A recent decision by the Karnataka High Court involved a question about trade names and trademarks, wherein the trial court had confused the two concepts together and passed an injunction on the same basis. The two marks are 'Matruveda' and Matru Ayurveda'. The Court noted that while the tradenames may be similar and are a component of the respective trademarks, the matter to be considered was trademark infringement and not trade name infringement.
Finalising a name for a company is often a strenuous task, with personal preferences clashing with market perception analysis, existing brand names, statutory requirements, etc. Selecting a name for your product is generally further simplified when one believes in creating a brand of products under one company, thereby utilising the company's name in the name of the product.
In most instances, where companies tend to use the same name for both their trade name as well as their trademark, the line tends to be blurred when it comes to an infringement action, as is the case in N Dinesh Kumar v. Shweta Khandelwal.1
To understand the question that arose in the suit, it would be wise to understand how the law views these two concepts differently.
The Distinction between Trade Name and Trademark
A trade name is quite simply the name the company trades in or does business in, and in most cases this is the corporate name of the company, whereas the trademark is how the company wishes to establish itself in the market as, and how it would like the consumer to identify its products as such. At times, the trade name can be incorporated within the trademark, but when companies look to diversify into different products, the trademark may exist de hors the trade name.
The more important distinction lies in how the law treats the two concepts, and that brings us to the Trademark Act, 1999 ("the Act"). Infringement actions for a registered trademark lie under Sections 29(1), 29(2) and 29(4), with sub-sections (1) and (2) pertaining to similar goods or services and sub-section (4) pertaining to dissimilar goods or services. The standards for evaluating an infringement action in such cases involves evaluating the similarity between the marks, as well as the similarity between the goods or services2. In the latter case, the evaluation utilizes the reputation that the registered trademark has garnered, as an evaluation of the similarity of goods or services would not render a result.
However, Section 29(5) is slightly more nuanced, in the sense that the range of infringement is narrower. A registered trademark is infringed when an unauthorized user uses the registered trademark as his trade name or part of his trade name, or as his business concern or part of his business concern. In such cases, the standard for evaluation of an infringement action involves identifying the part of the trade name containing the registered trademark, as well as that the infringer is dealing in the same goods or services that the mark is registered in3.
The line of differentiation here is that there is no question about similarity or dissimilarity of goods or services. An action under Section 29(5) requires that the alleged infringer deals only in those goods or services for which the registered trademark is registered in.
The Facts of the Case
The facts of the Karnataka High Court decision merit a summary. The suit was filed by the Respondent, the proprietor of the mark Matru Ayurveda and trading as Matru Herbals, against the Appellant, the proprietor of the mark Matruveda and trading as Matruveda Herbals. The Respondent's device, Matru Ayurveda (TM Appn. No. 3063975), has been registered in Class 3 for a number of herbal cosmetics, while the Appellant's device, Matruveda (TM Appn. No. 3806687), has been registered in Class 5 for herbal supplements.
The suit at hand involved a claim that the trademark of the Appellant was so deceptively similar that despite having been established earlier, the sales of the Respondent have been impacted by the actions of the Appellant. The trial court, upon an application by the Respondent, granted an order of temporary injunction against the Appellant restraining the Appellant's use of the mark from infringing the trademark of the Respondent, as well as quite curiously the trade name of the Respondent.
While the trade name may be included within the registered trademark, what Section 29(5) clearly talks about is infringement of a trademark by a trade name, and not the infringement of a trade name. In the present case, the Respondent's claims have been focused on the loss of business owing to the products sold by the Appellant, and has never questioned the aspect of the Appellant trading in a name incorporating the trademark of the Respondent. Which is what the High Court took note of in its judgment.
The Holding of the High Court
The High Court took special notice of the portion of the judgement where the trial court states "On perusal of the tradename of the plaintiff and defendant, it appears that both the marks are phonetically and deceptively similar", and pointed out that in this case, as the trade names are contained within the composite mark, the question falls to infringement of the trademark, which therefore involves the evaluation from the eyes of a 'quintessential common man' having the 'wisdom of Solomon' and the 'trained eyes of Sherlock Holmes'.
The High Court also observed that where an element appears to be used by other proprietors dealing in other products in the market, the evaluation of the device marks must then turn to the unique features of the respective device marks, to ascertain whether those unique features then become deceptively similar, as purchasers would turn to those unique features to distinguish the mark from others. This principle is dependent on the existence of such a commonality in the market being proved to the satisfaction of the court. The Court thus set aside the order of temporary injunction and ordered a fresh hearing of the matter by the trial court.
Conclusion
What thus stands is but the foundation of device marks and their essential characteristics. As the courts have stated previously, device marks carry the weight of their registration in their appearance, as an average common man having an imperfect recollection looks to the overall design and scheme of the mark when differentiating between products.
The question of trade names thus does not arise when the action lies with respect to an infringement of the mark as a whole, and in this case, it would seem that the requirements of Section 29(5) are not attracted, owing to the registration of the marks in different classes, and dealing with different products.
Footnotes
1. M. F. A. No. 790/2021 (Kar)
2. Parle Products (P) Ltd. v. J.P. and Co., (1972) 1 SCC 618; M/s Biofarma v. Sanjay Medical Stores, 1997 PTC (17) 355
3. Cipla Limited v. Cipla Industries Private Limited, 2016 (67) PTC 509 (Bom)
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