To safeguard the rights to their inventions, intellectual property inventors are granted certain intellectual property rights, or IPR, one such right is protection of trademarks. Unlike other intellectual property, the convenience of the public is the primary goal of giving one company exclusive rights to a recognizable brand or symbol. A trademark is any word, phrase, piece of art, or fashion that identifies a business in the marketplace and helps it stand out from rivals, thus, protecting customers from being duped by the variety of market participants.
Recently, a division bench of Justices C Hari Shankar and Ajay Digpaul, quashed an impugned order vacating a previous interim injunction granted in the case of KRBL Limited v. Praveen Kumar Buyyani & Ors and restored the ad interim order dated 09-10-2020.KRBL Limited (Appellant) an Indian company regarded as the largest rice miller in the world, jumped into the pool of trademark infringement litigation by filing a suit against Praveen Kumar Buyyani (Respondent) whereby the Appellant sought a permanent and mandatory injunction against the Respondents using the name ‘BHARAT GATE’ on grounds of infringement of the Appellant’s registered trademark “INDIA GATE”. When an interim injunction was granted and later vacated, the Appellant approached the Delhi High Court (DHC) who restored the ad interim order previously granted in favor of the Appellant.
The decision of the DHC to restore the order of interim injunction and the aspects highlighted in the decision therein are instrumental for brands to view trademark infringement cases from the court’s spectacle. This article aims to provide a concise summary of the case and the impact of its decision in the field of Intellectual Property.
Factual Matrix & Analysis
I. Appellants’ Suit Against The Respondent
The Appellant, an Indian company who is the registered trademark owner of the well-known basmati rice brand ‘India Gate’ filed a suit against the Respondent on becoming aware of that the Respondent was attempting to pass off their basmati rice products as those of the Plaintiff, under the tradename ‘Bharat Gate’. The suit filed by the Appellant also accompanied an order requesting the court to pass a permanent and mandatory injunction against the Respondent and their use of the tradename ‘Bharat Gate’ as the same was resulting in the Responding gaining benefit by passing off their products as that of the Appellant’s.On hearing the preliminary arguments, in 2020, a District Judge ruled in favour of the Appellant and granted an ex parte ad interim injunction, restricting the Respondent from using the tradename ‘Bharat Gate’ for rice and any related products.
II. Vacating The Injunction
Later in 2024, the commercial court lifted the injunction previously granted in favour of the Appellant and dismissed the Appellant’s application for an interlocutory injunction, thereby permitting the Respondent to continue exploiting the tradename ‘Bharat Gate’. Explaining its decision, the court cited that there was no phonetic similarity between the tradenames ‘Bharat Gate’ and ‘India Gate’ and highlighted key distinctions in the packaging, color schemes, and design of the products sold under the two tradenames.
A. Regarding potential consumer confusion – the court noted that the Constitution of India recognizes ‘India, that is Bharat,’ in its Preamble. It therefore opined that the Appellant’s registration of the tradename ‘India Gate’ did not grant it exclusive rights over all variations of the country’s name, including Bharat. Furthermore, the court held that the word Gate is publici juris, meaning it is a commonly used term that cannot be monopolized given its general nature and lack of distinctiveness.
B. Addressing KRBL’s claim that both brands featured the India Gate monument on their packaging, the court asserted that apart from the fact that the monument was barely visible in the packaging of its product, the monument is a national heritage site and not the exclusive property of any particular entity, thereby not capable of being monopolized by anyone.
III. Appeal To Restore Injunction
Dissatisfied with the ruling, the Appellant subsequently filed an appeal before the DHC which made the following observations on the matter completely shattering the observations made by the commercial court:
A. On ‘Phonetic Similarity’
A division bench of the DHC held that both the trademarks were phonetically similar and met the criteria of the triple identity test i.e. the test in relation to identical nature of (a) the goods/services in question; (b) the client base/consumers; (c) the trademark design of the services/products in question; thereby establishing clear trademark infringement. The DHC emphasized that the terms ‘Bharat’ and ‘India’ convey the same meaning, and since both brands deal with an identical product i.e. rice, the likelihood of confusion among consumers was significant.
B. Similarity In Depiction Of Monument
The DHC reiterated that the assessment of confusion should be made from the perspective of an average consumer with imperfect recollection. It clarified that confusion does not necessarily mean a consumer must mistake one mark for another but can also arise from phonetic similarity and visual resemblance. The DHC highlighted that the Respondents had imitated the distinctive visual feature of the India Gate monument in their packaging, further strengthening the case for infringement by showcasing their intent to pass of their products as that of the Appellant’s.
C. Use Of Monument; India Gate
Recognizing ‘India Gate’ as a significant national monument, the DHC noted that the Appellant’s packaging prominently displayed its image. In contrast, the design and packaging of ‘Bharat Gate’ lacked independent significance beyond being a modified version of ‘India Gate.’ The DHC therefore found that the Respondents’ use of the image of India Gate on their packaging was a deliberate effort to mislead consumers into associating their product with that of the Appellant’s well-established brand and further noted that the use of ‘Bharat’ appeared to be an attempt to avoid direct accusations of imitation.
The DHC ultimately determined that the Respondent’s actions were an intentional effort to exploit the Appellant’s brand reputation, highlighting that there was no legitimate reason for them to adopt the ‘Bharat Gate’ mark in a market where ‘India Gate’ was already widely recognized. Concluding that there was a clear intent to copy and mislead, the DHC upheld the Appellant’s appeal, overturning the commercial court’s ruling vacating the injunction.
Conclusion
Trademark infringement and passing off is not only a direct attack on a brand’s identity – but also one on the revenues they generate which are impacted when an infringing party illegally benefits off the brand reputation of another entity. Therefore, the standard requirement for assessment of trademark infringement should be based on the perception of the average consumer which would give a wider berth for courts to view the suits with an emphasis on the need for businesses to secure trademark registration and uphold fair use of intellectual property.
Trivial dismissal grounds, including reasons such as slight differences and/or price points cannot be given importance when considering an infringement case – given that these distinctions are generally introduced with the intention to pass off products without directly taking the hit of an infringement claim. The courts will therefore need to tread carefully when proceeding with such infringement claims especially in the realm of trademarks where brands spend years building goodwill – only to lose it to newcomers attempting to mooch off their reputation.
The DHC’s decision in the present case, which appears to focus on the significance of protecting brand identity while ensuring compliance with intellectual property laws is expected to have far reaching consequences on infringement suits filed across the country. One can only hope that this acts as a deterrent if not a complete cure to the rising concern that is trademark infringement.
Authors: Dayita Panicker & Sakshi Naik