No infringement in using similar prefixes by registered owners

Shatrunjay Bose, Student of law UPES, Dehradun

The Bombay High Court stated that if two parties have registrated their trademarks using identical prefix, those parties can use the same for all its trading and miscellaneous purposes and the use is not limited for use by only one of the party While relying on the Trademarks Act, the court said use of such registered trademarks by another registered owner cannot be treated as “infringement”.

The court had heard a plea by Pritikiran Katole who appealed against the district court’s order that had forbidden him from using the trademark of ‘Godwa’ which was attached with his trade and commercial enterprise. The lower court had observed that it was “breach of registered trademark” which was used by the applicant Harsha Katole.

In past the megabrand Apple has been dealt a severe blow having been told that it no longer has a monopoly on the letter “i” as part of the name for its products. A trademarks tribunal has overruled Apple’s bid to stop a small company from trademarking the name DOPi for use on its laptop bags and cases for Apple products. Apple contended that the DOPi name – which is iPod spelt backwards – was too similar to its own popular portable music player, which has sold in excess of 100 million units worldwide. But actually DOPi was an acronym which stood for Digital Options and Personalized Items. Therefore using of the same prefixes cannot lead to trademark infringement.

The use of the logo of Lexus automobiles was determined not to be confusing consumers of the Lexis database services.

In the case of Micronix India vs Mr. J.R. Kapoor the use of same prefixes was challenged were the Supreme Court observed that micro-chip technology being the basis of many of the electronic products, the word “micro” has much relevance in describing the products and therefore no one can claim monopoly over the use of the said word. Anyone producing any product with the use of micro chip technology would be justified in using the said word as a prefix to his trade name and thus who are familiar with the use of electronic goods know fully well and are not likely to be misguided or confused merely by the prefix `micro’ in the trade name. Thus, in the nutshell, the Supreme Court has held that once it is found that the word `micro’ is a common or general name descriptive of the products.

Justice Anoop V Mohta took the Trademarks Act’s provision in this matter into consideration and stated that “The main objection with regard to the word ‘Godwa’ although both the parties got registration under the provisions of the Trademarks Act, 1999, just cannot be the issue to pass such injunction order against the registered trademark owner. Such two persons cannot prevent each other from using the same registered trademark. The section itself contemplates that such registered trademark need to be treated as in their individual capacity `the sole registered proprietor’.”

The section 9 of the Trade Marks Act, 1999 says that a trade shall not be registered in proviso that before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark. In this case It was also observed that Harsha has been using the title since 2008 and Pritikiran since 2006 and they were both aware of each other’s use in each of their respective transactions.

The counsel on behalf of Pritikiran’s gave an undertaking to the court that his client in future, will not use the word ‘Godwa’ in the pattern and the blueprint style, in the way the other party has been using along with the emblem used by Harsha.