Comparative Analysis of Composite Trademarks
Introduction:
This article delves into the legal intricacies surrounding the comparison of composite trademarks, focusing on a recent case where the plaintiff, having proprietary rights in the composite trademark MI SUMEET, filed a suit against the defendants for their use of the composite trademark NAKODA SUMEET in the context of mixer, juicer, grinder, and related products. The court's determination of the similarity between the two composite trademarks and the application of the essential features principle are crucial aspects discussed in this analysis.
Background of the Case:
The plaintiff in this case claimed proprietary rights in the composite trademark MI SUMEET, associated with a range of products, including mixer, grinder, juicer, hand blender, electrical accessories, and kitchen home appliances since 1993. The plaintiff had also obtained trademark registrations to bolster their claims. The suit was initiated against the defendants, who were allegedly using the composite trademark NAKODA SUMEET for similar products.
Principle of Comparing Composite Trademarks:
The court, in its findings, emphasized the necessity to consider the essential features of the marks under consideration. The essential features principle is a fundamental aspect of trademark law, requiring a detailed examination of the core elements that define a mark.
Phonetic Similarity:
The court noted that the phonetic similarity between "MI SumEEt" and "NAKODA Summit" was strikingly similar. Phonetic similarity is a critical factor in determining deceptive or misleading similarities between marks. The phonetic structure, which assesses how rival marks sound, played a pivotal role in establishing the overall impact of phonetic use, indicating a high degree of similarity.
Visual and Structural Similarity:
In addition to phonetic analysis, the court considered visual and structural similarities between the two composite trademarks. It was observed that the two marks were not only phonetically similar but also shared visual and structural commonalities. The overall get-up of the two words was deemed so structurally similar that it raised concerns about the likelihood of deception.
Lack of Bona Fide Explanation:
The court highlighted the absence of a bona fide and logical explanation from the defendants for adopting a mark so similar to the plaintiff's. This lack of a reasonable explanation further strengthened the plaintiff's case, contributing to the court's decision in favor of the plaintiff.
The concluding Note:
The comparative analysis of composite trademarks, as demonstrated in the MI SUMEET vs. NAKODA SUMEET case, underscores the importance of considering essential features, particularly phonetic, visual, and structural elements. Courts must weigh these factors comprehensively to ascertain the likelihood of deception or confusion. Additionally, the absence of a bona fide explanation for adopting a similar mark may tip the scales in favor of the party alleging infringement.
The Case Law Discussed:
Case Title: Dilip Kumar Jain Vs Vikas D. Jain
Date of Judgement/Order:18.01.2024
Case No. CS 40 of 2020
Neutral Citation: N.A.
Name of Hon'ble Court: Calcutta High Court
Name of Hon'ble Judge: Krishna Rao, 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,
Ph No: 9990389539
