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Addition of a Prefix/Suffix to a Registered Trademark

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 plaintiff.

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.

Conclusion
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.

End-Notes:
  1. 2011 SCC OnLine Del 2596
  2. 2012 SCC OnLine Del 4326
  3. 2018 SCC OnLine Cal 7145

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