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Intention to Use an Expression as a Descriptor is Immaterial if it Actually Results in Confusion

In this legal article, we delve into a case where the plaintiff claimed to be the registered proprietor of the marks "MADHUR" and "MADHUR MADHUR GULAB" written in devanagari script. The subject matter of the suit was filed against the defendant's use of the trademark "MANGALDEEP MADHUR."

The defendant argued that they use the expression "MANGALDEEP MADHUR" not as a trademark but merely to describe their product and its characteristics.

However, the court rejected this contention and restrained the defendant, emphasizing that even if the intention to use the mark as a trademark was absent, infringement could still occur if confusion resulted.

The Court's Decision:
The Court observed that the intention to use a mark as a trademark is not the sole determinant of infringement. Under section 29(1) and section (2)(zb)(ii) of the Trade Marks Act, a registered trademark is infringed if it is used in a manner likely to be taken as a trademark, regardless of the user's intent.

Trademark Infringement and Connection in the Course of Trade:
The court pointed out that the use of a registered trademark would constitute infringement if it indicates a connection in the course of trade between the person and their goods or services, irrespective of their intention. The crucial factor here is whether the use of the mark creates a likelihood of confusion among consumers, leading them to believe there is a connection between the defendant's goods and the registered proprietor's goods.

Descriptive Sub-Brands and Confusion:
The defendant argued that their products were sold under the umbrella brand "MANGALDEEP" and that the descriptors such as "MADHUR" and "MADHUR 100" were used to signify the quality and characteristics of the product.

However, the court rejected this argument, stating that even if the defendant genuinely intended to use the mark only as a description of the product's aroma, it would not make any difference if the use of the mark was likely to be taken as a trademark.

The Concluding Note:
This case sets a precedent that the intention to use an expression as a descriptor is immaterial if it actually results in confusion among consumers, leading them to believe that the expression is being used as a trademark.

It reinforces the need for businesses to exercise caution while using marks, especially when they are similar to registered trademarks, to avoid potential infringement claims. As the court highlighted, the use of a registered trademark would still be considered an infringement if it indicates a connection in the course of trade, irrespective of the user's intention.

The Case Law Discussed:
Case Title: Hem Corporation Pvt. Ltd. Vs ITC Limited.
Date of Judgement/Order:11.04.2012
Case No. Notice of Motion No. 3940 in Suit No.2808 of 2009
Neutral Citation: NA
Name of Hon'ble Court: Bombay High Court
Name of Hon'ble Judge: S.J. Vazifdar, H.J.

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539

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