Radico Khaitan Vs Dhampur Bio Agencies

Trademark Infringement and Passing Off in "MASTIH" Vs. "FULL MASTI" Case

Introduction:

This legal analysis delves into a recent trademark dispute between the Plaintiff, who has held a trademark registration for "MASTIH" since 1992, and the Defendant, who applied for the registration of "FULL MASTI" in 2024. The primary issues concern the likelihood of confusion, deceptive similarity, and the legal principles guiding the grant of injunctions in such cases.

Background:

The Plaintiff’s trademark "MASTIH" has been in use for over three decades, establishing significant market recognition and consumer association. In contrast, the Defendant’s application for the trademark "FULL MASTI" is recent and pending consideration. The Plaintiff argues that the Defendant’s mark is deceptively similar to its own and could mislead consumers, potentially leading to market confusion and a dilution of the Plaintiff's brand identity.

Analysis of Deceptive Similarity:

To determine trademark infringement, courts primarily assess the likelihood of confusion among consumers. This involves comparing the visual, phonetic, and conceptual similarities between the two marks. In this case, the Defendant’s mark "FULL MASTI" includes the entirety of the Plaintiff’s mark "MASTIH" with the addition of the prefix "FULL." 

Visual Similarity:

The core element "MASTI" in "FULL MASTI" is phonetically identical to "MASTIH," notwithstanding the slight variation in spelling. The prefix "FULL" does not sufficiently distinguish the marks, as the dominant portion remains identical.

Phonetic Similarity:

Both marks are pronounced similarly, enhancing the likelihood of auditory confusion. Consumers are likely to recall the shared element "MASTI/MASTIH" and may overlook the prefix, leading to misidentification.

Conceptual Similarity:

 Both marks evoke similar ideas associated with pleasure or enjoyment, further contributing to the potential for confusion.

Under trademark law, particularly in jurisdictions like the United States and India, it is a settled principle that when two marks are nearly identical or deceptively similar, and they cover similar goods or services, an injunction should follow to prevent consumer confusion. The key case law supporting this principle includes:

Consumer Confusion and Market Impact:

The court must consider the practical implications of allowing the Defendant to use "FULL MASTI." Given the Plaintiff’s long-standing use of "MASTIH," consumers have developed a recognition and trust in the brand. The introduction of a similar mark by the Defendant could lead consumers to mistakenly associate the Defendant's products with the Plaintiff, assuming they are a brand extension or a new product line from the Plaintiff.

This mistaken belief could cause significant damage to the Plaintiff’s brand equity and goodwill. The principle of "initial interest confusion" also plays a role, where consumers may initially be attracted to the Defendant’s product due to the similarity, even if they realize the difference later.

Court’s Decision and Injunction:

Given the analysis, the court is likely to find merit in the Plaintiff’s contention. The visual and phonetic similarities, coupled with the established legal principles, strongly support the issuance of an injunction. The Defendant and anyone acting on their behalf should be restrained from using "FULL MASTI" or any deceptively similar mark in connection with alcoholic beverages or related goods. This injunction aims to prevent consumer confusion, protect the Plaintiff’s brand equity, and uphold fair competition standards.

Conclusion:

Trademark law seeks to balance the interests of businesses and consumers by preventing confusion and protecting brand identity. In the case of "MASTIH" vs. "FULL MASTI," the Plaintiff's prior use and the deceptive similarity of the marks justify legal intervention. An injunction against the Defendant is appropriate to prevent consumer confusion and protect the Plaintiff's longstanding trademark rights. 

Case Title: Radico Khaitan Vs Dhampur Bio Agencies Order Date: 15.05.2024 Case No. CS(COMM) 393/2024 Neutral Citation:NA Name of Court: Delhi High Court Name of Hon'ble Judge: Sanjeev Narula. H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539