Case Citation: MANU/DE/5548/2023
In the High Court of Delhi, the case of RSPL Health Private Limited (hereinafter referred to as the “Appellant”) versus Reckitt and Colman (Overseas) Hygiene Home Limited and Others (hereinafter referred to as the “Respondent”) was decided on August 22, 2023. This case revolves around the petitions filed under Section 57 of the Trade Marks Act, 1999, seeking the rectification of the Register of Trademarks by removing the word mark “HARPIC DRAINXPERT,” which is registered in favor of the Respondent. Registration no. 5258906 in Class 3 and registration no. 5258907 in Class 5, covering various products and services, respectively, are the subject matter of these challenges.
The Appellant filed petitions under Section 57 of the Trade Marks Act, 1999, seeking the removal of the word mark “HARPIC DRAINXPERT” from the Register of Trademarks. These registrations belong to the Respondent in Classes 3 and 5. The petitions alleged that these registrations were wrongly granted under Section 11(1)(b) and Section 11(10)(ii) of the Trade Marks Act.
The primary issue in this case is whether the word mark “HARPIC DRAINXPERT” of the Respondent is similar to the earlier trademarks of the Appellant, and if it is used for similar goods or services, leading to a likelihood of confusion among the public or an association between the two marks. Additionally, the Appellant raised the issue of bad faith on the part of the Respondent in adopting the mark.
Rule(s) of Law:
Section 11(1)(b) of the Trade Marks Act, 1999, prohibits the registration of a trademark if it is similar to an earlier trademark, the goods or services covered by both trademarks are identical or similar, and there exists a likelihood of confusion or association.
Section 11(10)(ii) of the same Act considers the bad faith of the applicant or opponent while assessing an application for registration.
Contentions of the Plaintiff:
The Appellant argued that the impugned word mark “HARPIC DRAINXPERT” is similar to its earlier trademarks and is used for similar goods or services. This, they contended, leads to a likelihood of confusion among the public. The Appellant also raised the issue of bad faith on the part of the Respondent in adopting the mark.
Contentions of the Defendants:
The Respondent, represented by counsel, countered the Appellant’s claims by asserting that the marks are not confusingly similar. They argued that the Appellant’s marks do not have exclusivity over the word “XPERT” and that there is no bad faith involved in their use of the mark.
Analysis and Reasoning:
The primary requirement for a trademark to be ineligible for registration under Section 11(1)(b) is the cumulative satisfaction of three conditions: similarity between the marks, identity or similarity of goods or services, and the likelihood of confusion among the public. In this case, the Appellant’s trademarks predate the applications of the Respondent, making them “earlier trademarks.” However, the Court found that the main issue is whether the marks are similar and whether they are likely to cause confusion.
The Court evaluated the similarity between the marks “HARPIC DRAINXPERT” and “XPERT” and found that, when seen as a whole, they are not confusingly similar. The dominant and prominent part of the impugned mark is “HARPIC,” while “XPERT” is only a part of the second word. Thus, they do not create a likelihood of confusion. Additionally, the manner in which the Respondent uses the mark further eliminates any confusion.
The Court emphasized that similarity under the Trade Marks Act only exists if it is likely to confuse the public. The average customer, when encountering the marks in the market, would not confuse them, considering “HARPIC” is prominently displayed in the impugned mark.
Regarding the Appellant’s claim of bad faith, the Court ruled that it was unsupported by any evidence and did not find merit.
Holding and Decision:
The Court held that the Appellant failed to establish a case for invalidating the Respondent’s registrations of the word mark “HARPIC DRAINXPERT” in Classes 3 and 5. The petitions were dismissed as they lacked merit.
Implications and Significance:
This case emphasizes the importance of a thorough examination of similarity and the likelihood of confusion under the Trade Marks Act. It clarifies that similarity must result in confusion among the public for a trademark to be ineligible for registration. Additionally, it highlights the need for evidence to support claims of bad faith in trademark registration.
Critique and Commentary (optional):
The decision in this case appears to be in line with established trademark principles. It provides a clear and reasoned analysis of the issue of similarity and confusion, emphasizing that similarity must lead to actual confusion among the public. However, it would have been helpful if the Court had provided more guidance on the concept of bad faith in trademark registration, as it can be a complex issue.
In the case of RSPL Health Private Limited v. Reckitt and Colman (Overseas) Hygiene Home Limited and Ors., the Delhi High Court dismissed the petitions seeking the removal of the word mark “HARPIC DRAINXPERT” from the Register of Trademarks. The Court ruled that the marks were not confusingly similar, and the Appellant’s claims of bad faith were unsubstantiated. This case underscores the importance of a comprehensive assessment of trademark similarity and the need for supporting evidence in trademark disputes.