Blog

CITATION: 2023 SCC OnLine Del 5154

DECIDED ON 22-08-2023]

Background:

The case involves two parties, the petitioner and Respondent 1, who are in dispute over the trademark “HARPIC DRAINXPERT.” The petitioner filed petitions under Section 57 of the Trade Marks Act, 1999, seeking to rectify the Register of Trademarks by removing this registered mark from Classes 3 and 5. The petitioner’s argument is centered on Section 11(1)(b) and Section 11(10)(ii) of the Trade Marks Act. They claim that the mark “HARPIC DRAINXPERT” is similar to their earlier trademarks, and there’s a likelihood of confusion.

Analysis:

1. Section 11(1)(b): The judgment begins by addressing Section 11(1)(b) of the Trade Marks Act, which sets out three conditions for a trademark to be ineligible for registration:

·       The trademark should be similar to an earlier trademark.

·       The goods or services covered by both trademarks should be identical or similar.

·       As a consequence of the above conditions, there must exist a likelihood of confusion among the public.

2. Earlier Trademarks: The Court establishes that the petitioner’s trademarks pre-date the applications of Respondent 1 for the impugned registrations, making them “earlier trademarks.”

3. Similarity of Goods/Services: The next consideration is whether the goods or services covered by the rival marks are similar. The petitioner’s trademarks covered products used for disinfecting, cleaning, and related services, which are arguably similar to the goods or services covered by the impugned “HARPIC DRAINXPERT” mark.

4. Similarity of Marks: However, the Court emphasizes that the critical factor is the similarity between the marks themselves. It notes that the impugned mark “HARPIC DRAINXPERT” is significantly different from the petitioner’s marks. The presence of “XPERT” in both marks alone does not establish confusing similarity. The test for similarity is whether the marks are likely to confuse consumers in the relevant market.

5. Manner of Use: The petitioner argued that the manner in which Respondent 1 used the mark could create confusion. However, the Court dismisses this argument, stating that the manner of use is irrelevant to a rectification petition, as it focuses on circumstances at the time of registration.

6. Bad Faith (Section 11(10)(ii)): The petitioner also invoked Section 11(10)(ii) related to bad faith, claiming that Respondent 1 acted in bad faith when adopting the mark “HARPIC DRAINXPERT.” The Court explains that “bad faith” is a matter of fact and requires evidence. In this case, there was no evidence to suggest bad faith. The use of “XPERT” by Respondent 1 was not indicative of bad faith.

Conclusion:

The Court ultimately finds that the petitioner has not provided sufficient grounds to invalidate the registrations of the impugned mark “HARPIC DRAINXPERT.” It emphasizes that the test for similarity must consider the likelihood of confusion among consumers in the relevant market. Since the marks are not confusingly similar, the petitions are dismissed as devoid of merit.

BRIEF SUMMARY

In this case, the petitioner filed petitions under Section 57 of the Trade Marks Act, 1999, seeking rectification of the Register of Trademarks by removing the word mark “HARPIC DRAINXPERT,” which was registered in favor of Respondent 1 in Classes 3 and 5 under Registration No. 5258906 and 5258907, respectively. Registration No. 5258906 covered cleaning, polishing, and drain cleaning preparations, while Registration No. 5258907 covered disinfectants and related products.

The petitioner’s challenge was based on Section 11(1)(b) and Section 11(10)(ii) of the Trade Marks Act, claiming that the impugned mark “HARPIC DRAINXPERT” was similar to the petitioner’s earlier trademarks, and they were used for similar goods or services, leading to a likelihood of confusion.

The Court examined the case and highlighted that Section 11(1)(b) requires the satisfaction of three conditions for a trademark to be ineligible for registration: (i) similarity to an earlier trademark, (ii) identity or similarity of goods or services, and (iii) a likelihood of confusion among the public. The petitioner’s trademarks were earlier marks, and the goods were arguably similar.

However, the Court found that the crucial issue was the similarity between the marks themselves. It pointed out that the impugned mark “HARPIC DRAINXPERT” was significantly different from the petitioner’s marks, and the mere presence of “XPERT” in both marks did not establish confusing similarity. The Court emphasized that the test for similarity was whether the marks were likely to confuse consumers in the relevant market.

The Court also rejected the petitioner’s argument regarding the manner in which Respondent 1 used the mark, stating that it was irrelevant to a rectification petition, which focused on the circumstances at the time of registration.

Regarding Section 11(10)(ii) related to bad faith, the Court noted that bad faith was a matter of fact and had not been established in this case. The use of “XPERT” by Respondent 1 was not evidence of bad faith.

In conclusion, the Court found that the petitioner had not provided sufficient grounds for invalidating the registrations of the impugned mark “HARPIC DRAINXPERT.” Therefore, the petitions were dismissed as devoid of merit.