M/S.RSPL HEALTH PRIVATE LIMITED ….. Petitioner
Versus
RECKITT AND COLMAN (OVERSEAS) HYGIENE HOME LIMITED & ANR. ….. Respondents
Date of Order:- 22.08.2023
HARPIC DRAINXPERT VERSUS XPERT
There were two rectification petitions filed by petitoner, seeking removal of the word mark “HARPIC DRAINXPERT”.
The mark “HARPIC DRAINXPERT” was registered in favour of Respondent 1 in Classes 3 and 5, vide Registration No. 5258906 and 5258907 respectively.
Registration no. 5258906, in Class 3, covering “cleaning, polishing, scouring or abrasive preparations; drain and sink cleaning preparations; products for drain maintenance, namely drain openers” form subject matter of first petition.
Registration no. 5258907, in Class 5, covering “disinfectants; disinfectant preparations; disinfectants for household used or for hygiene purposes; disinfecting agents and preparations having disinfecting properties; disinfectants for institutional and commercial use” forms subject matter of second petition.
Petitioner claimed that “HARPIC DRAINXPERT” of Respondent 1 is similar to earlier trade marks of the petitioner, and is used with respect to goods or services which are similar to the goods or services in respect of which the earlier trade marks of the petitioner stand registered. Petitioner submitted that there is likelihood of confusion on the part of the public or of the public drawing an association between the impugned mark and the registered trade mark of the petitioner.
Petitioner submitted that the impugned trade marks could not have been registered under Section 11(1) and are, therefore, wrongly continuing to remain on the register of Trade Marks within the meaning of Section 57(2)3 of the Trade Marks Act.
So, basically the issue in controversy was only about Section 11 of the trademarks act. Hon’ble Court had to see, whether the impugned marks were entitled to registration or not under Section 11(1)(b) of the Trade Marks Act.
Section 11(1)(b) requires cumulative satisfaction of three ingredients for a trade mark to be ineligible for registration. They are
(i) that the trade mark should be similar to an earlier trade mark,
(ii) that the goods or services covered by both the trade marks should be identical or similar and
(iii) that, as a consequence of (i) and (ii), there must exist either a likelihood of confusion on the part of the public or of the public drawing an association between the latter mark and the earlier mark.
It is pertinent to mention that the registrations of the petitioner’s trade marks were prior to the applications of Respondent 1 which culminated in the impugned registrations.
The earlier trade marks of the petitioner has the word mark ‘XPERT‘ in them.
The Court was of the view that, of the three ingredients of Section 11(1)(b) to apply, the only ingredient which may be said to be satisfied in respect of the impugned marks, which could blight their entitlement to registration, is the similarity of goods or services.
Court further said , that mere fact that the rival marks cover the same, or similar, goods or services would not, however, suffice to invalidate the later registrations. Additionally, it would have to be shown (A) that the marks themselves are confusingly similar to each other, and that, owing to the similarity in the marks and the goods and services which they cover, (B) there is a likelihood of confusion among the public, or a likelihood of the public believing the existence of an association between the marks.
These two criteria were not satisfied in the present case.
Hon’ble Court further said, that even so, treating HARPIC DRAINXPERT as similar to XPERT would, in my mind, be stretching the principle of similarity to an unreasonable extent. The principle of similarity is not so elastic as to be stretched to breaking point. “XPERT” is only half of the second word of Respondent 1’s impugned registered word mark, which is “DRAINXPERT”. It is only, therefore, if one were to ignore “HARPIC”, bifurcate the second word of the impugned mark into “DRAIN” and “XPERT”, and ignore the first of the said two parts “DRAIN” that the petitioner’s mark and Respondent 1’s mark would become alike.
The impugned mark, seen as a whole, is “HARPIC DRAINXPERT” and the most prominent part of the mark is unquestionably “HARPIC”, which is also the house mark in respect of which several of Respondent 1’s marks are registered.
In a market in which the petitioner’s XPERT mark and Respondent 1’s HARPIC DRAINXPERT mark are sold in the normal way and in the ordinary course of trade, an average customer is, in Court’s opinion it was unlikely to be confused from petitoner or respondent trademarks.
Both Petitions were dismissed.
Read, Reviewed, & Edited by
Neeraj Gogia, Advocate