The trade name we use and the mark we see is what lends uniqueness to a trademark. To facilitate this, not only do establishments create patterns and designs, but also play with words, creating expressions that one may not have else put to normal usage. There are occasions when these very coined words become words of generic usage, while others when they stand out to represent a certain quality and standing in the market. On such a happening, the bane walks in to ride over the boon- deception vide phonetic and visual similarity.
D'zine Garage Pvt. Ltd, in the business of online communication claims to be one of the oldest interactive agencies. They are exponents in the field of online communication management for a diverse array of industries. The issue in contention includes their core content management system "Brew Master", which enables creation, management and deployment of virtually any type of content across multiple websites or interfaces. They claim that their service mark is a coined word invented by them and they are the first one to adopt D'zine as a predominant feature of a service mark, corporate name and domain name in the world in respect of web designing and internet computer business. According to them the mark is unique, distinctive and has been responsible for attracting customers throughout the country. They propound to have acquired tremendous goodwill and reputation by the extensive use of the mark "D'zine Garage" with the predominant feature D'zine. They state to have made huge investments in terms of advertising and registered and used the same as part of their corporate name as well as domain name. Their mode of business uses the internet as a platform to acquire clients and provide services.
They asserted that they became aware of the use of the service mark by D'zine Café, involved in the field of online communication, web designing, multimedia presentations etc. They also averred that such an adoption was deliberate in a calculated attempt to cash on the reputation of D'zine Garage. However, D'zine Café was called upon to resist the use of D'zine as a service mark. They also stated that the similarity in the line of business between the two parties lead such use to constitute infringement.
D'zine Café contended on the lines of absence of jurisdiction of the High Court of Madras, and that they had no billings, bank accounts or business facilities in India. They argued that the word D'zine is common and a universally corrupted and abbreviated form of the word. They also stated that a Google search would provide over 1,90,000 search options using the term D'zine. They prayed that the suit had been instituted on frivolous grounds to destroy the business reputation and hence the suit be dismissed.
The Court examined the various averments, also observing the erroneous registration number submitted by D'zine Garage. The Court however acknowledged that there was no record to depict as to when the D'zine Café started its business.
The Court ultimately ruled that this was a case of "Phonetic Similarity". They opined that D'zine was not a generic word, nor did it carry distinctive reference to a particular trade, thus losing its distinctiveness and falling into common use and hence publici juris. The Court noted that the two parties being in the same stream did strengthen the chances of confusion amongst clients. The Court also highlighted that D'zine Café never deniedthe mark being put to use by them, but only asserted that others also used the term "D'zine". The Court ruled in favour of D'zine Garage in the absence of a denial from D'zine Café of having taken advantage of the repute acquired by the mark.
This decision of D'zine Garage Pvt. Ltd. v. D'zine Café FZE 2008 (36)614 (Mad) is one amongst several, in a prominent line of dealings of the court. Reiterating the previously held dicta, the Court has only been successful at reinforcing the principles laid down by it, thus strengthening the prevalent regime of trademark law in India.
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