This Case Comment has been written by Pranshutosh Kumar. He is a Law student at UPES, Dehradun.
ABSTRACT
The case has been a landmark decision in India on trademarks law and the interaction between the statutory remedies of trademark infringement of the Trade Marks Act, 1940 (infringement as a statutory remedy) and the common law action of passing off (infringement as a common law action). The respondent, who had been in business since 1926, the registered proprietor of the marks Navaratna and Navaratna Pharmaceutical Laboratories filed an action, contending that the use by the appellant of the name Navaratna Kalpa in relation to Ayurvedic medicines amounted both to infringement and passing-off. The appellant argued that Navaratna was generic at Ayurvedic language, had a lack of distinguishability under section 6(1) and that packaging differences excluded confusion.
The passing-off claim of the District Court was rejected but the infringement in the supply of composite marks against Navaratna Pharmaceutical Laboratories was seen as infringement since it was found to have acquired distinctiveness by the continued use of a mark since before the date of February 25, 1937, under Section 6(3). This was upheld by the High Court and the petition by the appellant seeking a rectification was rejected.
The Supreme Court, on appeal, made a clear distinction between passing off – a cause that needs to prove reputation, misrepresentation, and harm – and statutory infringement whose sole, deceptively similar mark is sufficient when the plaintiff has proven his or her mark indeed is registered and similar in terms of core elements. The Court also ruled that when considering claims of infringement of trademarks the distinction between packaging or labeling would not excuse liability where there was a deceptively similar core mark and proof of intent or actual confusion was not required. The claim of fair simultaneous use under Section 10(2) was abrogated because they failed to make it in lower courts.
The ruling supported the respondent of exclusively exercising his rights, emphasizing the importance of honoring the primacy of trademark registration, at the same time proving the ongoing validity of the common law remedies. It has continued to act as a guiding rule of harmony between the statutory protection and curbing the act of consumer deception in Indian trademarks law.
