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Examining Trademark Similarity and Consumer Confusion

LexOrbis India


The High Court of Delhi, in a recent judgment dated August 23, 2023, adjudicated upon a trademark cancellation case initiated by M/S.RSPL Health Private Limited against Reckitt and Colman (Overseas) Hygiene Home Limited. The judgment dealt with the issue of the similarity of trade marks and the likelihood of confusion arising from such similarity.

In this case, the petitioner challenged the registration of the word mark "HARPIC DRAINXPERT" held by the respondent in classes 3 and 5. The petitioner argued that the impugned mark was similar to its earlier trade marks which were XPERT word and XPERT device marks, and that the similarity between the marks was likely to confuse consumers.

The cancellation primarily relied on Section 11(1)(b) of the Trade Marks Act, which deals with the similarity of trade marks and the likelihood of confusion arising from such similarity. The petitioner argued that the impugned mark "HARPIC DRAINXPERT" is similar to the petitioner's earlier trade marks. It was asserted that the similarity in the marks and the goods they cover has led to confusion or association between the two marks, which renders the impugned marks ineligible for registration

The court identified three pivotal criteria, as per Section 11(1)(b), that would render a trade mark ineligible for registration: similarity between the marks, identity or similarity of the goods or services, and a likelihood of confusion or association among the public.

The court compared the petitioner's earlier trade marks XPERT word and XPERT device marks with the respondent's "HARPIC DRAINXPERT." The petitioner argued that "XPERT" is the dominant part of both marks. However, the Court rejected this argument, stating that the dominant part of the impugned mark is "HARPIC," and the similarity between the marks is not substantial. The court pointed out that the principle of similarity should not be stretched to an unreasonable extent.

The court held out that the word "XPERT" is only half of the second word of the respondent's mark, and that if one were to ignore the first part of the word "DRAINXPERT", then the two marks would become alike. However, the court held that this would be unreasonable, as it would require one to ignore a significant part of the respondent's mark.

The Court emphasized that the key question is whether the two marks are likely to confuse the public. It dismissed the argument that the public would confuse the two marks due to the presence of "XPERT" in both. Accordingly, the court dismissed the cancellation petitions. This decision highlights the imperative principle that the concept of trademark similarity should not be stretched beyond reasonable bounds, reaffirming a delicate balance between safeguarding trademarks and preserving healthy competition.

 

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