In the recently decided trademark case between Unisn Health Check Up and Diagnostics LLP (“Unisn”) and Unison Pharmaceuticals Pvt. Ltd. (“Unison”), the Gujarat High Court delivered a judgment in favor of Unisn. The court set aside the interim injunction previously granted by the Commercial Court, which had restrained Unisn from using the trademark “UniSN.”
Unison had filed a suit seeking a perpetual injunction against Unisn, alleging that Unisn’s use of the trademark “UniSN” infringed on its registered trademarks “UNISON” in Classes 5 and 10, which relate to pharmaceutical and medical goods. Unison argued that its trademarks had garnered significant goodwill and reputation among consumers. They claimed that Unisn’s use of a similar trademark for health check-up and diagnostic services would cause confusion among consumers as health-related services and pharma/medical products are closely related to each other.
The Commercial Court granted the interim injunction in favor of Unison, noting the phonetic and visual similarities between the two trademarks based on the words used in them. It concluded that the defendant’s use of “UniSN” for health and diagnostic services was likely to deceive the public into associating it with Unison for pharma and medical goods, thereby causing irreparable harm to Unison’s established goodwill in the market.
Unisn appealed this decision, arguing that its trademark application was in Class 44 for health-check and diagnostic services, which were distinct from Unison’s Classes 5 and 10 registrations that relate to pharma and medical products. They asserted that the word “UniSN” was coined independently by combining the initials of the founders and that their label trademark had unique artistic elements different from Unison’s device mark.
The High Court examined the legislative framework under the Trade Marks Act, 1999, particularly focusing on Sections 28, 29, and 31. The court emphasized the need to compare trademarks in their entirety, considering both visual and phonetic similarities, as well as the nature of the goods and services and the target consumer base. The court noted that while phonetic similarity was a factor, the distinctiveness of each trademark as a whole must be considered.
Based on a comparison of the marks as a whole, the court found that Unisn’s trademark “UniSN Health Checkups and Diagnostics” was visually and phonetically distinct from Unison’s “UNISON Pharmaceuticals”. Furthermore, as per the Court, the services offered under Class 44 by Unisn were significantly different from the goods covered under Classes 5 and 10 by Unison. The court also highlighted the professional nature of the target customers, reducing the likelihood of confusion.
Based on its analysis, the court concluded that Unison failed to establish a prima facie case of trademark infringement or passing off. It ruled that the Commercial Court had erred in granting the interim injunction by basing solely on phonetic similarity without adequately considering the overall distinctiveness of the trademarks and the specific classes of goods and services involved. Accordingly, the Court set aside the interim injunction, allowing Unisn to continue using its trademark “UniSN” for its health check-up and diagnostic services.
Anti-Dissection Rule, Essential Part Rule, Comparison of Marks and Goods/Services, and Likelihood of Confusion
Relevant paras from the case that discuss how trademarks and their applicable goods/services have to be compared, and how likelihood of confusion has to be assessed are extracted hereunder.
“26. While considering the legislative scheme under Section 28, 29, 30 and 31 of the Act, 1999bbb, the Apex Court has observed in paragraph No. 48 of Renaissance Hotel Holding Inc. (supra) as under :-
“48. The legislative scheme is clear that when the mark of the defendant is identical with the registered trade mark of the plaintiff and the goods or services covered are similar to the ones covered by such registered trade mark, it may be necessary to prove that it is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. Similarly, when the trade mark of the plaintiff is similar to the registered trade mark of the defendant and the goods or services covered by such registered trade mark are identical or similar to the goods or services covered by such registered trade mark, it may again be necessary to establish that it is likely to cause confusion on the part of the public. However, when the trade mark of the defendant is identical with the registered trade mark of the plaintiff and that the goods or services of the defendant are identical with the goods or services covered by registered trade mark, the Court shall presume that it is likely to cause confusion on the part of the public.”
