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The Curve Can Stay: Bombay High Court Shoots Down Infringement Charge

Source: Grill IP patents news

Mumbai-Court-InfringementLate June, Bombay’s High Court dismissed a trademark infringement suit in Reliance Industries Ltd v. Concord Enviro Systems Private Limited. Reliance, an Indian conglomerate holding company, levied the charge of infringement over similarities between Reliance’s registered ‘R logo’ and the defendant’s industrial wastewater and solids recycling processing mark. The decision clarifies the standards by which marks are compared in infringement cases.

The case centred on whether the defendant’s mark was deceptively similar and whether Concord intended to pass off the Reliance’s mark as its own. The plaintiff has been rendering services under their logo since 1956, contending that the mark is a well-established emblem of the company’s operations. In contrast, the waste recycler began using its mark forty-three years after its rival.   

Reliance’s suit rested on three core arguments. The first claim concerned the defendant’s use of the impugned logo, one with deceptive similarity to the ‘R logo’ both structurally and visually. Second, Reliance resisted any side-by-side comparison of the marks in question, reasoning that potential customers are unlikely to be presented with both marks simultaneously. Rather, trademarks are remembered through prominent features and general impressions. The significant detail on which this case hinged was the curve of the ‘R logo.’ If Concord’s impugned mark shares Reliance’s curve, a case for infringement can be made under the 1999 Trademark Act’s sections 28 and 29 (4). The plaintiff further contended that the impugned mark was taken entirely from its logo, and simply reversing the logo’s essential feature (the curve) does not have any bearing on its substantial reproduction.

Concord countered that the plaintiff’s claims were baseless, with no similarities existing between the rival marks. According to the defendant, key differences existed with respect to shape, with its mark resembling a “water droplet” and Reliance’s mark taking on a circular orientation. Further, breaking up the rival logos and analyzing each aspect separately was asserted as legally impermissible by the defense. Significant dissimilarities between the marks should not be eschewed for the sake of launching an infringement claim. Rather, Concord’s response indicated that the marks should be assessed as a whole. Any consideration of infringement should look to the ‘idea’ conveyed by the marks in question. Since the defendant’s mark conveys the idea of a “droplet” relating to Concord’s role in environmental conservation, the antithesis of the Plaintiff’s logo, no malicious intent existed on the part of the accused.

In coming to a decision, the Court relied on Cadila Healthcare Ltd. vs. Cadila Pharmaceuticals Ltd, which enumerated factors and circumstances relevant to mark comparison in infringement cases. These factors include the nature of the marks, their degree of resemblance, and the class of purchasers likely to buy the goods or partake in the services of the parties in question. Through this framework, the Justices agreed with the plaintiff with regard to side-by-side mark comparisons, determining they are unwarranted in this case, since purchasers are unlikely to encounter both marks at the same time. However, the Court ultimately determined that no similarities of any substance exist between the plaintiff’s logo and the defendant’s curve. After giving weight to each feature of the marks, in essence, a de facto analysis of the marks as a whole, Reliance’s suit was dismissed. The essential feature of Concord’s mark, its droplet structure, conveys an idea ex-facie entirely distinct from its rival. Without any chance of confusion between the marks or mal-intent on behalf of the defendant, Reliance is subject to no relief. This case exposes the precarious nature of launching infringement suits purporting deceptive similarities without instances of consumer confusion or evidence of intent to co-opt or misconstrue the relationship between rival parties. For Concord, the curve can stay.

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