RNA Technology and IP Attorneys | View firm profile
Will difference in pronunciation in certain parts of the country leading to phonetic similarity be sufficient to grant an order of injunction? This is the crux of the issue in the instant appeal before the Division Bench (two judge bench) of the High Court of Rajasthan. The Plaintiff, Deepak Vegpro Private Limited (Deepak) filed the suit before the Commercial Court no.1, Jaipur, alleging trademark infringement and passing off to restrain the Defendant, Ritika Vegetable Oil Private Limited (Ritika) from using the mark NIRAB in relation to same products. The district court granted an injunction and aggrieved by the injunction order, Ritika has filed the appeal before the DB of the High Court which is under consideration.
Contentions before the trial court in a nutshell
Deepak contended a) they are registered proprietor of the mark ‘NEERAJ’ adopted in the year 1998 and used in relation to edible oil products b)Ritika in the year 2019 adopted a deceptively similar mark ‘NIRAB’ with malafide intentions to piggyback on the reputation of the NEERAJ mark c) use of the mark NIRAB will cause confusion especially in the north eastern states of India.
Ritika’s defence a) ‘Neeraj’ and ‘Niraj’ are common to the trade and non-distinctiveb)the rival label marks when compared as a whole are not similar c) Deepak does not have registration for the word NEERAJ per se.
The trial court after hearing the parties granted an injunction restraining Ritika from using the mark NIRAB. Though the trial court observed that the marks NEERAJ and NIRAB are not phonetically similar and the labels also differ injunction was granted on the basis that the rival marks maycause confusion as phonetically in north-eastern states NEERAJ/NIRAJ is similar to NIRAB.
Aggrieved by the restraint order Ritika
filed an appeal before the High Court on the following grounds mainly:
a) The trial court having observed that the rival marks and labels are not similar has erroneously presumed that in north-eastern region of India where Hindi language is not much prevalent, the rival marks may cause confusion. Court noted there was no averment to show how the mark will be pronounced in north-eastern region.
b) When registration is for a label mark it will not confer any exclusive right in the matter forming only a part of the whole of the trademark so registered.
c) ‘Neeraj’ is a common Indian name which is non-distinctive and used by many companies much prior to its registration by Deepak. Moreover, they have not got the word ‘NEERAJ’ registered separately, hence, not entitled to injunction.
Deepak contends that the order passed by the trial court is a well-considered one and requires no interference.
- Admittedly, Deepak’s mark ‘NEERAJ’ is a device (label/logo). Further, the word ‘Neeraj’ is not per-se registered separately as a trademark. It is well settled that when a trademark which is not the subject of a separate application for registration as a trademark or which is not separately registered the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trademark so registered.
- Ritika has applied for registration of their trademark NIRAB which is a device mark. At the time of examination of the mark ‘NIRAB’ the Trademark Registry did not raise any objection with regard to similarity with ‘NEERAJ’. Moreover, there is no similarity whatsoever in the label/logo between the two marks i.e. ‘NEERAJ’ and ‘NIRAB’, thus, there is no infringement of trademark ‘NEERAJ’.
- The trial court has observed that ‘NEERAJ’ is not a coined mark and the word may not be phonetically similar in rest of India except north-eastern and north-western states. Further, there is no pleading that there is phonetical similarity between the two words in the language of north-eastern and north-western states of India. Thus, the finding that there is phonetical similarity between ‘NEERAJ’ and ‘NIRAB’ in north-eastern and north-western states is without any material on record.
In light of the above Division Bench allowed the appeal and set aside the order passed by the trial court.