27. In Ressainence (supra) quoted above, the Apex Court has held that the said case was squarely covered by the provisions of Section 29(2)(c) read with sub-section(3) of Section 29 of the Act. The High Court has erred in observing that there was no infringement of trade mark while setting aside the judgment and decree passed by the Trial Court, taking into consideration of Clause(c) of sub-section(2) of Section 29 of the Act in isolation, ignoring the circumstances, in which the benefit of Section 30 of the Act, 1999 could be granted. The ratio of the said decision based on the effect of Section 29(2)(c) of the Act, 1999 would be of no help to the learned counsel for the respondent in the present matter.
28. The question as to whether the present case falls under Clause(b) of Sub-section(2) of Section 29 of the Act, 1999 so as to injunct the defendant from using its trade mark with the word ‘UniSN’ is to be examined by us to examine the validity of the order of the Trial Court in granting injunction to the plaintiff. To deal with the said question, we must set out the test laid down to ascertain as to whether the trade mark used by the defendant is likely to deceive or cause confusion by its resemblance to the registered trade mark of the plaintiff and whether the impugned trade mark is used for identical or similar goods or services covered by the registered trade mark, as it is likely to create an impression to have association with the registered trade mark.
29. The Act does not lay down any criteria for determining what is likely to deceive or cause confusion. It is settled that each case must be dependent on its own particular facts and the judicial pronouncements are to be looked into as to the test applied for determining what is likely to deceive or cause confusion. In case the plaintiff is able to satisfy the Court by the test applied by it that the trade mark (impugned) is likely to deceive or cause confusion, it is entitled for injunction. However, if there is a doubt as to whether deception is likely or confusion may cause or not, the injunction application have to be refused. In considering the matter, all the circumstances of the case must be considered.
30. In F. Hoffmann-LA Roche & Co. Ltd. (supra), the Apex Court has applied the test for comparison of the two word marks, formulated by Lord Parker in Pianotist Co. Ltd.’s case (23 RPC 774), wherein it was said that :-
“You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion, that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods – them you may refuse the registration, or rather you must refuse the registration in that case.”
31. It is stated in F. Hoffmann-LA Roche & Co. Ltd. (supra) that it is necessary to apply both the visual and phonetic test. The test formulated therein are :-
(i) That two words must be similar both by their look and by their sound;
(ii) The Court must consider the goods to which they are to be applied;
(iii) The Court must consider the nature and kind of the customers who would be likely to buy those goods.
(iv) All the surrounding circumstances must be considered and further that what is likely to happen, if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.
32. It is stated therein that if considering all those circumstances, the Court reaches at the conclusion that there will be confusion in the minds of the public which will lead to confusion for the goods, the registration must be refused. It is held in F. Hoffmann-LA Roche & Co. Ltd. (supra) that it is important that the marks must be compared as wholes. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in other case, there is no sufficient similarity to cause confusion. The true test is whether totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of the persons accustomed to the existing trade mark. The words of Lord Johnston in Tokalon Ltd. Vs. Davidson & Co. (32 RPC at 133 at 136) have been noted in F. Hoffmann-LA Roche & Co. Ltd. (supra), in the following manner :-
“…We are not bound to scan the words as we would in a question of comparatio literarum. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into the shop.”
33. The Apex Court in Cadila Health Care Ltd. (supra) has noted the observations made in Amritadhara Pharmacy vs. Satya Deo Gupta (AIR 1963 SC 449) as under:-
“In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant’s mark is likely to deceive, but where the similarity between the plaintiffs mark and the defendant’s mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiffs rights are violated.”
