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Similarity of Goods is Not a Sine Qua Non in an Action of Passing Off

The doctrine of passing off is a fundamental aspect of intellectual property law, primarily concerned with protecting the goodwill and reputation of a trademark from misrepresentation. A pivotal issue in passing off cases is whether the goods or services involved must be similar for a claim to be successful. This article examines a recent legal case that underscores the principle that similarity of goods is not a sine qua non (an essential condition) in an action of passing off.

Case Background:
The plaintiff in this case is an internationally reputed company organized under the laws of Japan, known for its CITIZEN brand. The CITIZEN Group has been engaged in watchmaking since 1918 and expanded into the industrial precision machine tools market by 1936. The plaintiff commenced operations in India in 1960 through a collaboration with the Indian Government, managed by HMT.

The defendant, aware of the plaintiff's goodwill and reputation, dishonestly applied for the registration of the trademark "CITIZEN" in Class 07 (related to lathe machines) in 1994 and again in 2010 for the mark "C-TIZEN." The defendant argued that since the plaintiff was known primarily for watches, there could be no confusion or deception regarding lathe machines. The defendant also contended that the term "CITIZEN" is a common, laudatory word, not an invented or coined term, and hence not distinctive enough for exclusive trademark rights.

Legal Issues:
The primary legal issues revolved around:
  • Whether the similarity of goods is necessary for a passing off action.
  • Whether the term "CITIZEN" can be protected as a trademark given its common use and dictionary meaning.

Court's Analysis and Findings:
Trademark Registration Validity:

The court first addressed the validity of the plaintiff's trademark registration. The plaintiff substantiated its claim by providing a Legal Proceeding Certificate (LPC), confirming its registration. This evidence was crucial in establishing the plaintiff's proprietary rights over the "CITIZEN" trademark.

Common Field of Activity Not Necessary:
The court firmly rejected the defendant's argument that the similarity of goods is essential for passing off. The court clarified that the fundamental issue is whether the defendant's use of the mark in relation to lathe Machine results in a likelihood of confusion or deception, causing damage to the plaintiff's goodwill and reputation. In this case, the plaintiff's trademark "CITIZEN" was found to have substantial goodwill and reputation, not just in watches but broadly due to its extensive market presence and brand recognition. This is the reason why the Court rejected this argument of the defendant that Plaintiff's activities is in relation to watches, while activities of defendant is lathe machine, which plaintiff never manufactured.

Misrepresentation and Likelihood of Confusion:
The court observed that the defendant's marks "CITIZEN" and "C-TIZEN" were deceptively similar to the plaintiff's mark, both visually and phonetically. This similarity was likely to cause confusion among consumers, leading them to associate the defendant's lathe machines with the plaintiff's reputable brand. The court emphasized that the essence of passing off lies in the misrepresentation that leads to public confusion and consequent damage to the plaintiff's goodwill, irrespective of the nature of the goods.

Plaintiff's Goodwill and Defendant's Intent:
The court also noted that the defendant had failed to provide any plausible reason for adopting the "CITIZEN" mark for lathe machines. Given the plaintiff's longstanding and widespread use of the trademark, the court inferred that the defendant's adoption of the mark was dishonest, aimed at capitalizing on the plaintiff's established reputation.

Delay and Laches:
Addressing the defendant's argument regarding delay and laches, the court found that the plaintiff's delay in initiating legal action did not bar the suit. The delay did not diminish the plaintiff's rights or the potential for public confusion and deception caused by the defendant's use of the mark.

This case reaffirms that the similarity of goods is not a prerequisite for a passing off action. The primary consideration is the likelihood of confusion and misrepresentation that damages the plaintiff's goodwill. The court's decision underscores the importance of protecting well-established trademarks from dishonest adoption, regardless of the specific goods or services involved.

Case Title: Citizen Watch Company Limited Vs Dineshkumar Laxmanbhai Virda
Judgment/Order Date: 16.05.2024
Case No. CS(COMM) 56/2015
Neutral Citation: 2024:DHC:3974
Name of Court: High Court of Delhi
Name of Hon'ble Judge: Jyoti Singh, H.J.

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 herein.

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

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