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A trademark should be viewed as a whole, not in isolation.
Any allegation of infringement of registered trademark label because only part of the registered trademark has been used by the defendants, does not lie.
According to Section 17 of the Trademarks Act (referred as ‘the Act’), when labels are registered as a whole then the registered owner of the label cannot seek to file a case alleging infringement by a defendant for using only a part of the registered label. In the case of Godfrey Philips India Limited v. P.T.I. Private Limited & Others, the Godfrey Philips India Limited (referred as ‘the plaintiff’), filed a suit for infringement and passing off of a part of its trademark “CAVANDERS GOLD LEAF” against P.T.I. Private Limited (referred as ‘the defendant’).
The Plaintiff sells cigarettes under the word mark “CAVANDERS”. Along with its trade word ‘CAVANDERS’ it uses the expression ‘_GOLD LEAF’. Also, the packaging of the plaintiff for selling cigarettes, besides containing the word mark ‘CAVANDERS’ is in a scheme of color combination of the shades of white, green and gold. However, defendants are selling cigarettes under the word mark ‘FUN GOLD’, defendants use the expression ‘_SUPER LEAF’ along with the wordmark as a suffix. The defendants are also using the color combination of green and gold.
The Plaintiff claims that such color scheme cannot be used by other manufacturers of cigarettes including the defendants who are said to be using the same color scheme. Plaintiff further pleads that in addition to the cause of action of infringement of its trademark by the defendants, the defendants are also causing passing off etc. on account of a user by them of the color scheme of green and gold in their packaging.
The Delhi High Court observed that the plaintiff alleging infringement of their registered trademark against the defendant not as a whole but that infringement is alleged because of the defendant’s use of the part of the registered labels of the plaintiff being two colours of green and gold, and which colours defendants are also using on their packaging of cigarettes.
The plaintiff, however, in view of Section 17 of the Act cannot plead infringement with respect to only part of the registered labels i.e. consisting of two colours appearing on their labels being green and gold, and therefore the present suit alleging infringement of registered trademark label because of only part of the registered trademark use by the defendants, does not lie.
Moreover, in the trademark, the words are neither identical nor deceptively similar as per Section 9 and 11 of the Act. Merely the word ‘GOLD’ and ‘LEAF’ cannot be monopolized in isolation barring others to use the same. Such words are used by the defendants in combination with other words which makes the mark of the defendant a distinct one.
The Plaintiff failed to succeed in showing the exclusiveness and distinctiveness of the color combination of green and gold restraining others from using the same combination. Moreover, reasonable customers who purchase cigarettes are not reckless/negligent consumers, and that cigarettes are purchased on the basis of the brand name/trademark of the cigarettes.
Also, the word mark of both plaintiff and defendant are so different that there is in no manner any identical or deceptive similarity between the two marks of the respective parties, therefore there will not arise at all any issue of passing off simply because of both parties using green and gold colors on their packaging especially. Thus, the mere existence of a similar color scheme of two simple shades of green and gold in the respective packaging will not cause passing off by the defendants when selling their goods/cigarettes simply because the plaintiff is also using those same two colors in their packaging for cigarettes. Even pictorial presentations of both the parties are totally different.
Thus, there is no cause of action for either infringement or of passing off in favor of the plaintiff. The suit has been dismissed due to lack of merits as allegations can be made for infringement of trademark only against the mark as a whole.
– Poornika Kumari
Content Writer @ Legal Bites