Research On Objection Notice

1) A MARK CANNOT HAVE A MONOPOLY OVER THE SAME CLASS OF MARK.
ADDISON & COMPANY LIMITED VS. ADDISON CABLE PVT. LTD.

MANU/TN/6353/2023 The court referenced the judgment in M/s. Nandhini Deluxe vs. M/s.
Karnataka Cooperative Milk Producers Limited to support its reasoning. In the Nandhini
Duplex case, the Supreme Court dealt with a trademark dispute where the respondent had
registered the mark "NANDINI" and the appellant adopted the mark "NANDHINI" for
different goods. The Supreme Court held that the use of "NANDHINI" for different goods
would not be detrimental to the distinctive character or repute of the "NANDINI" mark and
noted the concurrent use of the trademark by both parties.
The High Court of Madras applied similar reasoning in the present case, noting that the
plaintiff and defendant were dealing in different types of goods (metal products versus
electrical wires and cables) and had used their respective marks concurrently for many years
without substantial confusion (Addison_and_Company_Lim…).
This reasoning was significant in deciding that the plaintiff was not entitled to an injunction
against the defendant for using the "ADDISON" trademark, as the plaintiff had acquiesced to
the defendant's use of the mark over many years.
Britannia Industries Ltd. v. ITC Ltd. and Others, 2021 SCC OnLine Del 1489, wherein the
Court has emphasised and ingeminated that while examining the aspect of deception or
confusion, Court has to identify the precise consumer base. It is also observed that there is no
doubt that confusion or deceptive similarity is a sine qua non of an action of passing off, but
Court is not expected to ferret out points of dissimilarity between two marks and has to only
generally assess whether there is a deceptive extent of similarity, irrespective of individual
dissimilar features. It is equally undisputed that the test is of a person of average intelligence
and imperfect recollection and applying the test, this Court at this stage, is unable to gloss
over the differences that Defendants have brought forth between the two rival marks and hold
that a case of passing off is made out by the Plaintiff.
In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, (1965) 1

SCR 737, the Supreme Court has held that in the case of passing off, unlike in the case of
infringement, the Defendant may escape liability if he can show that the added matter is
sufficient to distinguish his goods from those of the Plaintiff. Relevant paragraph is as
follows:
“28. The other ground of objection that the findings are inconsistent really proceeds on an
error in appreciating the basic differences between the causes of action and right to relief in
suits for passing off and for infringement of a registered trade mark and in equating the
essentials of a passing off action with those in respect of an action complaining of an
infringement of a registered trade mark. We have already pointed out that the suit by the
respondent complained both of an invasion of a statutory right under Section 21 in respect of
a registered trade mark and also of a passing off by the use of the same mark. The finding in
favour of the appellant to which the learned counsel drew our attention was based upon
dissimilarity of the packing in which the goods of the two parties were vended, the difference
in the physical appearance of the two packets by reason of the variation in the colour and
other features and their general get-up together with the circumstance that the name and
address of the manufactory of the appellant was prominently displayed on his packets and
these features were all set out for negativing the respondent’s claim that the appellant had
passed off his goods as those of the respondent. These matters which are of the essence of the
cause of action for relief on the ground of passing off play but a limited role in an action for
infringement of a registered trade mark by the registered proprietor who has a statutory right
to that mark and who has a statutory remedy for the event of the use by another of that mark
or a colourable imitation thereof. While an action for passing off is a Common Law remedy
being in substance an action for deceit, that is, a passing off by a person of his own goods as
those of another, that is not the gist of an action for infringement. The action for infringement
is a statutory remedy conferred on the registered proprietor of a registered trade mark for the
vindication of the exclusive right to the use of the trade mark in relation to those goods”
(Vide Section 21 of the Act). The use by the defendant of the trade mark of the plaintiff is not
essential in an action for passing off, but is the sine qua non in the case of an action for
infringement. No doubt, where the evidence in respect of passing off consists merely of the
colourable use of a registered trade mark, the essential features of both the actions might
coincide in the sense that what would be a colourable imitation of a trade mark in a passing
off action would also be such in an action for infringement of the same trade mark. But there
the correspondence between the two ceases. In an action for infringement, the plaintiff must,
no doubt, make out that the use of the defendant’s mark is likely to deceive, but where the
similarity between the plaintiff’s and the defendant’s mark is so close either visually,
phonetically or otherwise and the court reaches the conclusion that there is an imitation, no
further evidence is required to establish that the plaintiff’s rights are violated. Expressed in
another way, if the essential features of the trade mark of the plaintiff have been adopted by
the defendant, the fact that the get-up, packing and other writing or marks on the goods or on
the packets in which he offers his goods for sale show marked differences, or indicate clearly
a trade origin different from that of the registered proprietor of the mark would be
immaterial; whereas in the case of passing off, the defendant may escape liability if he can
show that the added matter is sufficient to distinguish his goods from those of the plaintiff.”
2) MARK TO BE CONSIDERED AS WHOLE, NOT IN PARTS/ANTI-DISSECTION

