28 October, 2016
Brief Facts:
The plaintiff was stated to be the registered proprietor of various SUN CONTROL/ SUNCONTROL formative marks such as with the device of Sun in Class 17 and of the mark SUN CONTROL CLASSIC in Class 16 in respect of, inter alia, polyester film, for arresting radiation of ultra violet rays (in other words window films for sun protection), plastic films, packing, packaging and insulating material.
Although the registration of one SUNCONTROL formative mark incorporated a disclaimer that there would be no exclusive right over the use of the word ‘control’ separately, the marks were asserted to have gained significant goodwill and reputation in the relevant markets for which substantive documentary evidence was also furnished by the plaintiff before the Hon’ble Court.
In April 2014, the plaintiff came across the defendant’s use of the expression “3M Sun Control Window Films” in relation to window films being goods that are identical to the goods of interest of the plaintiff under its prior, identical mark SUNCONTROL.
Consequently, a suit for infringement and passing off was filed by the plaintiff.
Issues:
Does the use of ‘3M Sun Control Window Films’ amount to the use of the words ‘Sun Control’ as a trademark by the defendant?
Is the mark SUNCONTROL of the plaintiff purely descriptive in nature?
Does the use of ‘3M Sun Control Window Films’ by the defendant amount to infringement of the trademark
SUNCONTROL of the plaintiff?
What is the effect of acquired distinctiveness in the mark SUNCONTROL in favour of the plaintiff?
Arguments by the parties:
The defendant pleaded that since the use of the expression ‘3M Sun Control Window Films’ does not employ the use of the words ‘Sun Control’ as a trademark and is merely used to describe the characteristics of the products, the same does not amount to infringement in view of Sections 30(2)(a) [1] and 35[2] of the Trade Marks Act, 1999 (“the Act”). That the defendant has used its mark ‘3M’ and the use of the ‘purely descriptive’ words ‘Sun Control’ is publici juris usage since the said words are common to trade.
It was contended by the defendant that the plaintiff was estopped from claiming the mark to be non-descriptive since the plaintiff itself submitted evidence such as commercial brochures stating “Garware Plastics & Polymers Limited have developed Polyester Film for Sun Control applications, making it the newest and most significant development in Sun Control technology” at the time of prosecution of its own mark and to overcome the ‘descriptiveness’ objection raised by the Examiner.
Further, the defendant furnished cogent documentary evidence to suggest that even before the plaintiff had entered the market, the term ‘Sun Control’ was being used in a purely descriptive sense by the relevant purchasers and members of trade and that the said words in relation to plastic films actually meant and were commonly implied to be “polyester films for arresting the radiation of ultra violet rays” which was exactly how the plaintiff also described the specification of goods under its registrations.
It was also substantiated by the defendant that there were various entities in whose names marks were registered and/or pending for registration in India and abroad which encompassed the expression SUN CONTROL and that there were international users of the same as well even prior to the plaintiff’s date of adoption of the mark. Thus, no single entity much less the plaintiff could claim monopolistic rights over the use of the said expression.
The plaintiff, on the other hand contended that its registered mark SUN CONTROL is not descriptive since it has no direct reference to the character or quality of the products. Further, in its own trademark applications, the defendant did not specify or describe its goods as ‘sun control films’ and as such, the defendant’s assertion that the said words are descriptive is baseless.
The plaintiff further pointed out that one of defendant’s websites incorporated the words ‘sun control’ as part of thedomain name and the same suggests its use as a trade mark. The plaintiff asserted that the use of a registered
trade mark of another in domain names also amounts to infringement.
It was further contended that even otherwise the mark ‘SUN CONTROL’ of the plaintiff had acquired significant distinctiveness, goodwill and reputation through longstanding use, promotion and publicity and the high quality of the products as established through documentary evidence placed on record. Thus, the mark, by all means, was associated exclusively with the plaintiff among the relevant sections of the public and members of trade.
Further, even if it is assumed that the intention of the defendant’s use of the words ‘sun control’ is to describe the characteristics of the goods, what is relevant is as to how such use is actually construed by the general public and members of trade. Thus, if the same is construed as trade mark usage then the intention of the infringer would be immaterial.
Decision and reasoning:
The court upheld the contentions raised by the defendant and dismissed the case on, inter alia, the following grounds:-
- The expression ‘Sun Control’ is purely descriptive as it describes the main characteristic, which is to block certain effects of sunlight; it is the main function of the goods;
- A registered proprietor may not interfere with bonafide descriptive use by another;
- There was a fatal inconsistency/estoppel in as much as the plaintiff’s own use of the mark was in a descriptive manner, which suggests that the mark is a generic expression;
- Use by the defendant is not calculated to deceive and is rather bonafide since the said expression is prefixed by its own mark 3M or SCOTCHTINT and thus, any confusion/deception or false association is highly unlikely;
- The marks have to be considered as a whole;
- The test is whether the use is to distinguish or to merely describe;
- Although a descriptive word may acquire distinctiveness through use, however, such use has to be exclusive in addition to being uninterrupted and extensive. But if others have also used it and that too in a descriptive manner, then such use cannot be restrained and the registered proprietor shall have no monopolistic right to that effect. For the words to achieve a secondary meaning it must be shown by the proprietor that it has lost its primary meaning;
- Merely because the domain name of the defendant contains the said expression ‘Sun Control’, it does not follow that it amounts to use as a trade mark or ceases to be descriptive.
Analysis:
Although the decision is in favour of the defendant in view of the principles enshrined in the provisions of Sections 30(2)(a) & 35 of the Act as to the descriptive use of the expression for which another party such as the plaintiff has trademark registration(s), the territory-specific common law rights acquired by the plaintiff also need to be carefully analyzed for the purpose of determining passing off, especially when the two sets of goods are identical in nature.
Thus, the three well-settled tests of passing off as laid down in a plethora of judgments viz. (i) reputation and goodwill acquired by the plaintiff qua the mark in question; (ii) misrepresentation caused among the public and trade or likelihood thereof by the use of the mark by the defendant; and (iii) consequent damage to the goodwill or reputation of the proprietor of the mark/plaintiff or even the likelihood of such damage – are required to be seen in light of the facts and circumstances of a particular case.
Also, if the reputation and goodwill and the ensuing acquired distinctiveness of the mark in favour its proprietor has been established, the other two tests pertaining to the likelihood of misrepresentation and damage to goodwill may be presumed.
However, such a presumption would depend on the facts and circumstances of every case including but not limited to the nature and strength of the mark in question and as to whether the same is purely descriptive of the characteristics of the concerned goods/services. As such, an incisive balancing mechanism has to be employed by the courts to come to a reasoned decision involving the above aspects of law.
All in all, keeping in mind the evidence looked into by the court and judiciously applying the above principles of law, the court’s aforesaid decision seems to be well reasoned and is fit to convincingly contribute to the list of good precedents on the above aspects of law as also mixed with questions of fact.
[1] A registered trade mark is not infringed where the use in relation to goods or services indicated the kind, quality, quantity, intended purposes, value, geographical origin, the time of production of goods or rendering of services or other characteristics of goods or services.
[2] Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of this place of business, or of the name, or of the name of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services.
For further information, please contact:
Omesh Puri, LexOrbis
mail@lexorbis.com
