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2013 (10) TMI 501 - HC - Companies LawTrademark infringement - Permanent injunction - Deceptively similar trademark - Held that:- tests of deceptive similarity in the case of infringement is the same as in the case of passing-off action, where the marks are not identical but in my humble opinion the said test in the case of infringement is to be confined only to comparison of the marks and the factors of pricing, trade channels etc., which in a passing-off action, in spite of similarity of marks may deprive the plaintiff of an injunction, can have no applicability in a infringement action once similarity is established - The Act, in Section 29 lays down the test of identity, similarity or deceptive similarity with the registered trademark only and not of confusion as in the case of passing-off, on the anvil of not only similarity of marks but also of prices, trade channels etc. The Act, in Section 2(h) defines deceptive similarity also on the touchstone of resemblance likely to deceive or cause confusion and not extending to pricing, trade channels etc. In my view, since the infringement action is statutory, the test of infringement cannot be extended beyond the parameters of the statute, by incorporating therein factors of pricing, trade channels etc. which are not laid down as tests of infringement in the statute. While comparing only the broad and essential features are to be considered and it would be enough if the impugned mark/label bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him - Following decision of Parle Products (P) Ltd. Vs. J.P. & Co., Mysore (1972 (1) TMI 98 - SUPREME COURT). Plaintiff has been successful in making out a case of infringement by the defendant of its registered trademark “OLD MONK” and “OLD MONK Label” by use of the mark “TOLD MOM” and “TOLD MOM Label” in relation to rum, even though falling in the Excise category of country liquor - permanent injunction is accordingly passed in favour of the plaintiff and against the defendant, restraining the defendant its directors, wholesalers, distributors, officers and agents from manufacturing, selling, offering for sale, distributing, advertising or directly or indirectly dealing in alcoholic beverages bearing the trademark “TOLD MOM” and under the “TOLD MOM Label” or any other mark or label identical and/or deceptively similar to the registered trademark “OLD MONK” and “OLD MONK Label” of the plaintiff - Decided in favour of appellant.
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