Holding that mere phonetic similarity is not sufficient to warrant judicial interference, the Bombay high court did not grant relief to owners of the London Dairy brand of ice cream who alleged trademark infringement by Indian candy-making company Parle Products.
International Foodstuffs, a Dubai-based company in business since 1975, had moved the high court against Parle Products for using the mark 'Londonderry' for its boiled confectionary sweets, in an alleged bid to pass the candy off as being linked to the internationally well-known ice cream brand, 'London Dairy'.
But after hearing both sides, Justice Gautam Patel in an interim order dismissed the plea to restrain Parle Products from using the name Londonderry for sweets - a product, he said, is "far removed from ice cream". The order comes as a sweet interim victory for Parle candy.
The judge, in 16 pages of reasoning, said, "To begin with, there is a very great deal of controversy about whether the plaintiff (International Foodstuffs) does or does not have any entitlement to the mark in question."
But that aside, he said the London Dairy mark is uniquely depicted as two distinct words on a ribbon that has a gold border and the word London is depicted against a London Bridge pictorial. Also, it is used only for ice cream.
The Parle company, on the other hand, uses its mark as a single word in a different colour scheme, with different fonts and different background of a "splendid pastoral scene with well-fed farm animals roaming hither and yon and a winsome milkmaid in a flowing dress and an apron".
The ice cream company said the points of distinction are all irrelevant since it has a registration in Class 30 which covers boiled confectionary sweets, for which Parle is using their mark since 2011. Parle Products denied fraudulent use of the mark as alleged, saying the ice creams entered Indian market in 2010, till when they were relatively unknown here.
The judge agreed with Parle counsel Virag Tulzapurkar's arguments that protection of even a registered mark can't continue if it is not used on products in a class it seeks to cover. Justice Patel said, "A registration must be read in a reasonable and rational fashion. I do not think that the purpose of this statute is to afford such wide ranging protection irrespective of use."
Observing that there are "very many differences in colour, trade dress, the goods themselves and their pricing", Justice Patel said, "Is a court to ignore all these only because of a phonetic similarity? No law says that all this must be ignored, or that a solitary test of pronunciation will suffice to defeat all else that weighs against."
International Foodstuffs, a Dubai-based company in business since 1975, had moved the high court against Parle Products for using the mark 'Londonderry' for its boiled confectionary sweets, in an alleged bid to pass the candy off as being linked to the internationally well-known ice cream brand, 'London Dairy'.
But after hearing both sides, Justice Gautam Patel in an interim order dismissed the plea to restrain Parle Products from using the name Londonderry for sweets - a product, he said, is "far removed from ice cream". The order comes as a sweet interim victory for Parle candy.
The judge, in 16 pages of reasoning, said, "To begin with, there is a very great deal of controversy about whether the plaintiff (International Foodstuffs) does or does not have any entitlement to the mark in question."
But that aside, he said the London Dairy mark is uniquely depicted as two distinct words on a ribbon that has a gold border and the word London is depicted against a London Bridge pictorial. Also, it is used only for ice cream.
The Parle company, on the other hand, uses its mark as a single word in a different colour scheme, with different fonts and different background of a "splendid pastoral scene with well-fed farm animals roaming hither and yon and a winsome milkmaid in a flowing dress and an apron".
The ice cream company said the points of distinction are all irrelevant since it has a registration in Class 30 which covers boiled confectionary sweets, for which Parle is using their mark since 2011. Parle Products denied fraudulent use of the mark as alleged, saying the ice creams entered Indian market in 2010, till when they were relatively unknown here.
The judge agreed with Parle counsel Virag Tulzapurkar's arguments that protection of even a registered mark can't continue if it is not used on products in a class it seeks to cover. Justice Patel said, "A registration must be read in a reasonable and rational fashion. I do not think that the purpose of this statute is to afford such wide ranging protection irrespective of use."
Observing that there are "very many differences in colour, trade dress, the goods themselves and their pricing", Justice Patel said, "Is a court to ignore all these only because of a phonetic similarity? No law says that all this must be ignored, or that a solitary test of pronunciation will suffice to defeat all else that weighs against."
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