The case involved two companies, Veegee Products and Sou Nayan Bharat Davda, which are both involved in the manufacture of disinfectants. Veegee manufactures a carbolic-based powder, Carbodust, while Sou Nayan manufactures the disinfectant Herbodust, which is used specifically for ditches, drains and stagnant water.
Issue
In December 2000 Sou Nayan applied to register the word 'Herbodust' as a trademark. In March 2003 Veegee acquired a drug licence for Carbodust under the Drugs and Cosmetics Act 1940. The Trademarks Journal for November 2003 carried the trademark for Herbodust, with a disclaimer to the effect that the registration of the trademark did not grant exclusive use of the word 'dust'. The mark was registered in March 2005.
In December 2000 Sou Nayan applied to register the word 'Herbodust' as a trademark. In March 2003 Veegee acquired a drug licence for Carbodust under the Drugs and Cosmetics Act 1940. The Trademarks Journal for November 2003 carried the trademark for Herbodust, with a disclaimer to the effect that the registration of the trademark did not grant exclusive use of the word 'dust'. The mark was registered in March 2005.
In August 2005 Sou Nayan instituted a suit for infringement against Veegee and an ex parte order was passed, the confirmation of which was obtained on September 30 2005. This order was challenged by Veegee.
The High Court of Bombay stated that there was a need to determine whether the two marks were deceptively similar. It said that the matter could not be judged without well-settled tests, for example decisions laid down by the Supreme Court.
Court's Perspective
The court considered a multitude of factors including the impression created by the mark and the use of words, logo and colour scheme. It also stated that in such matters no individual test could be regarded as having overriding importance. The court also included phonetic similarity, nature of the goods and nature of the customers as having a bearing on the issue.
The court considered a multitude of factors including the impression created by the mark and the use of words, logo and colour scheme. It also stated that in such matters no individual test could be regarded as having overriding importance. The court also included phonetic similarity, nature of the goods and nature of the customers as having a bearing on the issue.
Since both parties to the suit manufacture products with names including the word 'dust', the court said that it was not enough to dispose of the suit for deceptive similarity. Stating that the disclaimer issued in the journal was indicative of the fact that the word was in common usage, and bearing in mind that both names were for disinfectant products, the court sought to convey that the powder was to be dusted to prove effective.
The court, in examining the nature of the packaging, marks, logos and colour scheme, held that the products were not prima facie susceptible to an inference of deceptive similarity. The distinct use of the words 'carbo' for a carbolic powder and 'herbo' to convey the existence of a herbal substance was also held to add to the distinctiveness of the products. The court held that there was little justification for the issue of an interim injunction order.
Examining the market to which the manufacturers of the respective products catered, the court ruled that it would be unsafe to proceed at this interlocutory stage. Local government authorities that follow norms such as inviting tenders and a selection process purchase the products. The court clearly ruled that these were not goods for household use that an unwary purchaser would buy off the shelf.
In giving his decision the trial judge had laid great emphasis on the phonetic similarity of the two product names. The High Court criticized the order issued by the trial judge, stating that due regard to well-settled tests for the grant of interlocutory injunctions had not been paid. Furthermore, it stated that the trial judge made no comparison of the overall impression created by the marks, logos, colour schemes and had failed to take into account the type of purchasers.
Decision
The impugned order of the trial court was quashed and set aside, and the application for the grant of an interim injunction was rejected. Since the suit awaited trial, Veegee was ordered to file accounts of its business with respect to Carbodust at quarterly intervals in the trial court from the date of institution of the suit. The trial judge was requested to dispose of the suit expeditiously within a period of six months of this order.
The impugned order of the trial court was quashed and set aside, and the application for the grant of an interim injunction was rejected. Since the suit awaited trial, Veegee was ordered to file accounts of its business with respect to Carbodust at quarterly intervals in the trial court from the date of institution of the suit. The trial judge was requested to dispose of the suit expeditiously within a period of six months of this order.
Comment
The High Court seems to have taken a prudent note of the various factors in pronouncing the two products to be remotely deceptive, taking into account possible intrinsic and extrinsic factors.
The High Court seems to have taken a prudent note of the various factors in pronouncing the two products to be remotely deceptive, taking into account possible intrinsic and extrinsic factors.
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