Trade Mark Laws Are A Picnic
As competition hots up, companies protect their brandnames, logos and labels with ferocious zeal. They try to stop others from using anything remotely suggestive of their exclusive lines, curves and colours. It is not always easy to enforce their rights, as civil courts are slow and the trade mark laws are a jumble of American, English and Indian case law. Therefore, the preliminary round in the legal battle is for an injunction. The person who gets an injunction in his favour can rest for some years, till the final judgement is delivered.
The judgement of the Supreme Court in S M Dyechem Ltd vs Cadbury (India) Ltd delivered last fortnight tries to clarify the state of law on trade marks and `passing off action', hoping to speed up litigation in this field. The occasion was the dispute between the two companies over their chocolate brands.
Dyechem named its product `Piknik', while Cadbury called its similar confectionery `Picnic'. Dychem moved the district court alleging that the names would confuse the buyers. The court agreed and restrained Cadbury from using its brandname till the case was finally decided. It then appealed to the Gujarat High Court and succeeded in vacating the interim injunction. Dychem in turn moved the Supreme Court, where it lost. Thus, both products can be sold in the market till the decree.
The Supreme Court laid down a significant principle applicable for the grant of temporary injunction in trade mark cases. Following the English cases, it stated that the court dealing with applications for interim injunctions must weigh the comparable strength of the cases of the rival parties. Earlier, the principle followed was balance of convenience. But now, along with that, the comparable strength of the cases also should be considered.
On the substantial questions of law, the judgement tried to lay down certain principles which should guide the courts below. Under Section 29 of the Trade Marks Act, a person who complains of infringement of his trade mark must prove that its rival is using a `deceptively similar' name. The phrase is defined thus: "A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion."
The court said where common marks are included in the rival trade marks, more stress should be laid on common features rather than on differences in essential features. Three tests could help. The court should ask itself whether there are any special aspects of the common feature which has been copied? Secondly, it should examine the mode in which the parts are put together differently. Or whether the dissimilarity of the parts is enough to mark the whole thing dissimilar? Next, the court should consider whether, when there are common elements, should one not pay more regard to the parts which are not common, while at the same time not disregarding the common parts, or put it simply, what is the first impression?
Despite the elaborate discussion of the legal principles in the judgement, it is not likely to slow down the trade mark wars. Firstly, judicial discretion plays a large role in such disputes. Even this judgement admits this fact. Therefore, lawyers will continue to bring cartons, tubes and jars to the court for judicial examination. Secondly, there are so many grey areas in statutory law and torts that clever artists assisted by lawyers can throw more dust in the judicial eye. Thirdly, advertising and marketing have entered the cyber age, leaving behind the simple days when trade mark could be considered `property' in simple, 19th century terms. For these reasons, the legal wrangles between the forces of protectionism and competition are bound to rise.