The Madras High Court recently dismissed the trademark and copyright infringement suit filed by the registered proprietor of the ‘Chand’ trademark for textiles. Based on the facts, the Court stated that the defendant has been using the trademark ‘Chand-A’ for lungis since 1952, and owing to long, honest, and concurrent use, the defendant’s use does not amount to infringement. As per the Court, the plaintiff has not been able to prove the likelihood of confusion among consumers. As the plaintiff’s trademark is ‘Chand-Z’, the Court stated that it is differentiable from the defendant’s trademark.
The Court also stated that there is no passing off or copyright infringement as the labels of both the parties were different. Though the plaintiff argued that the use by the defendant’s predecessors was under a permissive license, it was unable to prove the same through documentary evidence. This lack of evidence combined with long-term, genuine, honest, and consistent use by the defendant prompted the Court to decide in favour of the defendant.
While arriving at its decision, the Court outlined the principles to prove honest and current use as follows:
“38. To determine whether there is an honest and concurrent use by the defendant of the trademark “CHAND” with the letter ‘A’ in the circle, this Court will have to consider the following before arriving at a decision:-
(a) The genuineness of the concurrent use.
(b) The quantum of concurrent use of the trademark shown by the defendant having regard to the duration, area and volume of the trade to the case concerned.
(c) The probability of confusion resulting from the similarity of the applicant’s and opponent’s trademarks as a measure of the public interest or public inconvenience.
(d) Whether any instances of confusion have on record been proved.
(e) The relative inconvenience that may be caused to the parties concerned.
Citation: M/s.KAS Zainulabdin & Company vs M/s.KAS Bukhari & Company, Madras High Court, 21st December, 2023, C.S.No. 888 of 2006
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