Introduction
A phonetic search is also necessary along with word search before registering a trademark as observed by Justice C. Harishankar deciding the case Institut Europeen D Administration Des Affaires ,INSEAD, Association v. Fullstack Education Private Limited & Anr[1]. In this suit, the petitioner moved to court for rectification of the Trade Marks Register by removing the respondent’s registered trademark on the ground that the petitioner’s registered trademark is deceptively similar and phonetically nearly indistinguishable.
Facts of the Case
Institut Europeen D Administration Des Affaires is a globally reputed Business School offers programme for Data Management, AI, Machine Learning etc., registered its Word Mark “INSEAD” on 7th August, 2007 and Device Mark on 28th December, 2012 with three classes, 16, 35, 41 . Fullstack Education Private Limited registered its device Mark with the name “INSAID” with one class 41. On 5th December, INSEAD gets an email that a student attended INSAID’s course thinking it to be INSEAD’s. INSEAD filed a suit to remove the registered trademark INSAID from the Trade Mark Register.
The Plaintiff
The Plaintiff states that in point of time, respondent registered its Device Mark much later to that of Plaintiff’s and the defendant’s acronym “INSAID” is phonetically and confusingly similar to that of Plaintiff’s acronym “INSEAD”. This confusion is to be examined from the initial interest point of view, the persons who would be using the said marks, i.e., a student. In addition, the respondent was well aware of the Institution “INSEAD” as the CEO of the respondent’s institution had written an article on INSEAD, and the petitioner instead of choosing an acronym dissimilar, chose the one which is very similar to that of petitioner’s which is not even the initial letters of the name of the petitioner’s institution. Moreover no proper notice was served to the public before registering such mark. Therefore, the very initial adoption of the mark by the respondent was done with dishonesty, so, the registration of the respondent’s mark is in violation of Rule 33(1)[2] of the Trade Mark Rules, 2017 r/w section 11(3)(a)[3] and 57(2)[4].
The Respondent
The respondent first contended that the petitioner’s mark is a three-syllable mark, with “ IN, SE, AD” whereas the respondent’s mark is a two-syllable word, “IN, SAID”. Secondly, the respondent states that the consumer of the mark should be taken into consideration. The consumers are the students, who are enlighten enough to differentiate between the two, and there is little or no chance for a student to confuse, additionally, the petitioner provide degree course, whereas the respondent provides certificate course. Therefore there is no chance of confusion between the two. Thirdly contending the petitioner’s argument it was submitted that failing to conduct a Phoenetic search at the initial stage of investigation, does not fatally peril the registration which once granted under rule 33[5], and phoenetic search failure cannot be the ground to seek removal of the mark from the register u/s 47[6] or 57[7] of the Act. Fourthly, in replying to the contention of the petitioner, respondent states that the respondent’s ,mark was advertised on the physical trademark journal. In addition, it was submitted that it should be decided comparing the device mark not the words. The device marks of both the party are very distinctively different from each other. Lastly, it was contented that the petitioner’s mark is pronounced as “in-si-yaad” whereas, respondent’s mark is pronounced as “in-said”.
Issue
Whether there is an infringement and the registered trade mark “INSAID” should be removed from Trade mark Register.
Judgement
The court did not accept that there was no phoenetic similarity by applying the “Pianotist Test” and stated that the marks “INSAID” and “INSEAD” are phonetically similar. Relying on the four categories of confusion as given in a case, the court by applying the Initial Interest Confusion Principle, stated that there is likelihood of confusion as the given marks are phonetically similar and the consumer of the same, i.e., the students might get confused. Average people generally use acronym and does not compare the logos or device marks side by side, and therefore the said rival marks might confuse the people, and even the students who seek to take admission in the institution of the petitioner’s and respondent’s might get confused initially, and this results to infringement u/s 11[8] of the Act. Therefore, the court quashed and set aside the impugned device mark INSAID. To avoid further confusion, the court ordered to conduct a phonetic search at the preliminary stage of submitting an application for registration of a mark which involves a word.
[1] Institut Europeen D Administration Des Affaires ,INSEAD, Association v. Fullstack Education Private Limited & Anr, 2023:DHC:3524
[2] Trade Mark Rules, 2017 § 33(1)
[3] The Trade Marks Act, 1999, § 11(3)(a), No. 47 Acts of Parliament, 1999
[4] Id. § 57(2)
[5] Supra at 2, § 33
[6] Supra at 3 § 47
[7] Supra at 3 § 57
[8] Supra at § 11
DUCTUS EDGE 