.V. Lakshminarayanasamy Vs Siva Bhaskaren

Trademark Rectification and Passing Off

Factual Background of the Case:

The case titled V Lakshminarayanasamy Vs Siva Bhaskaren, registered as (T) OP (TM) No.165 of 2023 in the High Court of Judicature at Madras, revolves around a trademark dispute involving the mark 'SUGUNA.' The petitioner, V Lakshminarayanasamy, has been using the trademark since 1959 and holds a registered trademark in Class 7. This longstanding use and registration grant the petitioner substantial rights to the mark, positioning them as a prior user.

Conversely, the first respondent, Siva Bhaskaren, claims to be a prior user of a uniquely designed logo mark that also incorporates 'SUGUNA.' They assert that their usage is both honest and concurrent with the petitioner’s usage. This conflict raises significant legal questions regarding the validity of trademark registration and the potential for passing off.

The court was tasked with determining several pivotal issues that would shape the outcome of the trademark dispute:

Prior Use: Who between the petitioner and the first respondent can claim the status of the prior user of the mark 'SUGUNA'?

Deceptive Similarity: Is the impugned mark of the first respondent deceptively similar to the petitioner's mark, thereby risking consumer confusion?

Trademark Cancellation: Can a trademark be cancelled on the grounds of passing off, particularly if the petitioner demonstrates prior use and the potential for consumer deception?

Contentions of the Parties:Petitioner (V Lakshminarayanasamy):

The petitioner contends that they are the rightful and prior user of the mark 'SUGUNA,' having used it since 1959. Their arguments include:

Prior Use: The petitioner emphasizes that they have been using the trademark for over six decades, establishing a reputation and goodwill associated with the mark.

Deceptive Similarity: They argue that the first respondent's mark is deceptively similar to their own, which could mislead consumers and create confusion in the marketplace.

Right to Rectification: The petitioner seeks rectification of the trademark registration held by the first respondent, asserting that it violates their established rights as a prior user.

Respondent (Siva Bhaskaren):The first respondent, Siva Bhaskaren, presents several defenses:

Concurrent Use: The respondent claims that they are an honest and concurrent user of the mark and that their logo is uniquely designed, thus distinguishing it from the petitioner’s mark.

Lawful Registration: They argue that their trademark registration is lawful and should not be revoked, asserting that their usage does not infringe on the petitioner’s rights.

Reasoning

The court’s reasoning hinged on established legal principles derived from precedents such as the Parle Products case. The key points of the court's analysis included:

Essential Features of the Marks: The court underscored the importance of considering the broad and essential features of the trademarks in question. It emphasized that a comparison of the marks should not be limited to a superficial side-by-side evaluation.

Risk of Consumer Confusion: The court determined that if the essential features of the petitioner's trademark were adopted by the respondent, this could lead to confusion among consumers. The overall presentation of the marks may differ, but if the core features are similar, the potential for confusion exists.

Longstanding Registration: The petitioner’s maintenance of their trademark registration for several decades was viewed as reinforcing their claim to the mark. The court recognized that longstanding use is a strong indicator of established rights and goodwill in the market.

Final Decision

In its judgment, the court made several critical observations:

Passing Off Principle: The court ruled that if a trademark’s use in India is likely to be prevented by virtue of the law of passing off, then the trademark shall not be registered. This principle underscores the fundamental tenet that prior users have rights that must be protected against subsequent users who may create confusion.

Ruling in Favor of the Petitioner: The court ruled in favor of the petitioner, allowing the petition and directing the removal of Trademark Registration No.1171847 in Class 7 from the Register. The court concluded that the petitioner had successfully established their rights as a prior user and demonstrated the potential for consumer confusion.

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Conclusion:

The decision in V Lakshminarayanasamy Vs Siva Bhaskaren highlights the importance of prior use and the potential for consumer confusion in trademark disputes. It reinforces the notion that the rights of prior users must be respected and that trademarks cannot be registered if their use would infringe upon the established rights of others.

This case serves as a significant reference point for future trademark disputes, particularly in interpreting the principles of passing off and the evaluation of deceptive similarity in marks. The ruling emphasizes that trademarks are not merely legal instruments but also vital components of brand identity and consumer trust, necessitating careful judicial scrutiny in conflicts.

Case Citation:.V. Lakshminarayanasamy Vs Siva Bhaskaren: 27.09.2024: (T) OP (TM) No.165 of 2023: Madras High Court: P. B. Balaji: H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 9990389539

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