Calcutta High Court overturns Registrar's decision allowing trademark registration of "HAATHI" featuring an elephant, citing deceptive similarity.

In a trademark dispute, the High Court at Calcutta favored Girnar Food & Beverages Pvt. Ltd., overturning the Registrar of Trade Marks' order that had permitted the registration of a contested trademark. Girnar had opposed the application, No. 1411841 in Class 30, arguing its deceptive similarity to their own registered trademarks.

The disputed application, filed by the respondent, featured an elephant device and the word "HAATHI". Girnar, a manufacturer and seller of tea, had been using its "JUMBO" mark since 1985, securing its registration in 1989 for use with "Tea and Spices (Foods)".

Girnar, recognized by the court as a prominent player in the tea industry with a substantial presence in India and abroad, furnished evidence, including sales figures verified by a Chartered Accountant, to support their claim of continuous use of their elephant-centric trademarks since at least 1985-1986. In contrast, the respondent failed to produce any documentation substantiating their claim of using their mark since 1970, with their evidence only dating back to 2002.

The heart of the matter, as the court highlighted, was the use of the elephant device, a dominant element in both Girnar's and the respondent's marks. Despite acknowledging Girnar's prior use and established goodwill associated with the "JUMBO" brand, the Registrar had erroneously concluded that the respondent had also been using their mark concurrently based on inadequate evidence. This contradicted the Registrar's own observation in the findings that the respondent's trademark primarily consisted of “Bicrampore T.E.” and not the "Elephant," creating an inconsistency in the Registrar's reasoning.

The court, citing the case of The Gillette Company LLC –vs- Tigaksha Metallics Private Ltd. and Another, emphasized that mere disclosure of the respondent's identity alongside the disputed mark does not negate the potential for consumer confusion, especially when dealing with similar marks conveying the same meaning.

The court also cited T.G. Balaji Chettiar –vs- Hindustan Lever Ltd., where the Madras High Court stressed the importance of considering the potential for deception and confusion, particularly among consumers unfamiliar with nuanced differences in trademarks. The court applied this reasoning to the present case, emphasizing that both Girnar and the respondent operate in the same tea market, targeting a similar consumer base. Given that general consumers often rely on easily recognizable elements like the elephant device, the potential for confusion is significant.

Furthermore, the court pointed out the Registrar's failure to fully appreciate Section 17 of the Trade Marks Act, 1999, which deals with the effect of registering parts of a mark. The court asserted that the Registrar misapplied this section by concluding that the registration of the respondent's composite mark did not grant them exclusivity over the "elephant" device.

The court, finding the Registrar's order unsustainable due to its contradictions and misinterpretations, set aside the registration for trademark application No. 1411841 in Class 30. This decision reaffirms Girnar's exclusive rights to their registered trademarks featuring "JUMBO" and depictions of elephants.

IPDTMA No. 80 of 2023

Coram: Hon'ble Justice Krishna Rao
Between:Girnar Food & Beverages Pvt. Ltd. Vs The Registrar of Trade Marks & Anr.
Dated: 18-06-2024