Infringement of Service Marks

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India recognized trademarks for services or as they are normally referred as service marks which is established on September 15, 2003 and possibility of their registration was brought into effect. As has been stated, the service marks were in vogue even before the commencement of the Act and the action of passing off was possible to enforce protection to service marks. As trademark registration was not possible, it was also a practice to seek to protect service marks obtaining registration for stationary, cutlery or other alleged items. Then in a give case, the passing off proceedings could be taken against the defendant. Law of protection of service marks was put in place in 2003. Since then, there have been only four-five cases of infringement or passing off in relation to service marks.  It will be useful to appreciate the subtitles involved in cases relating to service marks as a matter of comparison with goods marks. Protection of service marks has changed the scenario and the companies have become conscious in protecting their brand equity. Courts are considering trademark aspect of IP protection seriously, In October, 2013, the Bombay High Court gave relief to logistic firm PN Writer & Co, and directed the Bangalore based Writer Packers and Movers not to use the name ‘Writer’ and remove it from their website till final orders. According to PN Writer & Co, Mumbai they were using the trademark  ‘Writer’ as well as ‘PN Writer & Co’ for transporting goods and valuables  since 2002 and had registered the trademark and earlier notice to the defendant to cease and desist the offending use of ‘writer’.

Similarity of Service Mark and Similarity of Services

In case of infringement in relation to services, not only the marks should be similar but the services of the defendant should also be similar to services of the plaintiff as is the case with infringement of trademarks when used on goods. The first prominent case on Service Marks has been of Balkrishna Hatcheries versus  Nandos International in which trademarks ‘Nandos’  and ‘Nandu’ were involved. Important issues like ‘well known trademark’ and trans-border reputation were also considered in this case. The Bombay High Court followed the tests/ factors laid down in many of the famous cases of Jellinek, J.Lyons & Loy, British sugar and Eagle Potteries for determination of infringement alleged to be committed by using  a ‘goods trademark’ in relation to rendering service by the defendant.

Comparison of Service Marks

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The trademark of the plaintiff considered of “Nandus” in a stylized manner with the device of a cockerel both enclosed in a hat shaped outline, in respect of Processed or Frozen Meat products falling in class 29 of goods. A second trademark adopted in adopted in 2005 consisting of the word ‘Nandus’ enclosed with an oval shaped structure in white colour with red outline and  a gift tag structure occupying the centre expression ‘Heat n Eat’ depicted in black colour below the oval structure.  The defendant used to serve Afro-Portuguese cuisine (vegetarian and non-vegetarian and using the peri -peri chilly) and sold sauces under the trademark ‘Nandos’.

Infringement: Both marks and Service/Goods should be similar

The Magistrate of Bombay High Court did not get convinced of reputation or use of trademark “Nandu” registered for proposed and frozen meat products in India and refused to restrain the trademark “Nando’s in relation to eatable goods, restaurant, hotelling service of the defendant”. The plaintiff had  a registered trademark “Nandu” for goods and was used on goods and not on service, whereas the defendant was using his mark only on restaurant service. The court held that the case of the plaintiff does not fall either under section 29(2) or section 29(4), after carefully scrutinizing the case from both angles.

The Court took the view that under section 29(2)(B), the plaintiff would have to establish:

  • That the mark of the defendant “Nandos” was similar to the plaintiffs mark “Nandus”.
  • That the defendants services of running restaurants/food outlets and the goods like sauces/condiments were similar to the goods sold by the plaintiff under its registered trademark “Nandu” for processed or Frozen Meat Products.
  • That such similarity was likely to cause the public to confuse or associate the defendants mark with that of the plaintiffs.

In order to discuss the complicated legal issue of similarity of goods or service and the requirement of the law intensely, the court assumed that the mark “Nandos” is similar to the plaintiff’s mark “Nandus”.

The court took the view that the plaint did not establish that there was any similarity or association between the plaintiff’s goods and the defendants services which was a prerequisite for infringement. To, conclude, it is suffice to say that the plaintiff’s goods were neither similar nor were associated with the defendants services and sale of sauces. Applying the settled tests and factors, the goods of the plaintiff(proposed or frozen meat products) and the defendant services/goods (restaurants/ food outlets and sale of sauces) cannot be said to be similar or associated. The Court discussed all the 8 tests laid down in ‘Treat Case’, and concluded that it was apparent that there was no similarity or association between the plaintiff’s products and the defendant’s restaurant and sale of sauces.

Description by one word or expression

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One of the tests is whether the goods or services of plaintiff and the defendant can be described by ‘one word or expression’ which indicates similarity. The court found that when the mark is used for sale of food items and when it is used for restaurant service, the food items and when it is used for restaurant services , the food and services should be similar, which have not been found to be so and there is no evidence of confusion. Thus no infringement or passing off was found in this case. The court opined that all the factors necessary for infringement were absent, there was no evidence to show any trade relationship between restaurant services and the sale of processed or frozen meat products.

