’ in unessential features amount to mere copying without the strength to deceive?

The Plaintiff claimed that the Defendant had tarnished their goodwill and reputation by incorporating a similar colour scheme of red and orange in packaging its products. They further claimed that the Defendant’s product was deceptively similar to their product and the Defendant’s actions constituted passing-off and infringement of the Plaintiff’s copyright in the product’s trade dress. The Plaintiff contended that extent of similarity of the Defendant’s products is sufficient to ‘deceive’ the relevant class of consumers. The Defendant denied all the allegations of passing-off and infringement.

The Court in the present case observed that “Similarity in essential features is what amounts to misrepresentation as it deceives or is likely to deceive the buyer into thinking he has purchased what he wanted, when in reality, he has purchased a different product. Similarity in unessential features, howsoever strong, amounts to mere copying without the strength to deceive. The law of passing off does not concern itself with allegations of ‘unfair copying’ of this kind – it is interested to protect plaintiff only against material misrepresentation’ of his goods.

Therefore, the Court concluded that there is no infringement on behalf of the Defendant and stated that “the plaintiff cannot demonstrate that substantial features of the plaintiff’s get up has been reproduced in the defendant’s get up, then merely showing similarity or identity in other non-essential features will be of no consequence.

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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