Registered trademark cannot be broken into constituent parts

India

In Alaknanda Cement Private Limited v Ultratech Cement Limited (Suit No 743/2009, Appeal No 463/2011), the Bombay High Court has upheld an injunction order restraining appellant-defendant Alaknanda Cement Private Limited from using the mark ULTRATUFF CEMENT.

Respondent-plaintiff Ultratech Cement Limited, a reputed manufacturer of cement and related products, has been using the mark ULTRATECH CEMENT since October 31 2004. The mark was registered on December 17 2004. Alaknanda, which also manufactures cement, uses the word mark ULTRATUFF CEMENT. Alaknanda has not applied to register its mark.

Ultratech sought an order restraining Alaknanda from using the mark ULTRATUFF CEMENT, or any mark similar to Ultratech’s trademark, until the disposal of the suit. The single judge issued a temporary order in favour of Ultratech. Alaknanda appealed against the single judge’s order.

In support of its claim, Ultratech submitted the following arguments:

  • Its trademark was distinctive; and
  • It had acquired a reputation and goodwill in relation to its products, and traders - as well as the general public - were able to associate the trademark ULTRATECH CEMENT with Ultratech.

Ultratech also produced evidence of sales, turnovers and advertisement expenditure to prove its use of the mark.

In response, Alaknanda argued as follows:

  • Its mark was not similar to Ultratech's registered mark;
  • Ultratech's registered trademark was a device mark, rather than a word mark like that used by Alaknanda;
  • The words 'ultra' and 'tech' are descriptive; the fact that Ultratech used a combination of two descriptive words did not mean that it had propriety rights over both words (Alaknanda relied on a computer-generated search report which showed that the term 'ultra' was generic).
  • Under Section 17(2) of the Trademark Act 1999, a trademark owner has no exclusive right to use part of its registration.

Section 17 states as follows:

"(1) If a trademark consists of several matters, its registration shall confer exclusive rights on the proprietor to use the trademark as a whole.

(2) When a trademark contains any part which is not the subject of a separate application and which is not separately registered by the proprietor, or contains any matters which is common to the trade or is otherwise of non-distinctive character, registration does not confer any exclusive right in the particular part of the trademark which is registered."

Based on the submissions of both parties, the interpretation of Section 17 and established case law, the court took the prima facie view that the parties' marks were deceptively similar. In arriving at this conclusion, the court made the following observations:

  • A registered mark cannot be broken into its different parts. The case at hand fell within the purview of Section 17(1) of the act, and not Section 17(2).
  • As the trademarks at issue were not identical, the issue was whether they were deceptively similar - and not merely whether they were similar.
  • The two marks were very close, both visually and phonetically. Although the similarities between the marks would not create confusion in the mind of an educated and informed person, it was highly likely to cause confusion in the mind of the layman.
  • The single judge had observed that Alaknanda had tried to submit fabricated invoices to prove that it had made substantial sales under its mark. As such, Alaknanda had come to court with unclean hands.
  • Alaknanda had ample opportunity to conduct its diligence and find out whether its unregistered mark was similar to that of a third party. However, it did not carry out any official searches.

Therefore, the court held that there was no merit in the appeal and upheld the earlier decision of the single judge granting an injunction preventing Alaknanda from using the mark ULTRATUFF CEMENT.

Minu Ramani and Rakhi Jindal, Nishith Desai Associates, Mumbai

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