Insistence on Goods vs. Goods and Services vs. Service

The Bombay High Court concluded for a successful plea of infringement, “the similarity or association of offending mark can only be a similarity between goods and goods of earlier mark, or a similarity between services and services and cannot be similarity between goods on the one hand and services on the other. The court discussed at length to prove that the law envisages that infringement can happen only when the offending mark, as well as the earlier mark, is used on ‘services’. Then the trademark registration of the complaining  mark should be for similar services. A trademark registered and/or used for ‘goods’ cannot be infringed by its use on ‘Services’. However, the court scrutinized the case even by ignoring the above objection.

The Madras High Court was faced with similar situation wherein the plaintiff was selling cosmetics, hair care and beauty care goods under the mark ‘Health & Glow’, while the defendant was using the mark ‘Health & Glow’ for treatment for hair care. The Court did not consider the question as argued before the Bombay High Court about the use of mark on goods vs. goods and services vs. services. The defendant had not offered any explanation for choosing combination of two marks ‘Health & Glow’. The Court held that action for infringement/passing off was maintainable. Madras High Court said that as per the language employed in section 29(4), infringement would arise even by the usage of a trademark in relation to dissimilar goods or services, if three conditions are satisfied, namely;-

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  • Mark is identical with or similar to the registered trademark; and
  • Mark is used in relation to goods or services which are not similar to those for which the trademark is registered; and
  • The registered trademark has a reputation in India and the use of the mark without due cases takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trademark.

The Madras High Court said : “the Trademark law is not intended to protect a person who deliberately sets out to take the benefit of somebody else’s reputation with reference to goods, especially so when the reputation extends world wide”. The Court did not scrutinize the use by the defendant under section 29(2), rather analyzed section 29(4) and held the same applicable to the case, which is mentioned under the heading of section 29(4). Moreover, another use of the trademark ‘Luxuria’ on the ‘Buses’ on one hand and ‘Bus service’ was also scrutinized under section 29(4).

Infringement of Goods vs. Service

Even though the Court stated that for infringement, the similarity of goods would be scrutinized vs. goods and the service vs. services, but while deciding the case it decided presuming that the similarity of goods vs. services may be lead to infringement. The court continued as:

  • A trademark registered for goods or for any particular goods will confer upon the proprietor a monopoly only in respect of that class or if the trademark registration is narrow only in respect of the goods for which the trademark registration is given within a particular class. Similarly, the monopoly over the mark of service would be restricted to only those services mentioned in the registration certificate.
  • The plaintiffs trademark registration certificate is only in respect of ” processed and  frozen meat products” failing in Class 29 of the Schedule 4 to the 2002 Rules. The mark in respect of processed or frozen meat product and not other goods.

The Court took the view that section 29(2) was to be given restricted interpretation otherwise in an action for infringement under section 29(2), the proprietor of trademark would be able to expand its statutory monopoly to a different classes of goods or even to service. Under Rule 22 classes 35 to 42 were exclusively service making it clear that Classes 1 to 34 were exclusively goods. Significantly, clause 42 also included “Providing of food and drink,” which as a corollary would mean that food items listed in classes 29 to 34 do not include any services in respect of food items and drinks. The court concluded it shows that goods and services were treated separately.

Association of Goods and service

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From the provisions, it is clear that for goods and service to be associated with each other and to be registered or to be deemed to be registered, the following requirements are essential:

  • the goods which must be sold or traded in and the services to be provided must be by the same business;
  • that the trademark in respect of associated goods and services must be registered in the name of the same proprietor ;
  • the use of the trademark in respect of the same goods or description of goods or the same services or description of services is identical to that which is registered in the name of the same proprietor and
  • the marks are either identical or there is such a close resemblance as is likely to deceive or cause confusion if used by a person other than the proprietor.

The court has laid down that the section 2(3) represents the only point of convergence  between goods and service in the 1999 Act. It represents the legislative intent that goods and services can be said to be associated only if the aforesaid provisions are satisfied.

Principles for determining similarity of goods and services

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 The issue of determination of similarity or dissimilarity of goods and service in all its facets would remain important. It may take some time before the principles are settled. The Bombay High Court discussed the guiding principles and factors that are relevant in considering whether there is similarity between goods/service ignoring its own remarks.

Strength of Earlier mark is another factor for determining similarity of goods

The distinctive character of the trademark, and in particular its reputation, must be taken into account when determining whether the similarity between the goods or service covered by the two marks is sufficient to give rise to the likelihood of confusion. In so finding the court was clearly following the decision that the likelihood of confusion must be assessed globally taking into account all relevant matters.

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