34. In Nandhini Deluxe (supra), it was observed that the proprietor of the trade mark cannot enjoy monopoly over the entire class of goods and particularly when he is not using the said trade mark in respect of certain goods falling under the same Class. It was held therein that the reasoning of the High Court that the goods belonging to the appellant and the respondent (though the nature of the goods different) belong to the same class and, therefore, it would be impermissible for the appellant to have the registration of the trade mark concerns in its favour would be meaningless, as there is no such principle of law. It was further held that though the goods of the appellant as well of the respondent fall under the same classes 29 and 30, notwithstanding the goods of the appellant are different from that of the respondent. The word “NANDHINI” and “NANDINI” is a generic term. It is not invented or coined word of the respondent. The nature and style of the business of the appellant and the respondent are altogether different. Though there is phonetic similarity in so far as the words “NANDHINI” and “NANDINI” are concerned, the trade mark with the logo adopted by the two parties are altogether different. The Court has proceeded to examine each and very characteristics of the two trade marks and has held that when these marks are seen in totality, there is hardly any similarity of the appellant’s mark with that of the respondent. The observation in this regard in paragraph Nos. ‘26.3 to 26.7’, are relevant to be extracted hereinbelow:-
“26.3 The goods of the appellant as well as respondent fall under the same Classes 29 and 30. Notwithstanding the same, the goods of the appellant are different from that of the respondent. Whereas the respondent is producing and selling only milk and milk products the goods of the appellant are fish, meat, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, edible oils and fats, salad dressings, preserves etc. and it has given up its claim qua milk and milk products.
26.4 Insofar as application for registration of the milk and milk products is concerned, it was not granted by the trade mark registry. In fact, the same was specifically rejected. The appellant was directed to file the affidavit and Form 16 in this behalf to delete the goods ‘milk and milk products’ which affidavit was filed by the appellant. Further concession is already recorded above.
26.5 NANDINI/NANDHINI is a generic, it represents the name of Goddess and a cow in Hindu Mythology. It is not an invented or coined word of the respondent.
26.6 The nature and style of the business of the appellant and the respondent are altogether different. Whereas respondent is a Cooperative Federation of Milk Producers of Karnataka and is producing and selling milk and milk products under the mark ‘NANDINI’, the business of the appellant is that of running restaurants and the registration of mark ‘NANDHINI’ as sought by the appellant is in respect of various foodstuffs sold by it in its restaurants.
26.7 Though there is a phonetic similarity insofar as the words NANDHINI/NANDINI are concerned, the trade mark with logo adopted by the two parties are altogether different. The manner in which the appellant has written NANDHINI as its mark is totally different from the style adopted by the respondent for its mark ‘NANDINI’. Further, the appellant has used and added the word ‘Deluxe’ and, thus, its mark is ‘NANDHINI DELUXE’. It is followed by the words ‘the real spice of life’. There is device of lamp with the word ‘NANDHINI’. In contrast, the respondent has used only one word, namely, NANDINI which is not prefixed or suffixed by any word. In its mark ‘Cow’ as a logo is used beneath which the word NANDINI is written, it is encircled by egg shape circle. A bare perusal of the two marks would show that there is hardly any similarity of the appellant’s mark with that of the respondent when these marks are seen in totality.”
35. The High Court of Madras in S.N.R. Dhall Mill vs. Kaleesuwari Refinary Private Ltd. [2022(92) PTC 217 (Mad) (DB] while dealing with the matter alleging infringement of the registered trade mark of the plaintiff and passing off, has noted that the plaintiff therein had a registered trade mark for the device containing the word “GOLD WINNER” and other elements in Class-29. They apply only for the device mark in Class-30 and their application was still pending. Whereas, the defendant therein did not have the registered trade mark for the mark “GOLD WINNER” in Class-30. While examining the question as to whether the defendant has infringed the registered trade mark of the plaintiff, it was further noted that the registered trade mark of the plaintiff is a device mark. In view of Section 17 of the Trade Marks Act, 1999, when the trade mark consists of several parts, its registration shall confer upon the proprietor the exclusive right to the use of trade mark, taken as a whole and the registration shall not confer exclusive right in the matter forming only a part of the whole of the trade mark registered.
36. The High Court of Madras has compared the composite mark of the plaintiff and that of the defendant to reach at the conclusion that there was no occasion to form an opinion that the defendant’s device mark could deceive any buyer and create any confusion to him when the defendant’s mark is similar to that of the plaintiffs trade mark. It was admitted therein that when the two marks are compared, as a whole, they are different in Class. The Division Bench judgment of the Madras High Court in M/s Pathanjali Ayurved Limited and Divya Yog Mandir Trust vs. Arudra Engineers Private Limited [2021(85) PTC 523(Mad)(DB)], considering the scope of Section 17 of the Trade Marks Act, has been considered therein to note that even under Section 17 of the Trade Marks Act, 1999, protection is only afforded to the entire trademark as registered, and not to mere parts of the trade mark. The composite trade mark, which contained other elements and not only the word “Coronil” as envisaged under Section 15, cannot be dissected and split up when registered as a label mark, though it is otherwise capable of being individually registered. The court will not dissect the label mark into its component parts and grant an injunction.
