Syed Suhaib is an editor at All India Commercial Law Review (AICLR) & a final-year law student at UILS, Chandigarh University. Neeva Ojha is also a final-year law student at UILS, Chandigarh University.
As the planks of Theseus’ ship needed repair, it was replaced part by part, up to a point where not a single part from the original ship remained in it anymore. Is it, then, still the same ship?
Introduction
It is unequivocal that trademarks of any brand or company are quintessential for protecting the outlook, goodwill, reputation, & trade of the products or services rendered by them; consequently, their infringement, intricate indifference or inadvertent use of a registered trademark can effectuate ambiguity for the consumers. In such circumstances, the Ship of Theseus Paradox provides an analogous allegorical reference and poses a paradoxical conundrum: whether a mark can become so altered that it no longer represents its original source and can be passed off as a different mark. This is the intricate, enigmatic conundrum that has been and is being deliberated by courts across the jurisdictions of the United Kingdom & India, and both jurisdictions have articulated their reasoning for adjudicating such conundrums.
In India, on December 4th, 2024, one of the prominent aviation airlines, Indigo, filed a lawsuit against a well-known car manufacturer and seller, Mahindra, over its newly launched electric SUV, which Mahindra named ‘BE 6e’. The reason behind Indigo filing this suit was because of the use of the alphabetical numerical ‘6e’, which Indigo asserted is infringing upon their well-known alphabetical numerical mark of ‘6E’, which has been associated with identifying Indigo flights (i.e. 6E Flex, 6E Prime). This led Mahindra to insinuate that they won’t be using the name ‘BE 6e’ for their new electric SUV until the present lawsuit is settled.
At the outset, a limpid distinction can be observed that Mahindra uses the lowercase to denote their ‘6e’ leads one to ponder whether this constitutes an infringement within the meaning of Section 29 of the Indian Trademark Act, 1999. Can a consumer be deceived into thinking that ‘BE 6e’, the new Electric SUV of Mahindra, has something to do with Indigo Airlines? The answer to this may seem evident, but such an answer can set a disturbing precedent, especially in the era wherein such marks are not just names or numerals but also represent the identity and goodwill of a brand or company. Although the case has yet to be decided, it makes one ponder how it would pan out, whether the court will reason that Mahindra has indeed infringed Indigo’s long-standing ‘6E’ mark or not, is a matter of consequential intricacies which can have a significant impact on the Indian Trademark law. Interestingly, in the U.K., such reasoning does not seem to resonate, which can be observed in the recent Adidas case, wherein the ‘4 Bars mark’ of Thom Browne was not considered to be deceptively similar but distinct. It is pertinent to note that this is not the first instance where such a close usage of the mark has constituted an infringement. The cases envisaging such an enigma have been encountered and ruled upon within the purview of ‘deceptively similar marks’, andboth the Indian and UK trademark laws are inconspicuous in manoeuvring the ‘ratio of similarity’ of such deceptively similar marks, and consequently, it becomes imperative to scrutinise the precedential jurisprudence on the outlook of deceptively similar marks.
Scrutinising the Stare Decisis
In India, the purview of ‘deceptively similar’ is envisaged under Section 2(1)(h) of the Indian Trademark Law, 1999. Under the purview of this section, a mark will be considered as deceptively similar if, firstly, there is a close resemblance and secondly, such resemblance can cause confusion or deception for the consumers. The present act is inconspicuous in manoeuvring the ‘ratio of similarity’ which leads to distinct precedential jurisprudence on the outlook of deceptively similar but herein the precedential jurisprudence in Cadila Healthcare Ltd v. Cadila Pharmaceutical Ltd (2001) 5 Supreme Court Cases 73: 2001 SCC OnLine SC 578 which was articulated by the Hon’ble Supreme Court of India, deliberates the standard for contemplating ‘deceptively similar’ marks. The Court has contemplated that the following factors must be taken into consideration for ruling upon the deceptively similar marks. These include:
- the nature of the products or services the mark relates to;
- the degree of resemblance between the two marks, &;
- the target audience that the company offers its products & services to.
