Introduction

The Division Bench of the Bombay High Court in an appeal filed before it by Meso Private Limited (‘Meso’) held that in relation to marks ‘Legend’ and ‘Flirt’ used for perfumes, there was no likelihood of confusion and no infringement by the Respondents/Defendants Liberty Shoes Ltd (‘Liberty’) as they were using the marks in question along with their house name/marks as were the Appellants/Plaintiff and hence a consumer would easily be able to distinguish between the two sets of perfumes.

History

Meso filed a suit for trademark infringement and passing off against Liberty for the introduction of two perfumes with the names ‘Legend’ and ‘Flirt’. Meso was manufacturing and selling perfumes with the trade marks ‘Legend’ and ‘Flirt’ and is the registered proprietor of the trade marks ‘Legend’ and ‘Flirt’.

Before the Single Judge, Meso obtained an ex-parte ad-interim injunction restraining Liberty from using the marks ‘Legend’ and ‘Flirt’. While ruling in Meso’s favour, the Court held that the rival marks were identical, and that there was no reason for Liberty to adopt identical trade marks, and that such adoption could not be coincidental, and instead was deliberate and dishonest.

Soon thereafter, Liberty applied for vacation of the Court’s ex-parte order, which was vacated. While vacating the Order, the Court held that the marks ‘Legend’ and ‘Flirt’ were common place marks, and that Meso was using the marks ‘Legend’ and ‘Flirt’ along with the brand name Devon while Liberty was using the marks with its brand name ‘Liberty’, and that  there were several perfume manufacturers/traders that use the marks ‘Flirt’ and ‘Legend’ along with their brand name.   

Appeal Court’s Decision

Aggrieved by the vacation of the ex-parte order, Meso appealed to the Division Bench of the Bombay High Court. In appeal, Meso contended that since it is the registered proprietor of the said marks and Liberty is a subsequent user, the use by Liberty amounts to infringement and hence an injunction should follow. Meso further contended that Liberty has not placed sufficient material on record to show that the marks ‘Legend’ and ‘Flirt’ had become common to the trade. Meso also argued that the Single Judge had overlooked the fact that the marks ‘Legend’ and ‘Flirt’ were arbitrary and had no connection or nexus with perfumes even if they were dictionary words.

In response, Liberty contended that its main defence was that the use of the commonplace words ‘Legend’ and ‘Flirt’ along with their house mark/name does not result in the likelihood of confusion and therefore no injunction should follow., and that its ancillary defence was that the said marks are common to the trade.

At the outset, the Appeal Court was not convinced with Meso’s argument that the words ‘Legend’ and ‘Flirt’ had no connection with perfumes.

Next, the Appeal Court held that Liberty was correct in contending that the concept of ‘likely to cause confusion on part of the public’ is relevant as a defence against the action by a registered proprietor of a trade mark.

The Appeal Court then considered Liberty’s defence that the marks ‘Legend’ and ‘Flirt’ was being used along with the house name by the registered proprietor and several others. Relying on Valvoline Cummins Ltd v Apar Industries Ltd and Peshawar Soap and Chemicals Ltd v Godrej Soaps Ltd, the Appeal Court held the use of a house name before the relevant mark makes the two rival marks different and does not result in confusion. Meso argued that these judgments are not relevant to the present dispute as the words in the two cases were descriptive and were preceded by the house name or house mark.

Thereafter, the Appeal Court went on to examine the facts to determine whether the use of the words ‘Legend’ and ‘Flirt’ by Liberty was likely to cause confusion with Meso’s perfumes ‘Legend’ and ‘Flirt’ being used with Meso’s house mark ‘Devon’. In this regard, the Appeal Court noted that in order to determine whether there was a likelihood of confusion, the Court must consider the mode of purchasing the goods, the class of consumers, surrounding circumstances and the degree of similarity. It noted that the house mark ‘Devon’ of Meso was clearly visible on the perfume wrapper along with the marks ‘Legend’ and ‘Flirt’. Similarly, the house mark of Liberty was also clearly visible on the perfume wrapper along with the words ‘Legend’ and ‘Flirt’. The Appeal Court noted Liberty’s contention that the marks ‘Legend’ and ‘Flirt’ are being used by several established brands along with their house mark. However, there is no finding by the Appeal Court on this contention. The Appeal Court also observed that the perfumes bearing the house mark ‘Liberty’ along with the marks ‘Legend’ and ‘Flirt’ was being sold offline in Liberty stores and online on www.libertylifestyle.co.in  and e-retail platforms such as Amazon and Flipkart. Given that a perfume is a premium lifestyle product, the Court held that average consumers are far more aware of the product they are purchasing and that their choices are deliberate and not casual ones. Furthermore, e-commerce websites have sufficient information including reviews which help consumers make an informed choice. Hence, a consumer is well-aware that he or she is purchasing Liberty’s perfume and not Meso’s perfume which bears the house mark Devon.

In the circumstances, the Appeal Court held that the use of the marks ‘Legend’ and ‘Flirt’ by Liberty along with their house mark ‘Liberty’ would not cause confusion with Meso’s marks ‘Legend’ and ‘Flirt’. Given the finding on confusion, the Appeal Court thought no necessity to go into other contentions raised by the parties. Hence, the Court refused to interfere with the vacation of the ex-parte order issued by the Single Judge.  

Single Judge’s Order and Appeal Court’s Considerations

When vacating the ex parte order, the Single Judge relied on the fact that there were several other brands that were also using the marks ‘Legend’ and ‘Flirt’. He also raises a question regarding the invalidity of Meso’s trade marks. On the other hand, while, the Appeal Court, considered Liberty’s contention that several other brands were using the marks ‘Legend’ and ‘Flirt’, chose not to opine thereon. Instead, the Appeal Court’s decision focused on how the marks ‘Legend’ and ‘Flirt’ were being used with Meso’s and Liberty’s respective house marks so as to hold the unlikelihood of confusion.

This judgment raises an important question, as to the lack of consideration by the Appeal Court with respect to whether the Single Judge should have delved into the validity of a mark at the interim stage. While it has been clearly laid down in the Bombay High Court’s full bench decision in Lupin Ltd v Johnson and Johnson allows a court to go behind the registration of a mark if it is such that it shocks the conscience of the court, would a mark being common to the trade or generic be such that it shocks the conscience of the Court? As this aspect was not been reviewed in detail by the Appeal Court, we will need to wait for further court decisions relating to registered marks being generic or common to the trade to have further light shed on the jurisprudence relating to it.