This article deals with the Trade Marks comprised of
Letter. There may be cases where the Trade Marks is essentially of Letters.
Letters are the most essential feature of the Trade Marks. There may be cases
where Trade Mark is comprised of Single Letter. The letter Trade Mark,
comprised of single letter and descriptive to trade, are considered as poor
trade mark and strong evidence of user required to establish the trade mark
right. While the Trade Marks, comprised of more than one letter and not
descriptive in nature to goods and trade, are considered to be relatively
stronger trademarks. In case the Letter Trade Mark is comprised of unique
device also, it gives strong protection to Trade Mark. Here are various
Judgments and case laws where the Hon’ble Courts have recognized right in
Letter Trade Marks.
1. Tube Investments of India Ltd. v. Trade
Industries:(1997) 6 SCC 35:-The Competing Trade Marks were TI (within 2 concentric circles) Vs TI (within a single circle)-In this
case the Court has granted injunction on the letter trade mark on the ground of
Visual similarity between the two marks, coupled with the fact that the
Defendant is using the same trade mark in relation to goods falling within the
same class, even though different from goods for which mark is registered prima
facie, poses a real danger that the product of the Defendant can be passed off
as a product of the Plaintiff.
2. Aktiebolaget
SKF v. Rajesh Engineering Corporation:1996 PTC(16)160:- The Competing Trade
Marks were SKF Vs. SKI. In this case different explanations of
the Defendant for using a mark does not strengthen its case but detracts from
the truthfulness of the explanation. The use of SKI by the Defendant therefore
is not bona fide and is a colorable imitation of SKF. Since adoption of the
mark is dishonest, any use will be of no consequence.
3. Weiss Associates, Inc v. HRL Associates,
Inc(902 F.2d 1546):- The Competing Trade Marks were TMM Vs. TMS. In this case the Court has
held that It is more difficult to remember a series of arbitrarily arranged
letters than it is to remember figures. Even though the parties’ products were
purchased by discriminating purchasers, there was nevertheless a likelihood of
confusion at the initial stage of the purchasing process. It is submitted that
in this case, the Court has given better protection to letter trade marks
vis-à-vis the numeral trade marks and granted the protection.
4. S. Mehal Singh v. M/s. M.L. Gupta
& Anr :AIR 1998 Del 64: The Competing Trade Marks were ML Vs. MLI. In this case the Court has
observed that the question whether the two marks are likely to cause confusion
or not is a question of first impression and it is for the Court to decide that
question. (quoting AIR 1960 SC 142). While making comparison between the two
competing letter trade marks the Hon’ble High Court of Delhi further observed
that It is not right to take a portion of the word and say that because a
portion of the word differs from the corresponding portion of the word in the other
case, there is no sufficient similarity to cause confusion. The Court further
put much emphasis on this fact that similarity on idea behind the competing
trade marks has to be seen. The court further observed that the test of
commonness of the idea between the two marks could be applied in deciding the
question of similarity between them.
5. Chemetron Corporation v. Morris
Coupling and Clamp Co: 203 U.S.P.Q. 537:- The Competing Trade Marks were TT Vs. TT. In this case the Court has
observed that notwithstanding the design element of the opposite party’s mark,
it is the letters “TT” that form the salient features of the mark and it is
this feature that creates the commercial impression of the mark which the
ordinary purchaser is likely to remember and rely upon as an indication of
origin. The Court further observed that tt must be remembered that purchasers
do not always have the opportunity to compare marks on a side-by-side basis and
thus the tests that must be applied in determining the likelihood of confusion
is not whether the marks are distinguishable when compared side-by-side but
rather whether they so resemble one another as to be likely to cause confusion
and this necessarily requires us to consider the fallability of memory of the
average purchaser who normally retains only a general impression of trademark
over a period of time.
6. G.M. Modular Pvt. Ltd. Vs TM
Marketing (India): 2007 (35) PTC 406 (Del):-
The Competing Trade Marks were GM
Vs. TM:- In this case the Court has observed that At the stage of
consideration of the application for interim injunction, all that has to be
seen is prior use. The court further observed whether the competing marks are not identical, test
of determining deceptive similarity is the same for infringement and passing
off [quoting Ramdev Food Products Limited v. Arvindbhai Rambhai Patel &
Ors., 2006 (33) PTC 281 (SC). At last the Court observed Even though there are
other added features in conjunction with which the competing marks GM and TM
are used, a case for deceptive similarity is made out.
7. Continental Connector Corporation Vs
Continental Specialties Corporation: 492 F.Supp. 1088:- The Competing Trade
Marks were CCC Vs. CSC. The Court observed that Initials are
designed to be comprehended at a glance. If the number of letters is the same
and there is a significant overlap in the letters used, that is generally
sufficient to sustain a claim of similarity. (para 9 p.65-6).
8. Crystal Corporation V. Manhattan
Chemical Mfg. Co., Inc: 76 F.2d 506:- The Competing Trade Marks were ZBT
Vs TZLB. The Court observed that It is well known that it is more difficult
to remember a series of arbitrarily arranged letters combination of letters
than it is to remember figures, syllables, words or phrases. The difficulty of
remembering such lettered mark makes confusion between such marks when similar,
more likely. The court further observed that
it
unquestionably appears that the letters constitute the dominant portion of the
Appellant’s mark. It is submitted that the instant case also establishes this
fact the Letter Trade Marks are strong Trade Mark as the persons at large
remembers the letters more than the numerals.
9. The General Electric Co. of India
(P.) Ltd Vs Pyara Singh and Ors: AIR
1974 P&H 14:- The Competing Trade Marks were GEC
Vs AEC. The Hon’ble High Court held both the letter trademarks to be
similar and defendant was injuncted from passing off.
10. MRF
Limited Vs NR Faridabad Rubbers: 1998 PTC (18) 485(Del):-
The Competing Trade Marks were MRF Vs NRF. The Hon’ble High Court of Delhi
observed that bearing ill mind the class of purchasers of defendant's lubes,
who are not expected to keep goods manufactured by the plaintiff and defendant
side by side to decide which product they intend to buy, I feel that the afore
noted distinguishing features, including the pre-fix of 'Swastik" logo,
pointed out by learned counsel for the defendant, do not bring about any
material or significant change in distinguishing the two trade marks
"MRF" and "NRF", by the class of consumers, who are likely
to purchase the goods concerned, particularly when phonetically they are so
close. It is no doubt true that the first letters of the trade marks of the
plaintiff and the defendant are different but by the remaining two common letters,
a purchaser can easily be misled for phonetic similarity. There is likelihood
of even the first letter 'N' being pronounced as 'M'.
11. Mahashian Di Hatti V/s
Raj Niwas, Proprietor of MHS Masalay: 2011 (46) PTC 343 (Del):- The
Competing Trade Marks were MDH Vs MHS. The Hon’ble High Court of Delhi
observed that the trademark being used by the Defendant is visually similar to
the trademark being used by the Plaintiff. Though phonetically, there may not
be much similarity in the two trademarks on account of use of the letter
"S' in place of "D' and re-arrangement of the letters. The last
letter in the trademark of the Plaintiff is "H', whereas it has been made
second letter in the trademark of the Defendant. The last letter in the trademark
of the Plaintiff is "H', whereas it is "S' in the trademark of the
Defendant. However, considering the strong visual similarity, rather weak
phonetic similarity, would not be of much consequence and would not permit the
Defendant to use the logo being presently used by him.
AJAY
AMITABH SUMAN, ADVOCATE
DELHI
HIGH COURT
