The Delhi High Court, in its recent judgement, upheld that there is no likelihood of customers getting confused between ‘XPERT’ soaps and ‘HARPIC DRAINXPERT’. The judgement was in favour of the household brand Reckitt and Colman wherein the registration of ‘HARPIC DRAINXPERT’ was upheld. The Hon’ble court noted that there is minimal or little to no possibility for any consumer to become perplexed between Reckitt’s and the RSPL’s Health Private Limited marks.
SETTING THE CONTEXT:
The above case revolves around a dispute concerning the registration of the trademark “HARPIC DRAINXPERT” of the well-known homegrown brand Reckitt and Colman, who are the defendants in this case. RSPL Health Private Limited, the petitioners, in this case, is a company involved in the production of similar household items under the brand ‘XPERT’, had filed appeals with the aim of rectifying the Trademark Register by removing the “HARPIC DRAINXPERT” mark under section 57 of the Trademark acts, 1999 because according to them both were quite similar, and thus the customers might get confused between the two. The case was heard by Hon’ble Mr Justice C. Hari Shankar.
PLAINTIFF’S JUSTIFICATION V. DEFENDANTS CONCERNS:
RSPL Health, the petitioner, had put forth the argument that the Defendant’s “HARPIC DRAINXPERT” trademark bore similarities to their earlier mark ‘XPERT’ and was used for comparable goods and services. The learned counsel for the petitioner had further asserted that such uncanny resemblance was likely to lead to confusion among the public and further lead to establishing an association between the impugned trade mark and the petitioner’s already registered marks. The Petitioner had further contended that the registration of the disputed marks should not have been allowed under sections 57(2) and 11(1) of the Trade Marks Act.
Reckitt and Colman, the defendants, had maintained in their arguments that their use of the “HARPIC DRAINXPERT” mark would not cause confusion with the petitioner’s ‘Xpert’ mark. The Defendant had put forth the argument that the marks had unmistakable visual differences, with the term “HARPIC” being the predominant element of their mark. The Defendant also highlighted that the packaging prominently displayed the “HARPIC DRAINXPERT” mark, thus minimizing and negating any likelihood of confusion.
UNPACKING COURT’S ANALYSIS:
Mr Justice C. Hari Shankar held that the fact that the defendants used HARPIC DRAINXPERT reduces any factor of confusion between the two marks. He pointed out that the Harpic mark is quite visible to the naked eye, and thus, the general public and the customers would see that prominently and not get confused between Reckitt and Coleman’s household products and that RSPL’S household products.
The Court held in their judgement that “The principle of similarity is not so elastic as to be stretched to breaking point. “XPERT” is only half of the second word of Respondent 1’s impugned registered word mark, which is “DRAINXPERT”. It is only, therefore, if one were to ignore “HARPIC”, bifurcate the second word of the impugned mark into “DRAIN” and “XPERT”, and ignore the first of the said two parts “DRAIN” that the petitioner’s mark and Respondent 1’s mark would become alike.”
Drawing on the legal wisdom of the case of K.R. Chinna Krishna Chettiar v. Shri Ambal & Co.5 The Hon’ble High Court judge, Mr Justice C. Hari Shankar, stated that the Supreme Court, in the aforementioned case, held that the words “Shri Andal”, forming part of a device mark aspiring to registration for snuff under the erstwhile Trade & Merchandise Marks Act, 1958, disentitled the mark to registration, as they were phonetically similar to “Shri Ambal”, which was part a device mark which already stood registered for snuff, despite the two marks, in the words of the Supreme Court itself, being, visually, “totally dissimilar”.
In another similar case of Coca-Cola Co. of Canada v. Pepsi Cola Co. of Canada Ltd[2, it resembles the issue we dealt with in the Trademark dispute between Harpic Drainxpert and expert. In the aforementioned case, it was found that Cola was reportedly in common use in Canada for naming all the beverages. The distinguishing feature that kept the apart of the mark Coca-Cola was Coca and not Coca-Cola. For the same reason as stated before the distinguishing feature of the mark Pepsi Cola was Pepsi and not Cola.
COURT’S FINAL SAY:
In light of the considerations from all the factors, the Court of Single Judge bench of the Hon’ble High Court judge Mr Justice C. Hari Shankar concluded that treating the mark “HARPIC DRAINXPERT” as similar to the mark “XPERT” would be stretching the principle of similarity to an unreasonable extent and thus would be unfair on the Defendants.
The outcome of this case emphasizes the need to distinguish between the trademarks and the need to maintain the authenticity of the brands. The Court’s evaluation further emphasizes the need to have a good knowledge of trademark cases and the need to maintain the positive image of the brands throughout the process.
Read the case in detail here: https://www.theippress.com/2023/09/06/rspl-health-private-limited-v-reckitt-and-colman-overseas-hygiene-home-limited-and-ors/
 (1969) 2 SCC 131
 (1942) 59 R.P.C. 127.
I am a second-year law student at Dr. BR Ambedkar National Law University, Sonipat. Law has fascinated me to a great extent, my area of interest includes a wide variety of laws including IP and Trademark law and always leaves a place to discover more.