The present Appeal was filed by the M/s The Southern India Exporting Company (“SIECO”), against M/s The Classic Fireworks Industries (“Classic Fireworks”), challenging an order passed by the Deputy Registrar of Trademarks, allowing the registration of the “Garuda” mark, arguing that it was deceptively similar to their “ Eagle” mark.
The marks in question:
SIECO claimed prior use of their trademark in the fireworks industry and asserted that the visual similarities between the two marks would cause confusion among consumers. They claimed that Classic Firework’s use of the “Garuda” mark would lead to passing off as the consumers may associate the mark with their “Eagle” mark. They further argued that the Registrar failed to apply the test for deceptive similarity under Section 11(b) of the Trade Marks Act, and overlooked the perspective of an average consumer when allowing the “GARUDA” mark to be registered.
Classic Fireworks argued that both the marks had co-existed in the market for several years without causing any confusion or deception. They claimed that the marks were phonetically and visually distinct, with the “Eagle” mark depicting a bird in flight and the “Garuda” mark showing a bird perched on a tree branch. Further, they also invoked the defence of acquiescence under Section 33 of the Trade Marks Act, claiming that SIECO had not opposed the earlier registrations of the “Garuda” mark.
The Madras High Court found that the SIECO had successfully established its prior use of the “Eagle” trademark since 1956, which had gained significant goodwill and recognition in the market. The Court emphasized that the likelihood of consumer confusion was high due to the visual and conceptual similarities between the “Eagle” and the “Garuda” mark. Further, since both the marks operated in the same industry, there was a high risk that average consumers, who may not pay close attention to details, could be easily confused. The Court also determined that the Classic Firework’s claims of prior use were weak and rejected their argument of acquiescence, noting that the SIECO had promptly opposed the registration in 2004. The Court thus allowed the appeal, quashed the impugned order, and rejected Classic Firework’s application for registration of the “Garuda” mark. No costs were awarded.
Citation: M/s. The Southern India Exporting Company Vs. M/s. The Classic Fireworks Industries, High Court of Madras, 20th September 2024, [(T) CMA (PT) No.10 of 2023m(OA/32/2011/TM/CHN)] Available on: https://indiankanoon.org/doc/189736486/
Authored by Bhavishya B, Associate, BananaIP Counsels
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