Trademark Infringement and the Notion of "State of Wonderment" under the Trade Marks Act
Introduction:
In a recent legal case, the plaintiff alleged trademark infringement against the defendant, specifically concerning the use of the term "CABLE NEWS Network" along with the acronym "CNN." The crux of the argument revolved around the claim that the defendant's trademark was deceptively similar to the plaintiff's registered trademark, known as the "CNN Device." This case raises important considerations related to the Trade Marks Act, particularly in relation to Sections 29(2)(b) and 29(2)(c), and the concept of "state of wonderment."
Deceptive Similarity and Infringement:
The plaintiff contended that the defendant's trademark, comprising both the name "CABLE NEWS Network" and the acronym "CNN," was deceptively similar to their registered trademark, the "CNN Device." Despite the absence of a separate registration for the term "CNN" by the plaintiff, it was argued that the existence of the registered device mark could induce a "state of wonderment" for a reasonable person.
Legal Framework - Trade Marks Act:
The legal foundation for this argument lies in Sections 29(2)(b) and 29(2)(c) of the Trade Marks Act. Section 29(2)(b) deals with infringement based on deceptive similarity, stating that a mark shall be deemed to be deceptively similar if it so nearly resembles another mark as to be likely to deceive or cause confusion. Section 29(2)(c) extends this to cases where the use of the mark takes unfair advantage or is detrimental to the distinctive character or repute of the registered trademark.
The "State of Wonderment" Concept:
The notion of "state of wonderment" is crucial to this case. This concept suggests that even in the absence of a direct match between trademarks, the overall impression created by the defendant's mark may lead a consumer to wonder about its association with the plaintiff's registered mark. In essence, it implies a potential for confusion or deception.
Analysis and Implications:
While the plaintiff did not possess a standalone registration for the term "CNN," the argument hinges on the cumulative impact of the registered device mark. The court must consider whether the combination of the defendant's trademark elements creates a likelihood of confusion or a "state of wonderment" for consumers.
Conclusion:
This case highlights the nuanced interplay between registered trademarks, deceptive similarity, and the subjective perception of consumers. The court's decision will likely set a precedent regarding the interpretation of the Trade Marks Act, particularly in cases where the registered mark is part of a larger composite mark. The outcome will provide clarity on the scope of protection afforded to registered trademarks and the extent to which a "state of wonderment" can constitute infringement.
The Case Law Discussed:
Date of Judgement/Order:04.12.2023
Case No. CS(COMM)272/2021
Neutral Citation No:2023:DHC:8695
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge: C Hari Shankar, HJ
Case Title: Cable News Network Inc Vs City News Network
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
Mob No: 9990389539