37. It was observed therein that the conflicting composition marks are to be compared by looking them as a whole, rather than breaking the marks up into their component parts for comparison. This is termed as ‘anti-dissection’ rule, which means a mark should not be dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. It would be violation of the anti-dissection rule to focus upon the prominent feature of a mark and decide likely confusion solely upon that feature, ignoring all other elements of the mark. It is improper to find that one portion of a composite mark has no trade mark significance, leading to a direct comparison between only that what remains.
38. The High Court also considered the impact of Section 29(9) of the Trade Marks Act, which was termed as an exception to the Anti-dissection Rule, inasmuch as, the provision talks of comparison of a distinct and essential feature of the registered trade mark. It was noted that it is a settled law that the essential feature in trade mark has to be determined in the facts and circumstances of each case. The identification of the essential feature of a mark is a question of fact and depends upon the judgment of the Court based on the evidence led before it as regards usage of the trade mark. Reference has been made to the decision of the Apex Court in Kaviraj Pandit Durga Dutt Sharma (supra) to note as under:-
“29. ‘The identification of the essential features of the mark is in essence a question of fact and depends on the judgement of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimates analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.”
39. Taking note of the above, we may further note the content of Class-5 and Class-10 under which the trade mark of the plaintiff has been registered as a device mark :-
Class 5 Pharmaceuticals, medical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for human beings and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
Explanatory Note Class 5 includes mainly pharmaceuticals and other preparations for medical or veterinary purposes.
This Class includes, in particular: • sanitary preparations for personal hygiene, other than toiletries; • diapers for babies and for incontinence; • deodorants, other than for human beings or for animals; • medicated shampoos, soaps, lotions and dentifrices; • dietary supplements intended to supplement a normal diet or to have health benefits; • meal replacements and dietetic food and beverages adapted for medical or veterinary use.
This Class does not include, in particular: • ingredients for use in the manufacture of pharmaceuticals, for example, vitamins, preservatives and antioxidants (Cl. 1); • sanitary preparations being non-medicated toiletries (Cl. 3); • deodorants for human beings or for animals (Cl. 3); • support bandages, orthopaedic bandages (Cl. 10); • meal replacements and dietetic food and beverages not specified as being for medical or veterinary use, which should be classified in the appropriate food or beverage classes, for example, low-fat potato crisps (Cl. 29), high-protein cereal bars (Cl. 30), isotonic beverages (Cl. 32).
Class 10 Surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopedic articles; suture materials; therapeutic and assistive devices adapted for persons with disabilities; massage apparatus; apparatus, devices and articles for nursing infants; sexual activity apparatus, devices and articles.
Explanatory Note Class 10 includes mainly surgical, medical, dental and veterinary apparatus, instruments and articles generally used for the diagnosis, treatment or improvement of function or condition of persons and animals.
This Class includes, in particular: • support bandages, orthopaedic bandages; • special clothing for medical purposes, for example, compression garments, stockings for varices, strait jackets, orthopaedic footwear; • articles, instruments and devices for menstruation, contraception and childbirth, for example, menstrual cups, pessaries, condoms, childbirth mattresses, forceps; • therapeutic and prosthetic articles and devices for implantation made of artificial or synthetic materials, for example, surgical implants comprised of artificial materials, artificial breasts, brain pacemakers, biodegradable bone fixation implants; • furniture especially made for medical purposes, for example, armchairs for medical or dental purposes, air mattresses for medical purposes, operating tables.
