Injunction granted in a suit for passing off on grounds of phonetic similarity

Karnataka High Court: A Single Judge Bench comprising of Raghvendra S. Chauhan, J., while deciding a regular first appeal, upheld the decision of the learned Trial Judge whereby he granted a permanent injunction in favor of the respondent, restraining the appellant from using the trade name which was already used by the respondent.

The appellant contended that the food joints of the respondent were prefixed by the name ‘Vasudeva’ and as such they have earned recognition as ‘Vasudev Adiga’ and the appellant was using the name ‘Adiga’s’ and as such there was no similarity in the two names. The appellant, therefore, contended that the Trial Court was unjustified in concluding that there was phonetic similarity between the two names. They also contended that both the appellants and the respondents are selling different goods altogether, the appellant being the seller of sweets and the respondents being the seller of fast foods.

The High Court discussed the law dealing with infringement and passing off of trademarks. It was observed that consumer protection is essential for smooth functioning of commercial world and therefore the consumers should not be confused between the products of different sellers. While dealing with the issue of ‘deceptive similarity’, the Court held that it is not only the image that matters, but phonetic similarity between two names is also a factor to be considered. It was discussed that the factors to be considered in such a matter include nature of marks, degree of resemblance, phonetic similarity, nature of goods, class of consumers, etc. It was also observed that while purchasing a good, a consumer keeps a brand name in his mind and takes an unconscious decision within split seconds and a likelihood of confusion is most possible.

The Court perused the record and found that both parties were dealing in similar kind of goods- food items. The phonetic similarity between the common names ADIGA was a major factor to be considered while dealing with a case of passing off. The respondent earned a long standing goodwill in the market for its food items and the appellant entered the market much after the respondents. Given the phonetic similarity between the two names, there was a high probability of confusion in the minds of consumers.

Therefore, based on the fact finding and the law discussed as above, the High Court held that the appellant was passing off his goods as that of the respondent’s. Accordingly the impugned order was upheld and the appeal was dismissed. [Adiga Sweets v. Vasudeva Adigas Fast Food (P) Ltd., RFA No. 17 of 2014, order dated 9.11.2017]

 

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