In the case of Girnar Food & Beverages Pvt. Ltd. v. The Registrar of Trade Marks & Anr., the Calcutta High Court ruled in favor of Girnar Food & Beverages Pvt. Ltd., setting aside the decision of the Registrar of Trade Marks. The dispute centered around the rejection of Girnar’s opposition to the registration of a mark by Bicrampore Tea Estate (respondent no. 2), which used the device of an elephant and the word “HAATHI” for their tea products. The court determined that the respondent’s mark was deceptively similar to Girnar’s well-established “JUMBO” mark, which also featured an elephant device.
Girnar Food & Beverages Pvt. Ltd. filed the appeal under Section 91(1) of the Trade Marks Act, 1999, contesting the Registrar’s order dated 22nd July 2023, which rejected its opposition. Girnar argued that their “JUMBO” mark, registered since 1989, had garnered substantial goodwill and that the respondent’s adoption of an elephant device with the word “HAATHI” was both malafide and deceptively similar.
Girnar further submitted that it was a reputable company engaged in the manufacturing, selling, and exporting of various types of tea. It had been using the “JUMBO” mark, featuring a device of five elephants, since 1985. Girnar presented that the mark was prominently associated with their products and was being continuously used in India and abroad, contributing to their significant market presence. Girnar further contended that the respondent’s mark, applied for on 6th January 2006, was likely to deceive consumers due to its similarity with its prior registered and used mark.
The court reviewed Girnar’s extensive documentation demonstrating continuous use and market recognition of their “JUMBO” marks.
It found that the Registrar had erred in rejecting Girnar’s opposition, noting the lack of evidence from the respondent to substantiate their claim of using the “HAATHI” mark since 1970. The Court stated that the invoices presented by Bicrampore Tea Estate dated back only to 2002, which failed to establish prior use. The court emphasized that the prominent feature of both the marks was the elephant device, which could confuse consumers into associating the respondent’s products with Girnar’s established brand.
As a part of its Judgment, the Court cited The Gillette Company LLC v. Tigaksha Metallics Private Ltd., where it was held that even slight differences in trade dress do not eliminate the likelihood of consumer confusion if the core elements are deceptively similar. The court also referred to the case of T.G. Balaji Chettiar v. Hindustan Lever Ltd., which highlighted the importance of considering consumer perception and the potential for deception.
Finally, the court concluded that the respondent’s mark was deceptively similar to Girnar’s “JUMBO” mark. It set aside the Registrar’s order, quashed the certificate of registration for Bicrampore Tea Estate’s mark, and allowed Girnar’s appeal.
Relevant Paras
The extract from the Judgment citing relevant cases reads as follows:
“21… In the case of T.G. Balaji Chettiar (supra), the Madras High Court held that parties have to furnish evidences on factual question of user but in the instant case, the respondent no.2 has not produced any evidence to establish that the respondent no. 2 carries the business with the trade mark of HATHI MARKA UTTAM CHAT since 1970.
26. In the case of The Gillette Company LLC (supra), the Delhi High Court held that since OFFICER’S CHOICE and COLLECTOR’S CHOICE were found to convey the same meaning and deceptively similar, the impact of the differences in trade dress was unlikely to rule out consumer confusion between the two products. In the instant case also the trade mark of the appellant JUMBO and Five Jumbo with device of Elephants and the trade mark of the respondent no.2 Bicrampore T.E. (Lable showing Hathi Marka Uttam Chai) are similar which confuse the mind of the consumers.
27. In the case of J.C. Eno Limited (supra), the Bombay High Court held that: “I have already pointed out that very many people in India know English as well as different vernacular languages. But even if an Indian does not know English, but knows only some vernacular language, if a trader is permitted to use in that language words which have become associated with the goods of another trader in another language and are distinctive of the goods of that other trader, he is thereby putting it into the power of unscrupulous dealers to mislead and practise a deception upon the individual knowing only the one language, in that he may thereby be enabled to pass off upon that unsuspecting person goods as and for the goods of the other trader to which those particular words in another language have by long user become attributed.”
In the present case also the appellant and the respondent no.2 both are in same business of manufacture and sale of tea, the class of consumers of both the parties are same. …”
Citation: Girnar Food & Beverages Pvt. Ltd. v. Registrar of Trade Marks & Anr., IPDTMA No. 80 of 2023 (H.C. Calcutta June 18, 2024). Available at: http://indiankanoon.org/doc/2706900/, Visited on: 06/07/2024.
Disclaimer
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