This legal article delves into the pivotal aspect of establishing actual
trademark confusion when comparing trademarks, as demonstrated by a recent case
under Section 91 of the Trade Marks Act, 1999.
The appellant contested the dismissal of their opposition against the trademark
'RASANAND,' asserting similarity with their registered mark 'RASNA.' The Hon'ble
High Court, in its verdict, emphasized the necessity of proving actual confusion
and scrutinized the distinctiveness of the marks in various
aspects phonetically, graphically, visually, and structurally.
The case under consideration involves a Trade Marks Act, 1999 appeal against the
Assistant Registrar of Trade Marks' order dated 12.7.2023.
The appellant argued against the dismissal of their opposition, asserting that 'RASANAND'
and 'RASNA' were deceptively similar. The Hon'ble High Court's analysis focused
on the perceptible differences between the two marks and the absence of
demonstrated confusion in the market.
Distinctiveness of Marks:
The court examined the phonetic, graphic, visual, and structural elements of 'RASNA'
and 'RASANAND.' It concluded that, ex-facie, the marks exhibited
distinctiveness. This thorough assessment highlights the court's commitment to
scrutinizing trademarks comprehensively, emphasizing the need for clarity in
differentiating between marks to prevent consumer confusion.
Absence of Deceptive Similarity:
The Hon'ble High Court's dismissal of the appeal rested on the determination
that 'RASANAND' was not deceptively similar to the registered mark 'RASNA.' The
court underscored the lack of confusion among consumers actively seeking the
product 'RASNA.' This underscores the court's commitment to protecting consumers
from potential confusion in the marketplace.
Role of Actual Confusion in Trademark Disputes:
A crucial aspect leading to the dismissal of the appeal was the appellant's
failure to present evidence demonstrating actual confusion between 'RASNA' and 'RASANAND.'
Despite 'RASANAND' co-existing in the market for over 19 years, the absence of
documented cases of confusion played a pivotal role in the court's decision.
This reiterates the significance of tangible proof of confusion in trademark
The Concluding Note:
This case underscores the importance of proving actual confusion in trademark
disputes. The Hon'ble High Court's emphasis on distinctiveness and the absence
of demonstrated confusion reinforces the principle that legal determinations in
trademark matters must be grounded in tangible evidence.
The Case Law Discussed:
Case Title: Piruz Khambatta Vs Deputy Registrar of Trademarks
Date of Judgement/Order:04.12.2023
Case No. CIVIL APPEAL NO. 18 of 202
Neutral Citation No:NA
Name of Hon'ble Court: Gujarat High Court
Name of Hon'ble Judge: Niral R Mehta, HJ
Ideas, thoughts, views, information, discussions and interpretation expressed
herein are being shared in the public Interest. Readers' discretion is advised
as these are subject to my subjectivity and may contain human errors in
perception, interpretation and presentation of the fact and issue involved
Written By: Advocate Ajay Amitabh Suman
, IP Adjutor - Patent and
Email: [email protected]
, Ph no: 9990389539