The use of the common English words ‘City’ and ‘Collection’ is the primary issue in the appeal before the Bombay High court. Orange City Mobile Collection, dealing in mobile phones and accessories, has filed the appeal before the Bombay High Court against the judgment and decree of the District Judge-6, Nagpur restraining them from using the words ‘City’ and ‘Collection’.
Facts in brief
The case for trademark infringement, passing off, damages etc. was brought by City Collection, objecting to the defendant’s (Orange City) use of the name ‘Orange City Mobile Collection’. Plaintiff claims it has registered the mark ‘City Collection.’ Further, the artistic design, style of writing of ‘City Collection’ is registered under the Copyright Act.
Orange City defended the action denying the similarity of the rival marks. Further, argued that ‘City’ and ‘Collection’ are common English words forming part of the composite mark, and no trader can claim exclusivity over the same.
Both sides adduced evidence, and after trial, the Court decreed the suit restraining Orange City from using the mark ‘City Collection’ concerning their business. The Court held that the parties are engaged in the same business, and the words ‘City’ and ‘Collection’ are the essential components of the registered trademark.
Orange City filed an appeal against the order of the District Court on the following grounds:
- ‘City’ and ‘Collection’ are generic words, and none can claim exclusivity.
- The addition of the words Orange and Mobile make the marks different. Nagpur is known as ‘Orange City’ due to its specialty in growing oranges, and the words’ Mobile Collection’ are used to indicate their business.
- They had changed the writing styles according to the direction of the Court to avoid confusion in the market.
- The judgement ought to be set aside being perverse, and there is an error apparent on the face of the record.
City Collection opposed the appeal, alleging:
- The object of trademark law is to protect commercial dishonesty. Orange City has applied for registration of the ‘Orange City Mobile Collection’ in Class 35, thus, it cannot argue that ‘City’ and ‘Collection’ are generic words.
- The mark City Collection is registered and not the writing style. If the contention is accepted, it will lead to infringers changing the writing style and using the registered trademark of the proprietor.
- The argument that Nagpur is commonly known as Orange City will not stand as there is no such contention in the written statement or evidence to that effect.
- The findings of the trial court are correct and there is no reason for interference.
The High Court, after considering the pleadings, arguments, and case laws, held:
- To establish infringement, City Collection has to prove it has acquired exclusivity in the said mark. City Collection is a device mark that gives the owner the right to a particular combination of images, design, and words taken together. Thus, the protection given to ‘City Collection,’ expressed in an artistic style, is limited, as the rights are confined to the logo as a whole and not to a specific word. Moreover, ‘City’ and ‘Collection’ are common descriptive words.
- On first impression City Collection and Orange City Mobile Collection are not deceptively similar, more so, considering the difference in the font being used for the words ‘Orange’ and ‘Mobile’ as directed by the Court.
- Section 17(2)(b) of the Trademarks Act expressly states that where a composite mark contains matter common to the trade, registration of the composite mark shall not confer any exclusive right in the matter forming only a part of the whole of the registered mark. Thus, City Collection cannot claim exclusivity in words ‘City’ and ‘Collection.’
- The contention that Orange City has applied for registration and thus, estopped from arguing that ‘City’ and ‘Collection’ are generic words will not succeed. The trade name, consisting of ‘Orange City’, matches with Nagpur City, indicating its place of business and geographical origin. According to Sections 30 and 35 of the Act, bonafide use of the trademark by a person of his place of business and ‘geographical origin’ does not constitute infringement. The words’ Mobile Collection’ indicates the bonafide description of the goods and services of different brands of mobiles available in the shop. Thus, the entire mark ‘Orange City Mobile Collection’ is safeguarded within the meaning of Sections 30 and 35 of the Trademarks Act of 1999.
- The marks’ City Collection’ and ‘Orange City Mobile Collection’ are visually and phonetically different. There are differences in services being provided by the parties and no convincing evidence to prove that customers have been deceived. Orange City deals only in mobile phone sales and service, whereas, City Collection deals in other items as well. Overall, City Collection has failed to prove commercial dishonesty on the part of Orange City.
In light of the above, the High Court allowed the appeal and set aside the trial court’s judgment and decree.