Deceptive Similarity: Bombay High Court Restrains Use of “SHREE RAM BANDHU” Mark

Deceptive Similarity: Bombay High Court Restrains Use of “SHREE RAM BANDHU” Mark

Introduction

The Bombay High Court has granted interim relief to Empire Spices and Foods Ltd. in a trademark infringement case against Sanjay Bhimraoji Deshmukh, restraining the defendant from using the impugned mark "SHREE RAM BANDHU" due to its deceptive similarity with the plaintiff's registered trademark "RAM BANDHU".

Factual Background

Empire Spices and Foods Ltd. has been using the trademark "RAM BANDHU" since 1972 for spices, papad, pickle, and other food products. The company has a significant market presence and has claimed a turnover exceeding Rs 250 crore. The defendant, Sanjay Bhimraoji Deshmukh, started using the mark "SHREE RAM BANDHU" for similar products, which led to the plaintiff filing a suit for trademark infringement and passing off. The plaintiff also claimed ownership over the associated artistic copyright for the mark “RAM BANDHU” in both Hindi and English, created in 2002 and endorsed by public figures.

Procedural Background

The plaintiff filed an interim application seeking an injunction against the defendant. The court heard the matter and granted interim relief to the plaintiff, restraining the defendant from using the impugned mark. The Court granted a stay of the order for four weeks.

Contentions of the Parties

Plaintiff's Contentions: The plaintiff contended that the defendant's mark "SHREE RAM BANDHU" is deceptively similar to its registered trademark "RAM BANDHU" and is likely to cause confusion among consumers. The plaintiff also alleged that the defendant had copied the artistic work associated with the "RAM BANDHU" mark. It further argued that the respondent’s use of the words “RAM” and “BANDHU” indicated dishonest adoption and attempted to ride on the goodwill of the registered mark.

Defendant's Contentions: The defendant argued that the use of the label was honest and bona fide, as he was an ardent devotee of Lord Ram. He also claimed that the plaintiff could not claim exclusivity over the name of a deity and that the delay in filing the suit militated against the grant of interim relief. The defendant further submitted that his mark was a device mark and not a word mark, and relied on Section 17 of the Trade Marks Act, 1999, to argue that the plaintiff could not claim exclusivity over the individual words “RAM” and “BANDHU.”

Court’s Observations

The court observed that the defendant's mark, with the prefix "SHREE" added to the words "RAM BANDHU", is deceptively similar to the plaintiff's registered device mark. The court noted that the adoption of an identical or deceptively similar trademark indicates a dishonest intention on the part of the defendant. The court emphasized that even though “SHREE” was added, the overall structure, visual presentation, and phonetic similarity made the marks confusingly similar.

The Court also noted that the records of the Trademark Registry prima facie established the plaintiff as the registered proprietor of the mark.

Reasoning & Analysis

The Single Judge Bench of Justice Sharmila U. Deshmukh held that the plaintiff has established a prima facie case of infringement and is entitled to protect its essential features. The court emphasized that the combination of the two words "RAM" and "BANDHU" is a coined word and arbitrary adaptation, giving rise to a claim for exclusivity. The Court ruled that while no exclusivity could be claimed over the name of a deity alone, when combined with the suffix “BANDHU”, it created a coined mark devoid of religious significance and became eligible for protection.

The Court also relied on the principle laid down in Pidlite Industries Ltd. v. Jubilant Agri and Consumer Products Ltd., 2014 SCC OnLine Bom 50, that registration of a composite mark confers monopoly over the mark as a whole and not over each part. Further, referring to Bhole Baba Milk Food Industries Ltd. v. Parul Food Specialities (P) Ltd., 2011 SCC OnLine Del 4422, the Court noted that while individual words like “RAM” and “BANDHU” may be common, their combination “RAM BANDHU” is unique and therefore protectable.

The Court also dismissed the defense of delay and acquiescence, holding that mere delay in taking action, without any positive act of encouragement, does not amount to acquiescence in cases of trademark infringement.

The Court rejected the distinction attempted by the defendant between device mark and word mark, clarifying that under Section 17 of the Trade Marks Act, the plaintiff is still entitled to protection of the essential and prominent features of the mark “RAM BANDHU” as a whole.

Implications

The court's decision highlights the importance of protecting trademarks and the need for competitors to avoid creating confusion among consumers. It also reinforces that even when using religious names, businesses must ensure their marks are not deceptively similar to registered trademarks.

Outcome

The court granted interim relief to the plaintiff, restraining the defendant from using the impugned mark "SHREE RAM BANDHU" and any other mark that is identical or deceptively similar to the plaintiff's mark "RAM BANDHU". The interim order was granted till the final disposal of the suit, and the court allowed a four-week stay on the operation of the injunction.

In this case, the plaintiff was represented by Mr. Pranshul Dube and Ms. Asma Nadaf, Advocates. Meanwhile, the respondent was represented by Mr. Amit Jamsandekar, Ms. Archita Gharat, Mr. Vighnesh Kamat, and Mr. Shoeb Parkar, Advocates.