Courts should keep in mind common man, not Sherlock Holmes while deciding disputes over deceptive similarity in Trademarks: Karnataka High Court

Trial courts should have in mind the “quintessential common man” and not “the proverbial Sherlock Holmes” while deciding disputes over trademarks when allegations on deceptive similarity are made, the Karnataka High Court recently held (N Dinesh Kumar v. Shweta Khandelwal)..Common man, the Court said, is neither blessed with the wisdom of Solomon nor the trained eyes of Sherlock Holmes. “For, Court should have in mind, not the proverbial Sherlock Holmes, but the ‘quintessential common man’ who goes to the neighborhood shop with the idea of purchasing a product of his liking – or, rather the liking of his grand-daughter – which he had purchased only a week ago, and because of the gift of his humdrum existence has only an imperfect recollection of the imprint of the package," opined Justice P Krishna Bhat.Thus, where there are a common elements in the marks of plaintiff and defendant which is also contained in a number of other marks in use in the same market, what the trial court should keep in mind is whether or not such a common occurrence in the market would tend to cause purchasers to pay more attention to the other features of the respective marks and to distinguish between them by those features..However, the Court added that the application of this principle would depends on defendant successfully showing before the trial court that the marks containing the common element/elements are in fairly extensive use in the market in which the marks of the plaintiff and defendant are being used..The Court passed these pertinent observations while setting aside an order of injunction passed by the trial court in a suit over trademark between Sheta Khandelwal, proprietor of Matru Ayurveda Herbals, Bengaluru, and N. Dinesh Kumar, proprietor of Matruveda Herbals, Hyderabad..The plaintiff contended that she is doing business under the name ‘Matru Ayurveda’ and the defendant is doing business under the name ‘Matruveda’. She further contended that the trademark of the defendant is deceptively similar to the trademark of plaintiff..The plaintiff submitted that she had started business in the year 2015 on the strength of her trademark ‘Matru Ayurveda’, however, the defendant started his business subsequently in the year 2018 with his trademark ‘Matruveda’..It was her argument that her regular customers got deceived and on account of the same, she suffered huge losses in the business. She, therefore, prayed for a decree of permanent injunction to restrain the defendant from infringing plaintiff’s established registered trademark ‘Matru Ayurveda’..The trial court, had after hearing the parties, granted a temporary injunction restraining the defendant from infringing and passing off of the plaintiff’s registered trademark and trade name ‘Matru Ayurveda’.Aggrieved by the trial court order, the defendant knocked the doors of the High Court. .The High Court after going through the facts of the case at hand held that the trial court misdirected itself on the legal issue by examining the alleged existence of similarity between the trade name of the plaintiff and that of the defendant.“Unfortunately, as is disclosed from the order of the learned Court below, it has entirely misdirected itself on a question of law by addressing itself on the alleged existence of similarity between the trade name of the plaintiff and that of the defendant,” the High Court said. .It said that trial courts will have to examine whether such a common occurrence in the market tends to cause purchasers to pay attention to the other features of the respective marks and to distinguish between them by those features..This apart, the Court stated that when the 'trade name’ is set inside the trademark, the trial courts will have to examine whether there is the likelihood of confusion arising between the two trademarks, in the mind of a ‘common man’ who looks at them for a fleeting second. .Interestingly, Justice Bhat also made certain observations on how Trademarks are to be compared.“Is not the ‘trademark’ all about artistic work, design and get up? And, how is the Court before whom a dispute is raised by a plaintiff that the mark of the defendant is deceptively similar to the one which is her established mark to decide whether it is really so? Certainly not by a method which involves placing the rival marks side by side.”.With these observations, the Court set aside the order of the trial court. .[Read Judgment]