brand trademark, trademark filling in India, trademark infringement

INFRINGMENT OF TRADEMARK – Case Study

Intellectual Property Rights- INFRINGMENT OF TRADEMARK 

In this era of increasing competition among brands and intellectual property laws becoming more stringent and difficult to comply with, infringement of these laws comes as a direct consequence. This article embodies a case study of such infringement with specific focus on an important part of the intellectual property rights, that is-Trademark.

Similarity in sound and phonetics and the way it is used is an important factor in determining whether the marks are confusingly similar.

Trademark infringement by phonetic and visual similarity is statutorily included in section 29(9) of the trademarks Act 1999 wherein it is stated that “Where the distinctive elements of a registered trademark consist of or include words, the trademark may be infringed by spoken use of the words as well as their visual representation and the reference in this section to the use of the mark shall be construed accordingly.”

In this view the legislature has stated such phonetic similarity as an infringing activity and has made clear that the pronunciation of a brand’s tagline (an important factor in the following case) is an establishing factor of potential infringement.

THE CASE STUDY 

Wipro Enterprises Limited vs Heinz India Pvt. Ltd on 10 June, 2015

The plaintiff (Wipro) had asserted that their trademark “BOLTS” which was created and adopted to sell their glucose chewy tablets had been infringed by the defendant (Heinz) which used a phonetically and visually similar mark name “VOLT” with a similar tagline.

The Hon’ble Madras High Court observed that since both the plaintiff and defendant used their trademarks i.e. BOLTS and VOLT respectively with their house names prefixed i.e. GLUCOVITA BOLTS and GLUCON-D VOLT respectively.

The court stated that the plaintiff cannot have exclusive right over the word BOLTS as it was generic and common in nature and both the plaintiff and defendant had used a prefix or a suffix to properly display the distinction.

The factual aspect of the case would be the determining factor for the judgement, the court reiterated. It also stated that a word may acquire a secondary meaning and could become an exclusive right by long, uninterrupted and continuous usage which was clearly not the case here as BOLTS was there in usage only for the past 2 years.

The court recapitulated that the trademark must be seen and judged on its entirety and completeness and not in parts or isolation which is why all arguments about identical colours used visual similarities etc. were dismissed. It must be viewed in an all round perspective and whether a word has a secondary meaning should be established only during the course of the hearing.

There were many similarities which were stated by the plaintiff including the price in perforated circle display and the thunder/flash of lightening symbol. The court held that many of the above similarities were found to be a common industrial practice and some of the symbols were generic to display and portray energy, stamina etc. Some of the similarities submitted by the plaintiff were even found to be dissimilar by the court.

The plaintiff used the tagline “INSTANT ENERGY, ANYTIME, ANYWHERE” whereas same for the defendant was “ENERGY OF GLUCON-D … ANYWHERE, ANYTIME”. The phrase “ANYTIME, ANYWHERE” was not used by the plaintiff in the trademark sense to denote origin/source of the product; rather it was used in a descriptive sense, the court observed.

Nothing was there to show as concrete evidence that the plaintiff had undertaken extensive advertising, was using the above tagline for a long period of time or the tagline was associated with the plaintiff’s product only or that the plaintiff had exclusive rights over its usage. After investigation it was also found that the tagline was printed only on the jar containing the products of the plaintiff and not on the cylindrical plastic wrapper covered tube which contained the chewing tablets.

The Hon’ble court hence rejected the senior counsel’s plea that the expression “INSTANT ENERGY. ANYTIME, ANYWHERE.” found on the label ought to be protected by way of application for temporary injunction.

CONCLUSION

In India, where culture is enriched by a diversity of languages and scripts, the courts have to consider how the rival marks are spelt and pronounced in languages in which they are commonly used. They have to assess the psyche of an Indian consumer and associated with that traits and qualities that underlie the spelling and pronunciation of words and then consider the usage of words and the manner in which it is similar to the pronunciation of the rival marks.

Whether the ordinary customer is likely to believe that the defendant’s mark is associated with the mark and the trading style of the plaintiff are the main test and not whether the consumer ends up buying the product of the defendant instead of the plaintiff because of such similarity in marks. The phonetic, visual and structural makeup of the words should be so strikingly similar as to lead to a likelihood of deception.

Section 29(2) of the Trade Marks Act 1999 recognizes the concept of likelihood of association wherein the consumer is likely to believe that the defendants’ mark has an association/affiliation/connection with the plaintiff. Thus in Section 29(2) read with section 29(9), the legislature has included the spoken use of the words also; therefore, it is evident that the pronunciation of the trademark is clearly a determining criterion in ascertaining infringement.

How Coal Gasification Power Plants Work | Department of Energy
coal gasification, MARKET ENTRY strategy, PATENT STRATEGY, Research analysis, Startup India Strategist, venture capital financing

Gasification of coal

Gasification of coal to methanol

India is on the verge of a huge transformation from a developing country to a developed country and energy is considered as one of the key requirements for economic development of a country.

As India is advancing on its path of development, its energy demand is expected to rise at a Compound Annual Growth Rate (CAGR) of 3.5% till 2040.

Liquified Petroleum Gas (LPG) is used in India as the cooking fuel. As per the estimates of International Energy Agency (IEA), India houses 800 million people who do not have access to clean cooking fuel.

In view of the above , Pradhan Mantri Ujjwala Yojana (PMUY) was launched by the government of India in  May, 2016 under which 5 Cr LPG connections are distributed to households which are Below Poverty Line (BPL).

According to the recent data available, India imports a million tonnes of LPG (60% of total LPG requirements) every month to meet the increased demands of LPG which costs billions of dollars.

India has  large coal reserves which can be used for the production of methanol using coal as a feedstock and can play an important role in order to contain the rising imports and energy security of India.

Government of India is also promoting the gasification of coal to methanol that can be used as a cooking fuel.

The main aim to produce methanol using coal is to decrease the dependence of India on Middle Eastern producers like Saudi Aramco, Qatar’s Tasweeq, Abu Dhabi National Oil Co. and Kuwait Petroleum Corp. and save billions of dollars which are spent on the import of LPG.

China is the leading producer of methanol in the World that accounts for the 55% of the global methanol production. China produces 70% of its methanol from coal as it has the third largest coal reserves in the World.

India has the 5th largest coal reserves in the World and thus can contribute significantly to methanol production.

According to a research at Tech Corp International Strategist (TCIS), India, we researched patented technologies to produce methanol from coal . US patent number US 4430096 filed on 8 March 1982, pertains to a method of production of methanol using a slagging gasifier using solid carbonaceous material like coal.

Gasifier contains a gasification chamber having an upper and a lower wall inlet. Upper wall inlet for feeding coal and a lower wall inlet for introducing gas in the chamber.

Coal is heated and converted to ash and the gases released are mixed with water to form a gaseous quencher output comprising hydrogen, carbon monoxide and water. A catalyst converts hydrogen and carbon monoxide into methanol. This method converts coal almost exclusively to methanol and was given by Conoco Inc. (Wilmington, DE).

US patent number US 20020159929 filed on 29 Feb 2000. In this method, Methanol is synthesized from a gas produced through gasification of biomass serving as a raw material, making use of a biomass feeding means for feeding biomass into a furnace main body and, located above the biomass feeding means, combustion- oxidizing- agent- feeding means for feeding into the furnace main body a combustion-oxidizing agent containing oxygen or a mixture of oxygen and steam.This method was given by Mitsubishi Heavy Industries, Ltd. (Tokyo, JP).

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