Minor alterations in a trademark do not remove the deceptive similarity
Case Title: Metravi Instruments Private Limited Vs. Dhanbad Lab Instruments India Private Limited
Date of Order: 25 February 2025
Case Number: IP-COM/7/2024
Judge: Hon’ble Justice Ravi Krishan Kapur
Brief Facts of the Case
The petitioner, Metravi Instruments Private Limited, has been using the trademark METRAVI since 1 July 1998 and officially registered it on 1 April 1998 under Class 9. The mark was assigned to the petitioner in 2015. The respondent, Dhanbad Lab Instruments India Private Limited, was incorporated in 2016 and is engaged in a similar business.
In January 2024, the petitioner discovered that the respondent had obtained registration for the mark "METERIVA" under Class 9 for similar products. The petitioner alleged that METERIVA was phonetically, visually, and structurally similar to METRAVI, leading to potential consumer confusion. The respondent had prior business dealings with the petitioner and had previously purchased its products.
Brief Issue
The issue before the court was whether the respondent’s trademark "METERIVA" is deceptively similar to the petitioner’s registered mark "METRAVI", amounting to passing off.
Reasoning of the Court
The court examined the phonetic and visual similarity between the marks. It held that "METERIVA" and "METRAVI" have only an interchange of letters, creating a high likelihood of confusion. A consumer may mispronounce or misread the marks due to their resemblance.
On the issue of misrepresentation and passing off, the court observed that the respondent had prior knowledge of the petitioner’s mark and still chose to use a similar name. The similar trade dress and same business field increased the likelihood of confusion. The respondent’s choice of the mark was intentional and deceptive, aiming to ride on the goodwill of the petitioner.
The court further analyzed the risk of consumer confusion. Relying on Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73, the court emphasized that even slight phonetic and visual similarity can lead to confusion in the minds of consumers.
On the balance of convenience, the court held that the petitioner, as the prior user, had a stronger case. The respondent’s justification for choosing "METERIVA" was unconvincing.
Decision of the Court
The court confirmed the interim order of 8 April 2024 and allowed the petitioner’s request for an injunction. The respondent was restrained from using the mark "METERIVA". The respondent’s application to vacate the injunction was dismissed.
Law Points Settled
The case reaffirmed the phonetic and visual similarity test, emphasizing that even minor alterations in a trademark do not remove the deceptive similarity if consumer confusion is likely. It reinforced the doctrine of passing off, stating that if a new mark is adopted in bad faith and causes confusion, injunction relief can be granted without the need for further evidence of actual deception.
The court upheld the protection of prior users, establishing that a prior user’s goodwill and reputation must be safeguarded from misrepresentation by later entrants in the market.
