When the goods are identical, even a slight similarity in trademarks can cause confusion
Introduction:
The case of Amba Shakti Steels Ltd. v. Sequence Ferro Private Limited revolves around a trademark dispute concerning the similarity between the trademarks “AMBA” and “AMMAJI.” The appellant, Amba Shakti Steels Ltd., alleged that Sequence Ferro Private Limited had adopted a deceptively similar trademark, leading to confusion among consumers. The case primarily focuses on trademark infringement, copyright infringement, and passing off claims.
Factual Background:
Amba Shakti Steels Ltd., originally incorporated as K.P. Steel Products Private Limited in 1989, is a prominent manufacturer of steel bars, billets, angles, channels, and sponge iron. The company has been using the trademarks "AMBA" and "AMBA SHAKTI" since 1993 and has obtained multiple trademark registrations under the Trade Marks Act, 1999.
The appellant also holds copyright protection for its trade label and has consistently invested in branding and advertising. It claims substantial goodwill in the market, supported by a turnover of ₹358.58 crores for the financial year 2022-23.
The respondent, Sequence Ferro Private Limited, adopted the trademark “AMMAJI” in December 2022 and applied for its registration in Class 06 for TMT bars and other related products. It claimed sales of ₹42.43 crores within six months. The appellant contended that this adoption was dishonest and aimed at leveraging its established goodwill.
Procedural Background:
Amba Shakti Steels Ltd. filed a suit (CS Comm 738/2023) seeking a permanent injunction against the respondent for using the mark “AMMAJI.” Along with the suit, the appellant filed an application under Order XXXIX Rules 1 and 2 of the CPC for an interim injunction.
The Commercial Court dismissed the interim injunction application on January 18, 2024, primarily on the grounds that the trademarks were visually distinct and that Amba Shakti had not taken action against other third parties using the word “AMBA.” Aggrieved by this order, the appellant preferred an appeal before the Delhi High Court.
Issues Involved:
The primary issue was whether the trademark “AMMAJI” is deceptively similar to “AMBA” and causes confusion in the market? Another issue was whether the respondent’s adoption of the trademark was dishonest and an attempt to pass off its goods as those of the appellant? The court also had to determine whether the appellant’s failure to take action against other third parties using “AMBA” affected its claim against the respondent?
Submissions of the Parties:
The appellant argued that the word “AMBA” is phonetically and visually similar to “AMMAJI.” Given that both marks are used for the same category of products (TMT bars), there was a high likelihood of confusion. The respondent’s mark closely resembled the appellant’s in terms of color scheme, structure, and placement of words, which indicated an intent to deceive consumers. The appellant claimed that it had been using the trademarks for over two decades, whereas the respondent adopted “AMMAJI” only recently. The appellant further contended that its failure to take action against other third parties should not disqualify it from enforcing its rights against the respondent.
The respondent argued that “AMBA” and “AMMAJI” were conceptually different, with “AMBA” referring to a Hindu Goddess and “AMMAJI” being a respectful term for mothers and grandmothers. It submitted that the trademarks had distinct visual elements, including different artistic devices and typography. The respondent further asserted that since TMT bars are high-value products, customers exercise caution while purchasing, reducing the likelihood of confusion. It also contended that the appellant’s suppression of an earlier legal notice issued by its sister concern (M/s Amba Shakti Udyog Limited) indicated a lack of clean hands.
Discussion on Judgments Cited:
The court relied on Re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973), which sets out factors for determining confusion, such as similarity in appearance, sound, meaning, and trade channels. The court also referred to Estate of P.D. Beckwith v. Commissioner of Patents, 64 L.Ed. 705, which emphasized that a trademark should be assessed based on its overall commercial impression rather than individual elements. The court cited McCarthy on Trademarks and Unfair Competition (5th ed., 2023), which states that when the goods are identical, even a slight similarity in trademarks can cause confusion. The court also relied on Hindustan Pencil Private Ltd. v. India Stationary Products Co., 1989 SCC OnLine Del 34, which held that the protection of consumer interest outweighs any delay by the trademark proprietor in taking legal action.The court noted that in Nutrica Pusti Healthcare Pvt. Ltd. v. Morepen Laboratories Ltd., 2021 SCC OnLine Del 2631, a trademark owner’s inaction against some infringers did not bar them from taking action against others.
Reasoning and Analysis by the Judge:
The court found that “AMBA” and “AMMAJI” had phonetic similarities and conveyed similar meanings. The placement of words, color schemes, and additional design elements (such as red-colored brand names and numerical values) created an overall commercial impression that was deceptively similar.The appellant had been using “AMBA” for two decades, whereas the respondent adopted “AMMAJI” in 2022. The respondent’s turnover was significantly smaller, making the appellant’s loss more substantial if an injunction was denied.The court emphasized that trademark laws aim to protect consumers from deceptive practices. Given that both parties dealt in identical products (TMT bars), the likelihood of confusion among consumers was high.The court held that a trademark owner is not required to sue every infringer and can choose to take action based on commercial significance.
Final Decision:
The Delhi High Court set aside the order of the Commercial Court and granted an interim injunction restraining the respondent from using the mark “AMMAJI” or any other deceptively similar marks until the disposal of the suit.
Law Settled in this Case:
Overall commercial impression is key in determining trademark similarity, rather than a detailed comparison of individual elements.when the goods are identical, even a slight similarity in trademarks can cause confusion. Failure to take action against other infringers does not prevent a trademark owner from seeking relief against a particular infringer. Balance of convenience favors the long-term user of a trademark when the rival is a recent entrant. Public interest in preventing consumer confusion is paramount in trademark disputes.
Case Title: Amba Shakti Steels Ltd. Vs. Sequence Ferro Private Limited
Date of Order: September 3, 2024
Case No.: FAO (COMM) 41/2024
Neutral Citation:2024:DHC:6703-DB
Court: High Court of Delhi
Judges: Hon’ble Mr. Justice Vibhu Bakhru & Hon’ble Ms. Justice Tara Vitasta Ganju
Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
