Introduction:
A petition was filed[1] under section 57(2) of the Trade Marks Act, 1999 for the removal of the mark “P BROS”. The mark P BROS is registered in the favour of the respondent no. 1. Notices were issued to the respondents and were accepted by them, however, no appearance was made by the Respondent no. 1 on the date of hearing even when the matter was re-notified on 18th May, 2023.
Petitioner:
The petitioner is the proprietor of the device mark “Fybros” which is a registered mark covering items under Class 11, which includes “apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes”. The mark of the petitioner was registered in 2012.
Respondents:
The Respondent No. 1 is the proprietor of the mark “P BROS” and covers items falling under Class 11. The mark was registered on 20th March 2021 via registration No. 4643936. Respondent 2 is merely a pro forma respondent.
Issue:
The petitioner was aggrieved by the registration of the mark “P BROS” in the favour of the respondent and filed this suit in order to rectify the register of trademark by removal of the mark of the respondent. The mark registered by the respondent no. 1 was similar to the prior registered mark of the petitioner and in addition to aforesaid the mark of both the parties also represents similar goods.
Petitioner’s Contention:
Invoking Section 11(1)(b) of the Trade Marks Act of 1999, the petitioner’s counsel claims that Respondent no. 1’s contested mark was ineligible for registration because there was a high likelihood that the public would confuse respondent’s mark for the petitioner’s mark given their similarity and the fact that both marks were registered for the same goods. The counsel contends that marks “P BROS” and “Fybros” are deceptively and phonetically similar and relies on several judgements to substantiate his argument.
Respondent’s Contention:
No appearance was made by the respondent no. 1; however a reply was filed by the defendant which is on record. As per the contents of reply the respondent states the petitioner failed to challenge the application seeking registration of the impugned mark at the time when it was advertised and as a result the respondent’s mark is published. The reply also states that both the marks are distinct and operate their businesses in different spheres and in different markets. Also the reply suggests that no loss is encountered by the petitioner owing to the registration of respondent’s mark. The reply so filed vehemently states there was no possibility of any confusion in the minds of the public, owing to any similarity between both the marks.
Court:
To determine this case the court relied on the following:
- Pianotist test, postulated by Parker, J. which states “You must take the two words. You must judge them, both by their look and by their sound. You consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trademarks is used in a normal way as a trade mark for the goods of the respective owners of the marks.”
- William Bailey (Birmingham) Ltd. : “I do not think it is right to take a part of the word and compare it with a part of the other word; one word must be considered as a whole and compared with the other word as a whole…. I think it is a dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other word.”
- K.R. Krishna Chettiar: the Supreme Court held the marks to be deceptively similar essentially owing to the phonetic similarity between “Ambal” and “Andal”. “The mere fact that the device marks may be different in appearance, cannot, by itself, mitigate the effect of phonetic similarity between the two marks.”
Based on the aforesaid stated the High Court of Delhi was of the opinion that both the marks are, phonetically, deceptively similar, especially when they are used in respect of identical goods in the same class. The court further opinioned that the impugned mark cannot continue to remain on the register of trade marks. The petitioner was therefore entitled to seek rectification of the register by removal of the trademark and directed the Registry to remove the impugned mark from the register.
[1] FYBROS ELECTRIC PVT LTD V. MUKESH SINGH & ANR, C.O. (COMM.IPD-TM) 10/2021 & I.A. 12679/2021.
DUCTUS EDGE 