Deceptive Similarity of Trade Marks: National Chemicals and Colour Co. v. Reckitt and Colman: Bombay High Court

Introduction

The case of National Chemicals And Colour Co. And Others v. Reckitt And Colman Of India Limited And Another is a significant judgment delivered by the Bombay High Court on April 12, 1990. This legal dispute revolves around the registration and potential infringement of trade marks within the manufacturing and selling sectors of coloring materials. The primary parties involved are the appellants, National Chemicals and Colour Company and its partners, and the first respondents, Reckitt and Colman of India Limited. The core issue pertains to the alleged deceptive similarity between the trade marks of the two companies, which could potentially lead to consumer confusion in the marketplace.

Summary of the Judgment

National Chemicals and Colour Company sought to register a new trade mark featuring two birds sitting on a twig with the words "Bul Bul." Despite prior registration of their word mark "Bul Bul" without any device, their application for the picture mark was opposed by Reckitt and Colman, who held existing trade marks with similar bird imagery. The Deputy Registrar initially dismissed the opposition, allowing the registration. However, upon appeal, the Bombay High Court reversed this decision, finding the two trade marks deceptively similar and likely to cause confusion among consumers. The Court further dismissed the appellants' claim of honest concurrent use, thereby preventing the registration of the contested trade mark.

Analysis

Precedents Cited

The judgment extensively references several pivotal cases that set the foundation for assessing trade mark similarity and consumer confusion:

Danish Bacon Co. Ltd. v. John Morrell and Co. Ltd. (51 RPC 148): Emphasized that even with differences in trade marks, the likelihood of consumer confusion remains if the overall impression is similar.
James Chadwick & Bros. Ltd. v. The National Sewing Thread Co. Ltd. (AIR 1951 Bom 147): Highlighted that even minor variations in trade mark elements do not mitigate the risk of deception if the marks create a similar overall impression.
La Societe Anonyme Dubonnet v. Brods (32 RPC 241): Illustrated that distinct overall designs and postures in trade marks can eliminate the possibility of confusion.
F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Private Ltd. (AIR 1970 SC 2062): Established a comprehensive test for deceptive similarity, focusing on the totality of the mark's appearance, sound, and associated goods.
Pianotist Co. Ltd. case (1906) 23 RPC 774: Formulated a multi-faceted test considering visual and phonetic similarities, nature of goods, and target consumers to assess potential confusion.

These precedents collectively underscore the judiciary's intent to prevent consumer deception and maintain clear distinctions between competing brands.

Legal Reasoning

The Bombay High Court applied a holistic approach to evaluate the similarity between the appellant's and respondent's trade marks. Key aspects of the court’s legal reasoning include:

Overall Impression: The Court emphasized that trade marks should be assessed based on the overall impression they leave on the average consumer, rather than on isolated elements.
Visual Similarity: Both marks featured birds sitting on a twig, with the appellant's mark depicting two birds and the respondent's a single bird. The Court found that despite the numerical difference, the visual similarity was substantial enough to cause confusion.
Word Elements: Although the words "Bul Bul" and "Robin" were different, the Court determined that they did not significantly alter the overall impression of the marks.
Likelihood of Confusion: Considering the similarity in design and the same class of goods (colours), the Court concluded that consumers could be misled into associating the appellant's goods with those of the respondent.
Honest Concurrent Use: The appellants failed to provide sufficient evidence of honest concurrent use of the controversial trade mark, undermining their defense under Section 12(3) of the Trade and Merchandise Marks Act, 1958.

The Court meticulously balanced the visual and verbal elements of the trade marks, prioritizing consumer perception and the potential for market confusion over the mere presence of different words.

Impact

This judgment has significant implications for the landscape of trade mark registration and enforcement in India:

Stringent Assessment of Similarity: Trade marks are scrutinized not just on individual components but on their collective impression, ensuring that superficial differences do not mask underlying similarities that could deceive consumers.
Emphasis on Consumer Perception: The decision reinforces the principle that the ultimate test for trade mark similarity is the perception of the average consumer, thereby prioritizing market realities over technical distinctions.
Clarification on Honest Concurrent Use: The ruling clarifies that mere use without substantial evidence to demonstrate concurrent and honest usage does not suffice for defense under Section 12(3).
Strengthening of Trade Mark Protection: By upholding the prohibition against deceptively similar marks, the judgment fortifies the protective mechanisms available to established brands against potential infringement.

Future cases will reference this judgment to navigate the complexities of trade mark similarity, ensuring that consumer interests and brand distinctiveness are adequately safeguarded.

Complex Concepts Simplified

Understanding trade mark disputes involves navigating several legal concepts that can be intricate. Here's a breakdown of key terms utilized in the judgment:

Trade Mark: A sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. It can be a word, logo, symbol, or a combination thereof.
Deceptively Similar: Marks that are so alike in appearance, sound, or meaning that they can mislead consumers into believing they originate from the same source.
Honest Concurrent Use: A defense where the applicant demonstrates that they have been using the trade mark legitimately and simultaneously with another's prior use without any intent to deceive.
Overall Impression: The cumulative effect of a trade mark's elements (visual, phonetic, etc.) as perceived by the average consumer.
Schedule IV (Trade and Merchandise Marks Rules, 1959): A classification system for goods under which trade marks are registered, ensuring systematic categorization.

These concepts are pivotal in determining the validity and protection scope of trade marks within the legal framework.

Conclusion

The Bombay High Court's decision in National Chemicals And Colour Co. And Others v. Reckitt And Colman Of India Limited And Another underscores the judiciary's commitment to preserving the integrity of trade marks and preventing consumer deception. By rejecting the appellant's trade mark on the grounds of deceptive similarity, the Court reinforced the importance of clear and distinct branding in the marketplace. This judgment serves as a critical reference point for future trade mark disputes, emphasizing a comprehensive evaluation of overall impression and consumer perception over isolated differences. Moreover, the dismissal of the honest concurrent use defense without substantial evidence sets a stringent standard for applicants seeking trade mark registration in contested scenarios. Overall, this case contributes significantly to the body of trade mark law, promoting fair competition and protecting both businesses and consumers from confusion-inducing practices.

Deceptive Similarity of Trade Marks: National Chemicals and Colour Co. v. Reckitt and Colman