Can anyone claim that their mark is different by adding a prefix/suffix to an
already registered trademark?
In the case of Greaves Cotton Limited v. Mohammad Rafi,[i] the plaintiffs were
registered proprietors of the mark GREAVES and sought a permanent and mandatory
injunction against the defendant to restrain them from using the mark GREAVES
INDIA in respect of similar goods.
The Delhi High Court held that the impugned trademark doesn't need to be an
absolute replica of the registered trademark to constitute infringement. When
the mark of the defendant is not identical to the mark of the plaintiff, it
would be necessary for the plaintiff to establish that the mark is being used by
the defendant resembles his mark to such an extent that it is likely to deceive
or cause confusion and that the user of the impugned trademark is concerning the
goods in respect of which the plaintiff has obtained registration in his favor.
It will be sufficient if the plaintiff can show that the trademark adopted by
the defendant resembles its trademark to a substantial degree, on account of
extensive use of the main features found in his trademark. Any intelligent
person, seeking to trade upon the goodwill and reputation of a well-established
trademark, would make some minor changes here and there to claim in the event of
a suit or other proceeding, being initiated against him that the trademark being
used by him, does not constitute an infringement of the trademark, ownership of
which vests in some other person.
But, such rather minor variations or
distinguishing features would not deprive the plaintiff of injunction in case
resemblance in the two trademarks is found to be substantial, to the extent that
the impugned trademark is found to be similar to the registered trademark of the
But such malpractices are not acceptable and such a use cannot be
permitted since this is actuated by a dishonest intention to take pecuniary
advantage of the goodwill and brand image that the registered mark enjoys, it is
also likely to create at least initial confusion in the mind of a consumer with
average intelligence and imperfect recollection.
It may also result in giving an
unfair advantage to the infringer by creating an initial interest in the
customer, who on account of such deceptive use of the registered trademark may
end up buying the product of the infringer, though after knowing, either on
account of difference in packaging, etc. or on account of the use of prefixes or
suffixes that the product which he is buying is not the product of the
plaintiff, but is the product of the defendant.
Court further held that neither deletion of a part of a registered trademark nor
the prefix or suffix of another word to it would validate the use of the
registered mark by an unlicensed user, once it is shown that the part used by
the infringer is an essential part of the registered trademark.
In Subhash Chand Bansal v. Khadim's
[ii], the plaintiff was registered proprietor
of the trademark KHAZANA and sought an injunction against the defendants to
restrain them from using a deceptively similar mark KHADIM'S KHAZANA. The Delhi
High Court held that mere use of the prefix KHADIM'S, would not take the case
out of the purview of Section 29 of the Trade Marks Act irrespective of whether
the word KHADIM'S is bigger, equal, or smaller than the word KHAZANA. There is a
strong possibility of customers findings the shoes and boots etc. being sold
under the trademark KHADIM'S KHAZANA in the stores
In Shambhu Nath & Brothers v. Imran Khan
[iii], the plaintiffs were the
proprietor of the mark TOOFAN and sought an injunction to restrain the defendant
from using the mark SNJ TOOFAN. The court observed that the prefix SNJ also
happens to represent the initials of the plaintiff Shambhu Nath Jaiswal. The
adoption of the said trademark with SNJ as a prefix is not explained by the
defendant, especially where there is the very real possibility of an average
consumer mistaking the product of the respondent as being that of the
petitioners due to the prefix.
The Calcutta High Court held that the defendant is selling his products by using
such a deceptively similar/identical trademark and the innocent purchaser of
ordinary prudence and imperfect recollection as also the members of trade would
easily be confused and deceived. They would purchase the inferior products of
the defendant under a bona fide mistake that such goods are originating from the
plaintiff or connected with their business.
Once it is shown that the part used by the infringer is an essential part of the
registered trademark, the addition of a prefix or suffix of another word to a
registered trademark would not validate its use by an unlicensed user.
- 2011 SCC OnLine Del 2596
- 2012 SCC OnLine Del 4326
- 2018 SCC OnLine Cal 7145