Meso Private Limited v. Liberty Shoes Ltd. & Ors.
Commercial Appeal No. 362 of 2019 before the Hon’ble High Court of Bombay
Date of Decision: 8th August, 2019
Facts of the case:
Appellant was the registered proprietor of the marks Legend and Flirt in Class 3 for perfumes. The products on which the said marks were applied were only exported from India and not sold in India. The Appellant used the marks Legend and Flirt with Devon in the following manner:
Respondent No. 1 used the marks Legend and Flirt with the Liberty in the following manner:
The Appellant filed a civil suit against the Respondent along with Notice of Motion for interim relief. The initial ex-parte interim injunction granted to the Appellant by the court of first instance was vacated subsequently. Against the said order, the Appellant filed the present appeal.
Appellant’s Contentions in Brief: (Para 20 and 23)
- Since Appellant is registered proprietor of the marks, it is a clear case of infringement.
- The marks are not common to trade. There is no material to establish the defence of common to trade.
- The marks ‘Legend’ and ‘Flirt’ have no nexus to perfumes and are thus arbitrary to perfumes.
Respondent No. 1’s Contentions in Brief: (Para 21)
- Common to trade defence is an ancillary defence of Respondent No. 1. Its primary defence is that use of marks along with house mark/name does not result in the likelihood of confusion.
The Hon’ble Court disregarded the argument that the words ‘Legend’ and ‘Flirt’ had no connection with perfumes. The Hon’ble Court was of the view that:
“…The dictionary meaning of ‘Legend’ is: a very famous person, especially in a particular field, who is admired by other people. ‘Flirt’ is a connotation of attraction between sexes. Human interactions are also founded on the olfactory senses. Perfumes are supposed to enhance the interaction. The perfumes are a product of complex chemistry. Popular literature is replete with the belief that perfumes contain pheromones which may enhance the attractiveness. These names suggest that the wearer of the perfumes will be perceived in a particular manner or will have certain desirable qualities. Thus, at this stage, MESO’s contention that Legend and Flirt are arbitrary marks with no connection whatsoever with perfumes is difficult to accept as an absolute proposition.” (Para 23)
The Hon’ble Court observed that even if the marks of the parties are identical, the Hon’ble Court still has to determine whether there is a likelihood of confusion under Section 29 (2)(c) of the Trade Marks Act, 1999. Section 29 (3) though raises a presumption of likelihood of confusion but the same is a rebuttable presumption which can be rebutted at the interim stage. (Para 26)
The Hon’ble Court to determine, likelihood of confusion, impliedly referred to some of the considerations in the Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.; 2001 PTC 541 (SC). The Hon’ble Court also stated that:
“perception to be considered is of the average consumer of such products who is reasonably well informed and reasonably observant and circumspect.”
The Hon’ble Court observed the packagings and was of the view that the disputed marks are being used with their House marks in such a manner that Appellant is selling them as Devon Legend and Devon Flirt and Respondent No. 1 is using them as Liberty Legend and Liberty Flirt. (Para 30)
The Hon’ble Court also observed that multiple entities are using the mark Legend and Flirt along with their house marks along with their established brands. (Para 31)
The Hon’ble Court also observed that the average consumer of premium lifestyle product such as perfumes does not choose them causally and the choice is influenced by the blends, diffusion, distillation and fragrance, concentration of perfume and perfumes are not chosen with indifference. In such cases, recommendations exchanged between average consumers are generally on the house names.
The Hon’ble Court further observed that a discerning consumer knows there could be various perfumes in the market with names Legend, Flirt, Gentlemen, but such consumer will first go by the name of the house or a group marketing such variants. (Para 34)
The appeal was dismissed.
Key Takeaways from the Decision:
- Legend and Flirt are not arbitrary mark to perfumes.
- Presumption under Section 29 (3) of the Trade Marks Act, 1999 is a rebuttable presumption.
- Perfumes is a product of discerning consumer and consumers generally rely on house names.
In our view, the decision suffers from multiple errors. It can be said that the Hon’ble Court has though rightly held that the marks LEGEND and FLIRT are not arbitrary to Perfumes, it has failed to appreciate the fact the said marks if not arbitrary are definitely suggestive trade marks.
Suggestive Trade Marks are those trademark which stand for some idea which requires some imagination to connect it with the goods and which is “suggestive”. The information may concern some characteristic or quality or ingredient of the product.” Suggestive Trade Marks do not require proof of secondary meaning for legal protection and registration. Examples may be ‘Facebook’ for online social networking.
The Hon’ble Division Bench has failed to test the present case on this basis.
Thereafter, the Hon’ble Division Bench has wrongly held that presumption under Section 29 (3) is a rebuttable presumption. In giving such a finding, the Hon’ble Division Bench has not given due regard to Section 29 (1) of the Trade Marks Act, 1999 a perusal of which gives a clear answer that the present case is a case of infringement of trade mark as the Respondent were using an identical mark, for identical goods for which the Appellant had registration.
Apart from being covered by the statute under Section 29 (1) of the Trade Marks Act, 1999, the Appellant’s case is covered by the Supreme Court decision in Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories; AIR 1965 SC 980 which states “if the essential features of the trade mark of the Plaintiff have been adopted by the Defendant, the fact that the get- up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial”.
Therefore, the analysis of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.; 2001 PTC 541 (SC) was unwarranted as the said was only a case of passing off.
A perusal of the products makes it clear that the finding of the Hon’ble Division Bench that “Appellant is selling them as Devon Legend and Devon Flirt and Respondent No. 1 is using them as Liberty Legend and Liberty Flirt.” is incorrect and contrary to Section 29 (1) and Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories (Supra).
The Hon’ble Division Bench has also relied on third party use which has been recognised by catena of decisions to be not a defence in case of infringement.
Lastly, the question of discerning consumer does not arise as Confusion is not an ingredient for infringement under Section 29 (1) of the Trade Marks Act, 1999.