When deciding an appeal regarding infringement and passing off of the appellant's mark ROOH AFZA, the Sindh High Court applied the standard 'moron in a hurry', Lapp and classic trinity tests to determine the get-up and similarity of the marks in question. The high court decided in favour of the appellant and overruled the lower court's decision by disallowing registration of the defendant's competing mark ROOH-E-SAMAR. The high court held that the defendant's use of the intended trademark, trade dress and get-up infringed common law and the appellant's statutory rights pursuant to the continuous use and registration of its ROOF AFZA trademark.
The appellant has manufactured and sold syrup drinks under the trademark ROOF AFZA, registered in Class 32 (claiming adoption since 1942 in pre-partition India), for decades. As the mark has been used for over half a century, it has become a common household name and gained great popularity.
The respondent applied for trademark and copyright registration of the mark ROOH-E-SAMAR for the same goods (ie, a syrup drink) and started advertising its product in a local newspaper. The appellant filed a trademark opposition against the registration of the respondent's ROOH-E-SAMAR mark and also filed suit for:
- infringement and passing off of its registered trademark ROOH AFZA;
- unfair competition;
- damages; and
- an injunction application to obtain a restraining order or stop the respondent's use of the infringing mark.
The court dismissed the injunction application while acknowledging the appellant's registered ROOF AFZA trademark. It held that:
- the respondent's ROOH-E-SAMAR mark was not similar to the appellant's well-known ROOF AFZA trademark; and
- no confusion or deception was likely to occur for the following reasons:
- a claim of similarity is insufficient;
- there was little chance of confusion between the two marks;
- the marks' colour schemes were entirely different and there was a considerable distinction between the two for ordinary members of the public;
- the lettering used for each product was notably different;
- the picture of fruit that the defendant used was different from that of the appellant; and
- the Rooh-e-Samar product was not labelled in such a manner that could cause confusion with the appellant's well-known Rooh Afza brand.
The appellant appealed before the Singh High Court's double bench, arguing as follows:
- The learned single judge in the impugned order had not conducted a similarity comparison and instead went to a microscopic level to distinguish the contested mark from that of the appellant. An ordinary customer would not go to such a microscopic level to ascertain whether the product was that of the appellant.
- The conclusion reached by the learned single judge was not founded on legal principles and negated the remedies provided by trademark law.
- The law must grant protection to the appellant's well-known ROOH AFZA trademark in Pakistan.
The respondent reiterated the minute differences in the rival marks. Further, it claimed that since the appellant's ROOH AFZA trademark was famous, unlike the respondent's mark, the consumer would ask for its (infringing) products by the name Lal Sharbat (fruit drink) or Rooh-e-Samar and, as such, no confusion or deception would occur.
The appeal was allowed and it was held that the respondent's use of the get-up had infringed the appellant's common law and statutory rights pursuant to the registration and continuous use of its ROOF AFZA trademark. The court applied the standard moron in a hurry, Lapp and classic trinity tests, as well as basic infringement and passing-off tests, to ascertain whether the respondent's mark was deceptively similar to the appellant's trademark.
Moron in a hurry test
In a moron in a hurry test (an expression first used by Justice Foster in the English case Morning Star Cooperative Society v Express Newspapers Limited), the court examines the possibility of confusion between two trademarks from the viewpoint of a less than prudent customer. If such a consumer is deceived or cheated by the similarities between the two marks, the test is successful and the mark will be held to be infringing. In this case, the High Court compared the rival products and considered:
- the shape and size of the bottles, their respective caps and wrappers and a wristband in the centre portion of each bottle; and
- the colour of the respective drinks.
The court decided that a less than prudent customer would undoubtedly be deceived, as he or she would be unable to distinguish the minute and microscopic differences between the colour of the band and the placement of fruits on the respective wrappers and would opt for the respondent's infringing product, rather than that of the appellant. Therefore, the test was passed in favour of the appellant.
In the Lapp test (first used in the US case Interpace Corp v Lapp Inc), the court considered a number of factors to establish a likelihood of confusion, including:
- the similarity of the marks;
- the strength of the plaintiff's mark;
- the sophistication of consumers making a purchase;
- the intent of the defendant in adopting the mark;
- evidence of actual confusion (or lack thereof);
- the similarity of marketing and advertising;
- the extent to which the target of the parties' sales efforts were the same; and
- the similarity of the products (ie, in terms of identity, function and use).
In attempting to answer the above questions, the court determined that the ROOH-E-SAMAR mark infringed the ROOH AFZA trademark, as both trademarks had an identical prefix, written in a confusingly similar manner, in the same place on the products' wrappers. Further, the appellant's mark has been registered and used for over 70 years and held a well-known status. Its products were sold throughout Pakistan and were consumed by various types of customer. The court found that the defendant had intended to benefit from the shape, size and get-up of the appellant's product and that confusion was inevitable.
Classic trinity test
In its classic trinity test, the court considered:
- the goodwill of the appellant's trademark regarding identical or similar goods;
- the misrepresentation made by the respondent; and
- the actual damage caused (or to be caused) to the appellant by the respondent's actions.
The high court concluded that the test was satisfied in the given circumstances.
All three tests favoured the appellant's stance that the respondent's use of the intended trademark, trade dress and get-up amounted to infringement of common law and the appellant's statutory rights pursuant to the continuous use and registration of its ROOF AFZA trademark.
Further, the high court observed that customers retain only a limited impression of a brand's get-up and that it is therefore crucial for the courts to protect:
- the impression that an original product has developed in a customer's mind; and
- the owner of the original trademark.
In the case at hand, the rival product's get-up clearly resembled the original product and the overall impression of the two products left in the mind of the unwary purchaser was virtually the same. Therefore, the respondent was restrained from infringing the appellant's registered trademark in any manner whatsoever by selling, marketing, offering for sale, advertising or otherwise using the ROOH-E-SAMAR trademark on its products, either alone or in conjunction with any other mark, words, figures or devices.
For further information on this topic please contact Seema S Mansoor at Vellani & Vellani by telephone (+92 21 3580 1000) or email ([email protected]). The Vellani & Vellani website can be accessed at www.vellani.com.