This Class does not include, in particular: • medical dressings and absorbent sanitary articles, for example, plasters, bandages and gauze for dressings, breast-nursing pads, diapers for babies and for incontinence, tampons (Cl. 5); • surgical implants comprised of living tissue (Cl. 5); • tobacco-free cigarettes for medical purposes (Cl. 5) and electronic cigarettes (Cl. 34); • wheelchairs and mobility scooters (Cl. 12); • massage tables (Cl. 20).
40. We may also note Class-44 under which, admittedly the defendant has filed an application for registration of the trade mark “UniSN Health Checkups and Diagnostics” :-
Class 44 Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, aquaculture, horticulture and forestry services.
Explanatory Note Class 44 includes mainly medical care, including alternative medicine, hygienic and beauty care given by persons or establishments to human beings and animals, as well as services relating to the fields of agriculture, aquaculture, horticulture and forestry.
This Class includes, in particular: • hospital services; • telemedicine services; • dentistry, optometry and mental health services; • medical clinic services and medical analysis services for diagnostic and treatment purposes provided by medical laboratories, such as x-ray examinations and taking of blood samples; • therapy services, for example, physiotherapy and speech therapy; • pharmacy advice and preparation of prescriptions by pharmacists; • blood bank and human tissue bank services; convalescent home and rest home services; • dietary and nutritional advice; • health spa services; • artificial insemination and in vitro fertilization services; • animal breeding; • animal grooming; • body piercing and tattooing; • services relating to gardening, for example, plant nursery services, landscape design, landscape gardening, lawn care; • services relating to floral art, for example, flower arranging, wreath making; • weed killing, vermin and pest control for agriculture, aquaculture, horticulture and forestry.
This Class does not include, in particular: • vermin and pest control, other than for agriculture, aquaculture, horticulture and forestry (Cl. 37); • installation and repair services for irrigation devices (Cl. 37); • ambulance transport (Cl. 39); • slaughtering of animals and taxidermy (Cl. 40); • timber felling and processing (CL 40); • animal training services (Cl. 41); • health clubs for physical exercise (Cl. 41); • scientific research services for medical purposes (Cl. 42); • boarding for animals (Cl. 43); • retirement homes (Cl. 43); • funerary undertaking (Cl. 45).
41. A perusal of the classes in which the goods and services for which the trade mark of the plaintiff has been registered namely Class-5 and Class-10, it is clear that the goods and services falling in clauses 5 and 10 of the plaintiff are quite different from the goods and services covered by Class-44 wherein the defendant is doing its trade. There is no overlapping between the goods and services for two classes. The word “UNISON”, though capable of being individually registered, but has been made part of a device mark, which contains other elements such as a suffix design of a Capsule with the word “UNISON” inscribed into it and word “Pharmaceuticals” as a suffix. There are other designs at the bottom of the word ‘UNISON’ in the shape of two horizontal rectangular boxes. The registration has been obtained by the plaintiff of a device mark with the words “UNISON Pharmaceuticals” and a suffix of capsule with the word “UNISON” inscribed into it, and not as a word mark “UNISON” envisaged under Section 15.
42. The plaintiff, thus, for the purpose of Section 29(4) of the Trade Marks Act, 1999, cannot claim monopoly over the word “UNISON” as it was registered as a part of the composite mark. Any such effort to split up the component of a composite device mark would be in contravention of the ‘anti-dissection’ rule. It would be contrary to pick out and focus upon one feature of a mark to decide as to whether the usage of the trade mark ‘UniSN’ by the defendant is likely to create confusion, solely based upon that feature, ignoring other elements of the device mark.
43. Further, considering sub-section (9) of Section 29, we may note that even if the distinctive element of the plaintiffs registered trade mark is treated as consisted of word “UNISON”, it would be necessary for us to apply both the tests of phonetic as well as visual similarity. The visual representation of two marks, where plaintiffs mark is “UNISON Pharmaceuticals Pvt. Ltd.” with other elements included in the device mark and the defendant’s mark is “UniSN Health Checkups and Diagnostics”, show no similarity. The defendant is engaged in the business/services of providing health check-up and diagnostic services and it’s case is that the word “UniSN” has been coined by the defendant by suffixing ‘SN’ which comprised of the first alphabet taken from the first names of two promoters of the defendant’s firm combining with the word ‘Uni’. The contention is that the defendant’s mark additionally has a unique artistic character, which are creation of the defendant. On the visual representation of two marks, the design and view seem different. Further, the phonetic similarity between two marks on account of use of common word “UNI”, as opined by the trial court, does not seem to be convincing, inasmuch as, it cannot be said with full confidence at the prima facie stage that both the words “UNISON” and “UniSN” are phonetically similar.
