The prevailing intellectual property scenario is infused with litigation hovering around the well-established tenets of deceptive similarity and passing off. While the principles remain cited and stated, parties do not hesitate to vouch their stand while asserting their right at various forums. Reiterating these dicta and upholding a Trial Court order is the Mumbai High Court decision in Deccan Bottling & Distilling Industries Private Limited v. Brihan Maharashtra Sugar Syndicate Limited [Appeal from Order No.76 Of 2008]
Deccan challenging the order passed by the District Judge, contended that it is a private limited company in the business of 'Blending & Bottling" of "Country Liquor" and were applicants for registration of a label of its "Country Liquor" branded as "Paru Santra" before the Commissioner of State Excise, Mumbai. They stated that they had applied for registration of their brand as "Gangu Santra" which was objected by, Brihan and the same was refused by the Commissioner of Excise. "Paru Santra" had been approved by the Commissioner of Excise Mumbai vide his order and he rejected the objections raised by Brihan. Further no proceedings were preferred challenging the order of the State Excise.
Deccan contended that owing to the quality of the product and marketing strategy for "Paru Santra" sales of the product was increasing day by day. They alleged that being in the same business and rival competitor, Brihan intended to stop and obstruct the Deccan from manufacturing and filed before the District Court along with application for temporary injunction for violation of its brands and label "Sakhu Santra" under provisions of the Copyrights Act 1957 and the Trade Marks Act 1999.
Deccan further contended the absence of deceptive similarity between the brand name and labels of the product. It was noted that the label used by Brihan had no glimpses of any artistic evidence and therefore there existed no question of copying the same. In view of the facts and merits of the case Deccan submitted that no prima facie case had been made out and that balance of convenience lay in their favour.
Brihan responded stating that Deccan had infringed the copyright and in the facts of the case. Demonstrating both the labels it was submitted that the brand name and label used by Deccan "Paru Santra" was a deceptively similar brand name. They contended to have established a prima facie case and that balance of convenience in pursuance of which the trial Court had granted interim injunction.
The Court recalling the various provisions of the Copyright Act and Trade Marks Act also reiterated the prominent principles governing similarity and passing off cited in precedents. The Court reinstated that due consideration to the impression made on a person of an average intelligence and imperfect recollection would be given, while microscopic examination of the two marks to ascertain deceptive similarity may not be adopted. They also stated that likelihood of confusion was sufficient and that keeping two trademarks side by side for comparison and for close examination would also not be a sound test. They also stated that it was not necessary that deception be intended to cause confusion.
As regards the extent of similarity, the Court stated that it was not necessary for phonetic and visual similarity to coexist. It was noted that the deciding factor would be the overall appearance of the mark coupled with the impact on the mind of ordinary persons of average intelligence.
The Court opined that considering the overall design, colour scheme, size of the label and the principles enunciated for appreciating the case at the stage of grant of temporary injunction the view adopted by the trial Court did not call for interference by the present forum. The Court noting the vehement submissions regarding the label having one orange device and two oranges device, it opined that a prima facie case that the label used of the likelihood of confusion in the minds of ordinary customers or people had been made. Stating the Court to be appropriate and reasonable in its conclusions, the High Court dismissed the Appeal as devoid of merits.
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