Court distinguishes 'similar' trademarks [India]

Determining similarity between trademarks is a question of objective consideration, and considerations of objectivity differs from person to person. Therefore, it cannot be said that an appeal court can consider an issue more objectively than a trial court. As a result, in IP litigation the issue arises of how far an appellate court should interfere with the decision of a body specifically constituted to handle disputes over intellectual property.

Facts

The appeal in the present case was filed under Section 105 of the Trade and Merchandise Act 1958 against an order of a single trial judge. Hoechst, the respondent, is the registered proprietor of the mark NOVALGIN. The appellant Dr Anji Reddy applied to register the mark NOVIGAN. Hoechst opposed the application on the grounds of deceptive similarity, as the marks would be registered in respect of the same class of goods.

The assistant registrar of trademarks rejected Hoechst's objection on the grounds that the marks were phonetically and visually different; thus, the registration would not be prohibited under Section 12(1) of the Trademarks Act. With regard to Section 11(a) of the Trademarks Act, the assistant registrar held that the use of the respondent's mark would not cause confusion in the minds of the general public.

Hoechst appealed the order of the assistant registrar. The trial judge found that the letters 'N' and 'G', which were prominent in both marks, sounded alike when pronounced. He ruled that the two marks were structurally similar and that the order passed by the assistant registrar was incorrect.

Arguments

On appeal Reddy contended that (i) there was no phonetic similarity between the two marks except that both marks start with 'nov', and (ii) Hoechst could not claim that no other manufacturer may use 'nova' or 'nov' - many other pharmaceutical products start with these letters.

Reddy also argued that as both products were Schedule H drugs, they should be sold only on prescriptions issued by qualified doctors. Therefore, a small similarity in the name of the drug would not cause confusion in the minds of doctors and chemists, who are trained and qualified.

Hoechst attempted to show the similarity of the two marks, rebutting Reddy's second argument by stating that the drugs may sometimes be sold over the counter; thus, the likelihood of confusion could not be negated.

Decision

The court, while acknowledging that the yardstick of a man of average intelligence and imperfect recollection should be used to consider whether the overall structural and phonetic similarity between the two names was likely to deceive or cause confusion, held in the present case that although the letters constituting the names of the two marks were the same except for the letter ‘L’ in one, there was hardly any structural and phonetic similarity.

In addition, the court held that when a technically competent body examines the matter, the court sitting as an appellate authority should not interfere with the technical authority's order, unless that order is found to be wholly unsustainable. Thus, the court upheld the order of the assistant registrar and stated that the order passed by the competent authority under the legislation should not have been interfered with in the absence of solid grounds.

As well as dealing with the issue of deceptive similarity between trademarks, the court's decision reaffirms the legal sanctity of decisions made by technical boards.

Source : http://www.internationallawoffice.com