Use of trademark for unrealted goods and consequences

Using the registered mark in unrelated/different goods amounts to the infringement of trademark.

In the recent judgment delivered by Hon’ble Delhi High Court in Anchor Health & Beauty Care Pvt. Ltd. vs. Shivam Hygienes India Pvt. Ltd, a penalty of Rs. 5,00,000/- alongwith the litigation cost of Rs. 25,000/- was imposed on the user of similar trademark for altogether different goods.

The plaintiff, Anchor Health & Beauty Care Pvt. Ltd , has filed the suit alleging infringement of its trademark “ANCHOR” by the defendant, Shivam Hygienes.

The Plaintiff is a well known Indian Company belong to the ANCHOR group of companies. The initial range of products offered by the plaintiffs were switches, which were manufactured from a small unit in Mumbai. However, over the past 45 years the group had spread, and is claimed to be a truly Indian Multinational having a large range of products including the FMCG products such as Anchor White Tooth Paste, Gel Tooth Paste, Dyna Soap and confectionery items. The plaintiffs claim user of their mark ANCHOR in a large number of classes and for a large specification of goods since the year 1963. The class wise registration claimed to have been obtained by the plaintiffs for its mark ANCHOR. The plaintiffs claim that the mark ANCHOR is registered in a large number of countries and applications for registration are pending in several countries.

The claim of the plaintiffs is that apart from the statutory rights in the trademark ANCHOR, the plaintiffs also enjoy common law rights in their mark and logo owning to such extensive, long and continuous use.

The plaintiffs placed on record the packaging material used by the defendants to market their CTC Tea under the brand ANCHOR with the device of ANCHOR. The defendants have used the mark ANCHOR and the device in the following manner:

Hon’ble High Court analyzed the fact and opined as follows:

Ø In the present case, the impugned mark adopted by the defendant bears the same word “ANCHOR” as that of the plaintiff. Owing to the fact that the plaintiff’s mark is associated with FMCG products like soaps , toothpastes etc, amongst other goods, the use of the word “ANCHOR” by the defendant in respect of FMCG products, like tea in the instant case, is likely to mislead a consumer into believing that the defendant’s product is offered by the plaintiffs.

Ø A consumer with imperfect memory is likely to remember the name “Anchor” and associate the defendant’s goods with those of the plaintiffs, even if the logo of the defendant isn’t identical to the plaintiff’s trademark, but bears a close resemblance to it.

Ø The products sold under the impugned mark are available at the same stores, on the same shelves, where the plaintiff offers for sale its FMCG goods and therefore there exists a high likelihood of confusion amongst consumers. (In case of Hamdard National Foundation)

Ø Notably, even in cases where the goods offered under the impugned mark are not cognate to the plaintiff’s goods, the Courts have leaned in favour of preventing a party from riding on another’s goodwill to mislead the consumers.

Ø In Bata India Limited, the plaintiffs’ trademark “Bata” was registered in respect of canvas, rubber, leather shoes etc. The defendants were using the impugned mark “Batafoam” in respect of mattresses, sofas, cushions etc. The Court restrained the defendant from using the impugned mark observing that

Ø Other cases in this context are :

(i) Time Incorporated Vs. Lokesh Srivastava & Anr., 2005 (30) PTC 3(Del);

(ii) Microsoft Corporation Vs. I. Sadiq Batcha & Ors., 2009 (40) PTC 477 (Del); and

 (iii) St. Ives Laboratories INC Vs. Sunny Bakshi & Anr., 2009 (41) PTC 231

Hon’ble High Court deliver the judgment as follows:

“In view of the aforesaid discussion, and the aspects that the trademarks are identical and logos are confusingly and deceptively similar and are being used by the defendant in respect of cognate goods, in my view, the plaintiffs have made out a case for grant of injunctive relief, as prayed for in the plaint and for award of damages against the defendant. Accordingly, the suit is decreed in terms of prayer (a) of para 25 of the plaint. A further decree is passed in favour of the plaintiffs and against the defendant for Rs. 5,00,000/- towards damages. The plaintiffs shall also be entitled to costs, which are quantified at Rs. 25,000/-.”

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