44. Further, the Classes of goods and services being provided under Class-44 by the defendant mainly included hospital services, tele-medicine services, optometry, mental health services, medical clinic services and medical analysis services for diagnostic and treatment purposes provided by medical laboratories, such as X-ray, collection of blood samples, etc. apart from therapeutic services such as physiotherapy and speech therapy. The other services such as dietary and nutritional advice, health spa, body piercing and tattooing, services relating to gardening, floral art, artificial insemination, animal breeding and animal grooming are not such services which are directly provided to ordinary consumer. The customers to whom these services are to be provided would be professionals such as doctors, veterinarian and corporate clients. Insofar as the medical, surgical and dental services are concerned, even if it is accepted for a moment that there would be some overlapping in the services pertaining to medical, dental, pharmaceutical fields, as being provided by the plaintiff in Class-5 and Class-10, it is difficult for the Court to form an opinion at the prima facie stage that the professionals to whom the goods and services are being provided, would not be able to notice the difference, noted by us from the visual representation of two device trade marks. From the nature of goods and services provided by the plaintiff and defendant, the chance of confusion is remote.
45 Thus, having taken into account the surrounding circumstances of the present case, viz, visual and phonetic representation of the two device trade marks, the goods to which they are applied, the nature and kind of customers to whom such goods and services are being provided, we have reached at a prima facie opinion that there is no possibility of confusion in the minds of the public as to the goods and services provided by the defendant and the plaintiff being similar.
46. Coming to the arguments of the learned counsel for the respondent on the plea of Passing-off, we may note that, at this interlocutory stage, once we have reached at the conclusion that the nature of the plaintiffs mark is a composite device and there is no degree of resemblance between the two marks in terms of phonetic and visual similarity and the nature of goods in respect of which they are used as trade marks are different, we do not find it a fit case for grant of injunction, as in our opinion, there is no likelihood of confusion between two marks.
47. We may note that the Apex Court in Cadila Health Care Ltd. (supra), has held that in an action for Passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity, the following factors are to be considered :-
(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.
(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods,
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
48. It is held therein that weightage to be given to each of the aforesaid factors depends upon the facts of each case and the same weightage cannot be given to each factor in every case. Given conscious consideration to all the above factors in light of the facts of the instant case, it is difficult for us to form a prima facie opinion that the defendant had committed an act of Passing-off their goods as that of the plaintiff. Moreover, the said issue has to be decided by the trial court on the evidence led by the parties.
49. In view of the above discussion, we find that the identification of the essential feature of the mark for the purpose of Section 29(4) of the Trade Mark Act, 1999 and the plea of the plaintiff that the defendant has committed the act of Passing-off their goods as that of the plaintiff, being questions of fact, have to be determined by the trial court based on the evidence led before it as regards usage of the two trade marks.
50. In the ultimate analysis of the material before us, we find that the plaintiff has failed to make out a prima facie case for grant of interim injunction. The trial court has made an error in holding otherwise, heavily relying on the contention of the plaintiff that it is using the trade mark “UNISON” for running its business since more than 42 years and the defendant is using the trade mark “UniSN” since 14.06.2021, ignoring the tests to be applied in the facts and circumstances of the case to arrive at the opinion of similarity between two trade marks so as to form a prima facie opinion of the defendant having infringed the registered trade mark of the plaintiff.”
Citation: Unisn Health Check Up and Diagnostics LLP v. Unison Pharmaceuticals Pvt. Ltd., R/AO/98/2024 (H.C. Gujarat July 16, 2024). Available at: http://indiankanoon.org/doc/141483735/, Visited on: 19/07/2024.
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