22 July 2019


Judgments

High Court of Bombay

International Foodstuffs Co. LLC. v. Parle Products Pvt. Ltd. and Ors.

MANU/MH/0508/2016

11.04.2016

Intellectual Property Rights

Passing ice cream off as biscuits and other ways to test court patience

The Bombay High Court rejected an application alleging trade mark infringement by Parle for use of the mark, ‘Londonderry’.

Putting aside doubts about the Plaintiffs actually being entitled to their claimed mark in ‘London Dairy’, the court drew stark differences between the two marks. Whereas the Plaintiffs employed a blue colour scheme and only ever used the mark for ice cream, Defendants’ packaging was bright red and used for biscuits.

Submissions that such distinctions were dwarfed by the near-identical phonetics of the two marks, though acquiesced by the court, failed to convince of the gulf that remained between the classes of products for which the marks were used. The court rejected the argument that “that all the goods in that class are 'cognate' and ‘allied’”. Not only were the products, it opined, entirely different, they were priced so significantly apart that the vendibility of the goods could not be acceded to as being in the slightest common.

The Court reserved its ire for the last: lambasting Plaintiffs’ mark, failure to prove an international reputation and failure to show adoption prior to the Defendants. Justice Patel’s bewilderment with the Plaintiffs’ claim boiled over with his scathing practical assessment: “the Defendants' [Parle] sweet is the kind of thing that one finds sold by street corner vendors, pavement hawkers and so on. None of these are 'outlets' for the Plaintiff's products. No one purchasing a fifty paise sweet manufactured by the Defendants will ever be cast into a state of 'wonderment' about whether this confection has anything whatever to do with the Plaintiff's ice-cream.”

Relevant

Ruston & Hornsby Ltd. vs. The Zamindara Engineering Co. MANU/SC/0304/1969

Tags : trade mark phonetic vendibility class of goods

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