Selection of a proper brand name in the initial stages of the life cycle of a product plays a vital role in the success or failure of a product. It is advisable, to conduct a search in appropriate trademark classes (depending on the products or services provided) through the online records of the Trademarks Registry to determine whether a mark is likely to conflict with any pending or registered mark(s) in respect of the same or similar goods/services. Upon conducting the search, an owner is confronted with two scenarios. Firstly, the mark is available for adoption and use, or that the mark or a similar mark is registered or pending in the name of a third party proprietor. However, there may exist a third scenario, wherein the chosen mark or a part thereof forms a part of a prior registered/pending mark. This scenario often confuses brand owners as to whether or not they should adopt the mark in question.
The case of Shivam Hardware Store Vs. MS CENTURY WORLD (CW) is a reflection of this principle.
Both parties are involved in the business of hardware. Shivam commenced the business of manufacturing, supply and sale of modular kitchen accessories in the state of Delhi NCR in 2021 and applied for the registration of the trademark “
” in Class 6 and 21. These marks are presently pending for registration.
CW is the registered proprietor of the trademark “
”. CW filed a suit in the High Court of Delhi (Commercial Division), seeking permanent injunction against Shivam from infringing, passing off, inter alia¸ of its trademarks.
CW claimed that Shivam was using the mark/label/packaging/trade dress ‘SHIVAM CENTURY’, which was nearly identical and/or deceptively similar to its mark of ‘CP CENTURY’ and ‘CWPL CENTURY’.
Source - Judgement
CW further claimed that its trademark was distinctive and associated with its business on account of its long, continuous extensive and exclusive use and reputation. CW added that Shivam was engaged in the same business, the mark ‘SHIVAM CENTURY’ was likely to cause confusion in the mind of the customers, who were likely to be deceived into believing that Shivam’s goods actually emanated from CW.
Against this, Shivam stated that CW did not possess an exclusive and statutory right to use the word ‘CENTURY’ as the said term was a common dictionary word and used by various other companies/brands associated with modular kitchen ware. Shivam also contended that CW’s mark ‘CP CENTURY’ had to be read as a whole and that CW could not monopolise the word ‘CENTURY’. It also asserted that that the font and style used by the respective parties were different and therefore, the public at large could easily distinguish between the two companies and their trademarks and their products.
However the Court came to a prima facie conclusion that Shivam had infringed CW’s trademark and case of passing off was merited.
The Commercial Court’s order was based on the following reasons:
1. CW had a registration of trade mark 'CP Century'.
2. Shivam had only applied for a word mark 'Shivam Century' and is not registered proprietor.
3. Shivam's claim that word 'Century' was commonly associated with the trade of modular kitchenware, was not substantiated by any evidence
4. Shivam failed to show how it had coined the trade mark 'Shivam Century'.
5. Shivam also failed to show that it was a bona fide user of the trade mark
6. The use of the word Century by Shivam appeared to be dishonest.
The Court further held that, Century was prominent in CW’s mark and that, unwary customers could be easily misled into believing that the goods under the mark 'Shivam Century' originate from CW. The Court also held that although the word 'Century' has a dictionary meaning and used commonly in English language, yet since it was registered in the name of CW and CW was the prior user, CW had the right to protect its mark.
The Court granted an interim injunction in favour of CW , restraining Shivam from using the trade mark label /packaging / trade dress 'SHIVAM CENTURY' or any other deceptively similar mark.
Here it is important for us to understand the reasons/ grounds on which the injunction order was passed by the Court. If Shivam would have been able to prove that the word “Century” was in fact common to trade, the result would have been different. If Shivam would have been able to prove it had coined the word SHIVAM CENTURY from some legitimate source, the result would have been different. If Shivam would have been able to prove it was a bona fide user of the trade mark 'Shivam Century” for a long time, the result would have been different. However, Shivam failed to prove any of these factors and therefore it suffered an interim injunction.
Thereafter Shivam appealed to the Delhi High Court against the Order of the Commercial Court. The Delhi High Court observed Shivam’s defence to the action instituted by CW as two-fold.
1. CW could not claim monopoly in respect of the word ‘Century’;
2. The trademark used by Shivam was materially different from the trademarks of CW and therefore, there was no propensity to cause confusion.
The High Court observed that it was clear from the registered trademarks of the respondent: ‘CP CENTURY’ and, ‘CWPL CENTURY’ that the word ‘CENTURY’ was a prominent feature of the CW trademarks.
In addition, the word ‘CENTURY’ was also a prominent part of Shivam’s trademark (SHIVAM CENTURY).
The High Court noted that “although the word ‘SHIVAM’ is in a larger font, it can hardly be disputed that the word ‘CENTURY’ is a significant part of the said trademark”.
Therefore the High Court concurred with the decision of the Commercial Court and dismissed Shivam’s appeal by stating that the no interference with the interim injunction award was required.
Hence the answer to the Third Scenario i.e. One should not file an application for registration in case a mark chosen or a part thereof is a part of prior registered/ pending mark.
Possible exceptions
1. Common to Trade / Register- If the part that is common in the chosen mark and prior registered/pending marks, is common to the trade i.e. there are various entities in the said business, using the part in their trademarks name/tradename; or is common to the Register i.e there are various registered marks in the same class which have that part common in their trademarks. If the adopter can prove any of the above, he/she can go ahead with filing application for registration of the mark.
2. Honest Conception and Adoption- if the adopter can prove that he has coined/conceived or adopted the mark honestly, he/she can go ahead with filing an application for registration of the mark.
