Manner of use of a Trademark is different from its Trademark Registration
Factual Background:
The present case is a legal dispute between Madhu Food Products (the appellant) and Surya Processed Food Pvt. Ltd. (the respondent), centering around allegations of trademark infringement, copyright infringement, and passing off. The respondent, Surya Processed Food, initiated a lawsuit seeking a permanent injunction to restrain Madhu Food Products from using the trademark "HUNT" or any mark that is deceptively similar to "HUNK," a trademark registered and used by the respondent.
Surya Processed Food is engaged in manufacturing and marketing a variety of food products and claimed to have registered its trademark "HUNK" for its goods, accompanied by distinctive packaging and trade dress. It further claimed that it had been using the trademark extensively and had developed significant goodwill and market presence.
On the other hand, Madhu Food Products launched a product under the name "CHOCO HUNT" and adopted packaging that the respondent argued was deceptively similar to its own. This led to the filing of the suit, where Surya Processed Food contended that the use of the trademark "CHOCO HUNT" by Madhu Food Products was an infringement of its registered trademark "HUNK" and amounted to passing off, given the similarity in the trade dress and overall get-up of the products.
Issues of the Case:
The case raised several key legal issues:
Trademark Infringement:
Whether the appellant’s use of the trademark "CHOCO HUNT" infringes on the respondent's registered trademark "HUNK," given the visual and phonetic similarities between the two marks.
Passing Off:
Whether the packaging and trade dress used by Madhu Food Products for its product "CHOCO HUNT" were deceptively similar to the trade dress used by Surya Processed Food for its "HUNK" products, thereby creating a likelihood of confusion among consumers.
Suppression of Material Facts:
Whether Surya Processed Food had suppressed material facts, particularly regarding the appellant’s trademark, during its application for an interim injunction. This issue concerned whether the respondent had performed a comprehensive trademark search or had withheld crucial information from the court.
Contentions of the Parties:
Respondent’s Contentions (Surya Processed Food Pvt. Ltd.):
Surya Processed Food asserted its prior registration and extensive use of the trademark "HUNK" in connection with its food products. It argued that the appellant’s trademark "CHOCO HUNT" was deceptively similar to "HUNK," especially due to the prominent use of the word "HUNT," which could mislead consumers.
The respondent alleged that Madhu Food Products had deliberately adopted similar packaging and trade dress, particularly the use of brown as a primary color, in an attempt to pass off its products as those of the respondent. This, the respondent contended, would result in consumer confusion, leading customers to associate the appellant's products with its own well-known brand.The respondent further asserted that the actions of the appellant were aimed at benefiting from the goodwill associated with its trademark and thus sought relief by way of a permanent injunction.
Appellant’s Contentions (Madhu Food Products):
Madhu Food Products argued that its trademark was "CHOCO HUNT" and not simply "HUNT," and that it had been using this trademark since 2018. The appellant contended that there was no likelihood of confusion between the two marks because the words "CHOCO" and "HUNT" were combined in a way that distinguished it from the respondent’s "HUNK" mark.
The appellant accused the respondent of not conducting a proper trademark search before filing the lawsuit, alleging that the respondent had suppressed material facts, including the appellant’s prior use of its own trademark.
Moreover, the appellant maintained that the color brown was a generic choice for packaging in the food industry and could not be monopolized by the respondent. Thus, the use of brown in its packaging did not amount to infringement or passing off.
Issues Dealt with by the Court:
Trademark Search and Suppression of Facts:
The court evaluated whether Surya Processed Food had adequately conducted a trademark search before initiating the lawsuit and whether any material facts, particularly regarding the appellant’s trademark, were suppressed. The appellant’s claim that the respondent had failed to disclose its trademark "CHOCO HUNT" to the court formed a key part of this issue.
Similarity in Trade Dress and Packaging:
The court had to assess whether the trade dress (i.e., the visual appearance of the product packaging) of the appellant’s "CHOCO HUNT" product was similar enough to the respondent’s "HUNK" products to cause confusion among consumers. This included an analysis of the color schemes, design elements, and overall get-up of the packaging.
Prior Use and Registration:
The court considered the respondent’s claim of prior use and registration of the trademark "HUNK" and weighed it against the appellant’s assertion of independent use of the "CHOCO HUNT" trademark since 2018.
Reasoning and Final Decision:
The court, after carefully considering the evidence presented by both parties, arrived at the following conclusions:
Trademark Search and Suppression of Facts:
The court found that the respondent, Surya Processed Food, had not suppressed any material facts. It noted that the respondent had conducted a trademark search using the "start with" option, which did not reveal the appellant’s trademark "CHOCO HUNT." Therefore, the appellant’s claim of suppression of facts was unfounded.
Similarity in Trade Dress and Packaging:
The court observed that the appellant’s use of the trademark "CHOCO HUNT" prominently displayed the word "HUNT" in a manner that closely resembled the respondent’s "HUNK" trademark. Furthermore, the packaging and trade dress adopted by Madhu Food Products bore striking similarities to those used by Surya Processed Food, particularly in terms of color scheme and layout. The court found that these similarities were likely to cause confusion among consumers, leading them to believe that the two products originated from the same source.
Prior Use and Registration:
The court acknowledged the significantly larger turnover of Surya Processed Food under its registered trademark "HUNK," which reinforced its established market presence. The respondent’s prior use and registration of the "HUNK" trademark were deemed legitimate, and the court held that the appellant’s trademark "CHOCO HUNT" was likely to infringe upon the respondent’s rights.
Manner of use of a Trademark is different from its Trademark Registration:
The court further emphasized that the manner in which a trademark is used in the marketplace is critical in determining the likelihood of confusion. It ruled that, despite the appellant’s registration of "CHOCO HUNT," the way the trademark was presented—particularly the dominant use of "HUNT"—was likely to mislead consumers.
Final Decision:
In light of these findings, the court dismissed the appeal filed by Madhu Food Products and upheld the interim order in favor of Surya Processed Food. The court found no merit in the appellant’s arguments regarding trademark use, trade dress, or suppression of facts. It concluded that the respondent’s rights were infringed by the appellant’s actions, and the similarities between the two trademarks, packaging, and overall product presentation justified the respondent’s claims for protection under trademark and passing-off laws.
Case Citation: Madhu Food Products Vs Surya Processed Food: 08.08.2024: Madhu Food Products Vs Surya Processed Food: 2024:DHC6118: Delhi High Court: Vibhu Bakhru and Sachin Datta, H.J.
Written by: Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney] United & United
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