The interpretation of trademark infringement within the purview of being ‘deceptively similar’ seems to run in parallel in the UK and India, even though both jurisdictions are of common law jurisprudence. The precedential reasoning in the U.K. can be articulated to stem from the 2006 case between the record label of the most influential band, The Beatles & the contemporary tech giant Apple Inc (Apple Computers Inc. before 2007). In 1968, the members of the Beatles Band founded their record label called Apple Corps Ltd, which was inspired by the artwork of Belgian artist René Magritte. In 1991, boththe Beatles and Apple Computers realised the similarities between their names and the helter-skelter it can cause. Subsequently, both companies entered a ‘collective trademark’ contract which discerned the ‘ratio of usage’ for the use of the mark ‘Apple’. The contract enunciated that things associated with electronic goods, software, data processing & transmission would reside with Apple Computers Inc, whilst things associated with music & creative works would reside with the Beatles’ Apple Corps Ltd for the foreseeable future. However, in 2001 Apple Computers Inc. launched their first music player, the ‘iPod’, which redefined the muse of the music experience. The product itself was unique given the genius of Steve Jobs & Steve Wozniak but the Beatles envisaged it as a breach of contract which in 2006 led to a lawsuit by the Beatles for infringement and breach of contract against Apple Computers Inc. in Royal Courts of Justice Strand, London wherein the presiding Justice Edward Mann deliberated his reasoning that Apple Computers Inc had developed the iPod from the standpoint of hardware & software usage and any consumer using the device would not contemplate it to be a product of Beatles’ Apple Corps Ltd. Although, later in 2007, parties reached a settlement wherein Apple Computers Inc owned all the trademarks associated with the term ‘Apple’ and licenced certain marks back to the Beatles’ Apple Corps Ltd.
The Contemporary Narrative
Besides the Interglobe Aviation v/s Mahindra Electric Automobile Ltd DHC – CS(COMM) 1073/2024 case, a subtle distinction in reasoning can also be perused in certain concomitant cases which fall within this enigma of deceptively similar marks.
3 Strips v/s 4 Bars:
In the U.K., such a situation was encountered by the High Court of London in the case of Thom Browne Inc & Anor v Adidas AC & Ors,wherein Adidas had sued Thom Browne for implementing and using the ‘4 Bars’ mark design which, as contended by Adidas, infringes upon the iconic ‘3-Strip’ mark design used across its products and services. Thom Browne contended that the ‘4 Bars’ mark design is distinct and is rooted in American varsity fashion. The London High Court ruled in favour of Thom Browne, reasoning that there was a clear distinction between the ‘3-Strip’ and ‘4 Bars’ mark design. However, if one were to examine these marks closely, the distinction between them is quite subtle, but the trademarks prima facie appear to be deceptively similar as Thom Browne has also utilised the black colour for its ‘4 Bars’ mark, which is similar to Adidas’ ‘3-Strips’ mark.
Wow Momo Foods Pvt Ltd Vs Wow Delicious CS(COMM) 1110/2024 & I.A. Nos. 47879/2024.
On the contrary, in India, on December 11th 2024, the Delhi High Court recently issued an ex parte interim order against the food chain ‘Wow Delicious’and restrainedit from using such a mark because the court reasoned that the mark was deceptively similar to the prominent food chain ‘Wow! Momo were susceptible to deception for the consumers. One can’t help but draw parallels between the aforementioned two cases as they profess intriguing reasoning for deliberating infringement based on the notion of deceptive similarity & susceptibility by the consumers, and to adjudicate this enigma, the rule of anti-dissection & the ‘rule of the dominant feature’ are incumbent ruling factors for colloquial of ‘ratio of similarity’ across multiple jurisdictions.
Ratio of Similarity
The amalgamation of the ‘rule of anti-dissection’ & ‘rule of dominant feature’ is the aiding test that determines the ‘ratio of similarity’ for disputed trademarks. These rules are not expressly mentioned under the Trademark Acts of either India or the UK, but are rather interpreted with the quintessence of legislative intent & judicial interpretations. The derivation of these rules under the Indian Trademark Act, 1999 stems from Sections 15 & 17 (for the rule of anti-dissection) & Section 11(b) (for the rule of dominant feature) and under U. K’s Trademark Act, 1994,from Section 5(2) & 5(3) respectively within the purview of grounds for refusal of a trademark.
