Calcutta High Court Orders Cancellation of 'PROTIFIX' Trademark Due to Similarity with 'PROTINEX

Calcutta High Court Orders Cancellation of 'PROTIFIX' Trademark Due to Similarity with 'PROTINEX

Introduction

The Calcutta High Court has ruled in favor of Danone Asia Pacific Holdings Pte. Ltd. in a trademark dispute against Syed Jawed Mohsin & Another, ordering the cancellation of the trademark "PROTIFIX" bearing trademark no. 3592264 granted in Class 5.

Factual Background

Danone Asia Pacific Holdings Pte. Ltd., part of the Danone Group, claimed that the mark "PROTIFIX" is deceptively similar to their registered trademark "PROTINEX," which has been commercially used in India since 1957. The petitioner alleged that the respondents' mark was likely to cause confusion among consumers due to its similarity to the petitioner's mark.

Procedural Background

The court considered the petitioner's claim and found that the respondents failed to provide proof of actual use of the impugned mark. The court also noted that the respondents' mark is visually, structurally, and phonetically similar to the petitioner's mark.

Issues

1. Trademark Infringement: Whether the respondents' mark "PROTIFIX" infringes on Danone's registered trademark "PROTINEX".

2. Cancellation of Trademark: Whether the registration of the impugned mark should be cancelled due to non-use and similarity with the petitioner's mark.

Contentions of the Parties

Petitioner's Contentions:

• The respondents' mark "PROTIFIX" is deceptively similar to Danone's registered trademark "PROTINEX".
• The respondents failed to provide proof of actual use of the impugned mark.

Respondent's Contentions:

• There is no exclusivity in the word "Proti".
• The color scheme, get-up, and layout of their product are different from the petitioner's.

Reasoning & Analysis

The court found that the respondents' mark is likely to cause confusion among consumers due to its similarity to the petitioner's mark. The court also noted that the respondents failed to provide credible evidence of using the impugned mark. The court relied on the principles of trademark law, specifically sections 47 and 57 of the Trade Marks Act, 1999, which deal with the cancellation and rectification of trademarks.

Decision

The bench of Justice Ravi Krishan Kapur directed the cancellation of the registration granted in favor of the respondent and the removal of the mark "PROTIFIX" from the Register of Trade Marks. The court held that the continued existence of the impugned mark in the Register is bad in law and it is in public interest that the purity of the Register be maintained.

Implications

The court's decision highlights the importance of protecting trademarks and preventing consumer confusion. It also emphasizes the need for respondents to provide credible evidence of using their marks to justify their registration.

In this case the petitioner was represented by Mr. Soumya Ray Chowdhury, Ms. Susrea Mitra, Mr. Riyanshu Agarwal and Ms. Bhawna Tekriwal, Advocates. Meanwhile the respondent was represented by Mr. Shuvasish Sengupta, Mr. Balarko Sen, Mr. SK. Abumusa and Mr. Sariful Haque, Advocates.