RULE TO BE APPLIED
AIR 1963 MADRAS 12(V 50 C 4) and Glaxo Group Limited & Ors. Vs. Vipin Gupta & Ors.
Cited as 2006(33) PTC 145 (Del.).
A. CARDINAL PRINCIPLE THAT THE MARK HAS TO BE SEEN AS A WHOLE Further

it is established principle of the trade mark law that while comparing the infringement, the
trade mark must be seen as a whole and the Court will only follow the exceptional cases
wherein the trade mark comprises of generic element and distinctive element which includes
part of the name of the salt or ailment and try to gauge the similarity to the other part of the
trademark just like in the case of MERONUM VS. MEROMOR wherein the Court dissected
MERO and tried to find similarity in the NUM wherein the Court held that they are not
similar. Likewise, in the case of TEMODAR wherein the active ingredient was
TEMOZOLOMIDE. The Court dissected between TAR and DAR which they were unable to
find. Be that it may as an exception to that the Court will ordinarily follow the cardinal
principle that the mark has to be seen as a whole and will not deviate from this principle
unless the circumstances regarding name of ailment or salt at present. Reliance in this regard
placed on Corn Products Refining Co. Appellants Vs. Shangrila Food Products Limited,
Respondents cited as AIR 1960 SC 142(V 47 C 25). Thus, on the basis of documents placed
on the record it can be conveniently said that in case the mark as a whole is seen then there
should be no difficulty in holding that the produce of defendant is deceptively poor imitation
of the plaintiff's product.
Bench in Vasundhra Jewellers Pvt. Ltd. v. Kirat Vinodbhai Jadvani and Another, 2022 SCC
OnLine Del 3370, relying on an earlier judgment of the Division Bench in M/s. South India
Beverages Pvt. Ltd. v. General Mills Marketing Inc. & Anr., 2014 SCC OnLine Del 1953,
wherein the Court while explaining the ‘anti-dissection rule’ reiterated that conflicting
composite marks are to be compared by looking at them as a whole, rather than breaking the
marks into their component parts for comparison. It was held that while a trademark is to be
considered in entirety, yet it is impermissible to accord more or less importance or
‘dominance’ to a particular portion or element of a mark in cases of composite marks.
B. SPLITTING OF THE TRADE MARK IN THE CASE OF TRADEMARK

INFRINGEMENT IS IMPERMISSIBLE EXCEPT IN CASES WHERE THE TRADE
MARK HAS ANY SIGNIFICANCE PERTAINING TO THE AILMENT IN QUESTION OR
THE COMPOUND OR THE BASIC ELEMENT IN QUESTION. (we can add this one as
one of the prepositions, but in most cases, as it is mostly related to the medicines and its
composition, additionally the public interest)

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1) A MARK CANNOT HAVE A MONOPOLY OVER THE SAME CLASS OF MARK.

ADDISON & COMPANY LIMITED VS. ADDISON CABLE PVT. LTD.

In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, (1965) 1

2) MARK TO BE CONSIDERED AS WHOLE, NOT IN PARTS/ANTI-DISSECTION

A. CARDINAL PRINCIPLE THAT THE MARK HAS TO BE SEEN AS A WHOLE Further

B. SPLITTING OF THE TRADE MARK IN THE CASE OF TRADEMARK

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