Rule of Anti-Dissection
It is evident that registered trademarks have a commercial head within the consumer market, and any intricate reference from a well-known registered mark can lead to ambiguity for consumers. To mitigate such ambiguity and to maintain the unique commercial heed of a registered trademark, the rule of ant-dissection aids in the determination of infringement by the Defendant, which allows the Plaintiff to succeed in a suit of infringement against their registered mark. To abridge, the rule of anti-dissection prevents a trademark from being assessed separately and views the trademark as a whole. For example, if someone were to copy the whole trademark of the food chain KFC with a red colour scheme and change it to a blue colour scheme to pass it off as an entirely new trademark, this rule prevents such infringement. Another edifying example of this rule is the Delhi High Court’s ruling in the case of Bennett, Coleman & Co Ltd v VNOW Technologies Pvt Ltd 2023 SCC OnLine Del 864.The Defendant’s ‘VNOW’ use of the trademark was ruled to be an infringement against Plaintiff’s well-known registered trademarks, including but not limited to, ‘ROMEDY NOW’, ‘MIRROR NOW’, ‘TIMES NOW’, etc.
Rule of Dominant Feature
Subsequent to the rule of anti-dissection, the rule of dominant feature is a cardinal rule that depicts an exclusive feature of a trademark. This rule emphasises that a ‘dominant’ or a ‘prominent’ feature of a composite mark will be considered by an imprudent consumer, hence even using a part of a registered mark will be reasoned as an infringement under this rule. It is pertinent to note here that, in cases of composite marks, courts dissect the ‘exclusive’, ‘significant’ or ‘dominant’ feature of a mark for determining an infringement; however, such dissection is not considered to be antithetical to the rule of anti-dissection, rather both rules are interpreted to be correlative in a panoramic view. This rule can be contemplated through the case of Royal Stag v/s Indian Stag 2010 SCC OnLine Del 3806: (2010) 174 DLT 279 (DB)wherein the Delhi High Court ruled ‘STAG’ to be a dominant feature of the Plaintiffs’ Royal Stag and prima facie to be an infringement upon its trademark by the Indian Stag.
On the contrary, the determination of these tests can be critically evaluated in the case of PhonePe v/s BharatPe 2022 SCC OnLine Del 2638: (2022) 92 PTC 446 wherein the word ‘Pe’ was considered to be a generic wordplay of the word ‘Pay’ and hence, the court reasoned that there was no infringement on the part of the Defendant since the essentials’ of registering a trademark connotes that the mark should not be generic or descriptive. The court also deliberated upon the fact that whilst PhonePe was used for all types of online payments, BharatPe was limited to merchant payments. However, this intriguing case could have been appealed for further reasoning; the parties settled the issue amicably. Herein, it can be critically articulated that an antithetical interpretation of the rule of anti-dissection leads to obscurity within the judicial jurisprudence of the two rules, and both rules must be interpreted and applied in amalgamation, which is incumbent because such ambiguity can set an abrasive precedent for sub-judice cases like that of Indigo v/s Mahindra.
Conclusion
The contemporary cases contour a strenuous enigma of deliberating upon the deceptively similar trademark infringements, and the discerning jurisprudential reasoning by the courts can lead to ambiguous qualms, metaphorically analogous to the Ship of Theseus Paradox. Consequently, it becomes eminently imperative for either imperious legislative scrutiny or stringent precedential deliberation on the jurisprudence of deceptively similar trademarks. As aforementioned, trademarks carry a commercial heed and when disputed can effectuate a colossal dearth to a company or a brand; hence, it becomes incumbent upon such companies & brands to devise a unique trademark which is not a subtle imitation of any other registered trademark. Subsequently, it is also incumbent upon the brands or companies to protect their trademark not just by registering it but also by inducing market heed around such a trademark, which aids it in making it unique and well-known among the consumers, like the Ship of Theseus, which even disputed, was contented by many to be same ship thereby, resulting in a paradoxical heed which has endured the test of time, unlike the ship, it’s heed persists, as a unique & distinct trademark should.
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