The present appeal, filed under Section 91(1) of the Trade Marks Act, 1999, challenges the order dated 22nd July 2023, by the Registrar of Trade Marks. The appellant opposed the registration of a trademark application No. 1411841 in Class 30, filed by the respondent, which was ultimately permitted to proceed. The appellant claims that the respondent's mark is deceptively similar to its own, leading to consumer confusion.

Case Background:
The appellant, an exporter of bulk and packaged tea, has been using the trademark "JUMBO" and "FIVE JUMBO" since 1985, with a distinctive device of an elephant. The appellant's "JUMBO" mark was registered on 8th February 1989, for tea and spices, with additional registrations on 11th September 2006. The striking features of these marks include the picture of five elephants and the word "JUMBO," indicating the source of the appellant's products.

The respondent applied for the registration of a mark in Class 30, featuring an elephant and the word "HAATHI" on 6th January 2006, claiming usage since 1970. The appellant contested this application, alleging it was deceptively similar to their own mark and adopted in bad faith.

Legal Issues:
The central issue is whether the respondent's mark "HAATHI," which means "elephant" in Hindi, and the appellant's mark "JUMBO," another term for elephant, are deceptively similar. The appellant argues that the use of an elephant device and the word "HAATHI" by the respondent creates confusion among consumers due to the visual and conceptual similarities with their own "JUMBO" marks.

Similarity in Meaning:
"The appellant�s "JUMBO" and respondent's "HAATHI" both signify an elephant. Despite being in different languages, the semantic equivalence can lead to confusion. Consumers may associate both marks with the same source due to the synonymous nature of "JUMBO" and "HAATHI."

Visual Similarity:
Both trademarks incorporate the device of an elephant. The appellant�s mark features five elephants and the word "JUMBO," while the respondent�s mark includes an elephant and the word "HAATHI." The visual representation of elephants in both marks enhances the likelihood of consumer confusion, especially given the common association of elephants with strength and size.

Goodwill and Prior Use:
The appellant has been using the "JUMBO" mark since 1985, establishing significant goodwill and consumer recognition. The respondent claims usage of "HAATHI" since 1970; however, the court noted a lack of supporting documentation for this claim, undermining the credibility of the respondent�s assertion.

Registrar's Decision:
The Registrar of Trade Marks initially allowed the respondent's mark to proceed, disregarding the appellant�s evidence and assertions. The court found this decision to be flawed, highlighting the failure to properly consider the appellant�s documents and the unsubstantiated acceptance of the respondent's claimed usage since 1970.

Consumer Confusion:
The concept of consumer confusion is pivotal in trademark disputes. The use of similar devices and synonymous words in trademarks can mislead consumers regarding the origin of the products. The appellant's long-standing use and established recognition of the "JUMBO" mark further strengthen the argument that the respondent's "HAATHI" mark could cause confusion.

Conclusion:
In light of the above analysis, the court quashed the Registrar's order dated 22nd July 2023, and revoked the registration of the respondent's mark No. 1411841 in Class 30. The court�s decision underscores the importance of considering both visual and semantic similarities in trademark disputes, particularly when these similarities are likely to confuse consumers about the origin of goods.

Implications:
This case reinforces the principle that trademarks with similar meanings can lead to consumer confusion, necessitating careful scrutiny by trademark authorities. The decision also highlights the need for substantial evidence when claiming historical use of a trademark. For businesses, it underscores the importance of ensuring their marks are distinct and non-deceptive to avoid legal challenges and potential revocation.

Case Citation: Girnar Food & Beverages Pvt. Ltd. Vs. The Registrar of Trademarks :18.06.2024: IPDTMA No. 80 of 2023: Calcutta High Court: Krishna Rao , H.J.

Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539