A “trademark” is defined in Section 2(zb) of the Trade Marks Act 1999 means ‘a mark which is capable of distinguishing the goods or services of one person from those of others. The mark must be capable of being represented graphically and may include the shape of goods, their packaging and a combination of colours. A trademark is used in relation to goods or services, indicating a connection between the said goods and services and the identity of the seller of the goods or provider of such services.
In the course of years of trade, a supplier of goods and services acquires a significant reputation and his products and services come to be associated with his brand name or tradename. The goods or services would also be identifiable with reference to his marks, objects, graphics and other features identifiable to time. When another supplier of goods or services, uses such trademark or a deceptively similar trademark, the former obtains a cause of action for maintaining an action for infringement of trademark or for passing off.
One of the fundamental and essential ingredients for maintaining an action for trademark infringement. or passing off is the ‘likelihood of deception among the consumers’. The above aspect is determined by applying 3 parameters, otherwise called ‘the triple identity test’. The triple identity test has been applied by the judiciary to determine the similarity between two marks w.r.t the confusion caused in the mind of the general public.
The triple identity is as follows: (i) both the marks are similar or deceptively similar; (ii) they are used in relation to identical goods; and (iii) the goods have an identical trading channel.
The above test has been applied by various High Courts for granting injunctions and other reliefs. The concept could be better understood by discussing the following case law.
In Sumeet Research and Holdings Pvt. Ltd. and Ors. v. Sipra Appliances, the Honourable High Court of Delhi, applied the triple identity test. The plaintiff company in the said case, used the word “SUMEET’ since its inception and for marketing its power-operated mixers since 1963. The trademark was registered in 1970. The plaintiff was also the owner of the trademark, ‘SUMEET TRADITIONAL’. the defendant had entered into a contract with the plaintiff for selling specific models. The said agreement was terminated. The defendant continued to sell identical mixies with the trademark, ‘SUMEET’. The plaintiff contended that the use of the expression SUMEET or SUMEET TRADITIONAL by the defendant, post-termination of the contract is likely to cause confusion and deception amongst the purchasing public. He stated the defendant has unauthorisedly adopted the marks SUMEET and SUMEET TRADITIONAL with the mala fide intent to ride upon the goodwill and reputation of the plaintiffs. The Honourable Court held that due to extensive use over a substantial period of time, the plaintiffs' marks SUMEET AND SUMEET TRADITIONAL have acquired reputation and goodwill in the marks in India. The Honourable Court also held that the triple identity test is satisfied as the defendant has made use of an identical/deceptively similar trademark in relation to identical goods having an identical trade channel (products sold vide same trading channels).
Another prominent decision where the triple identity test was applied is the decision of the Delhi High Court in Telecare Network India Pvt. Ltd. vs. Asus Technology Pvt. Ltd. and Ors. In the said case, the plaintiff was the registered proprietor of the trademark, ‘ZEN’ and ZEN MOBILES’ and had been using the same on their mobile phones since 2008. Defendant adopted an identical trademark ‘Zenfone’. It was contended by the plaintiff that the defendant has also targeted the same category of customers. The defendant contended that the term ‘ZEN’ is a generic term and has been incorporated into the branding of the defendant’s phone, owing to their belief in the ‘Zen’ philosophy. The Honourable Court held that a trademark is a source identifier, in the sense that it enables the consumer to identify the source from which a product emanates. It was held that the triple identity test is satisfied as the defendants have made use of a deceptively similar/identical trademark (ZENFONE) in relation to identical goods (mobile phones) having identical trade channels.
It would be apposite in the present context to refer to the issue of ‘usage of trademarks in identical goods’ This issue has been answered by the Honourable Supreme Court in Corn Products Refining Company v. Shangrila Food Products Limited. In the said case, the appeal before the Supreme Court arose out of an application for the registration of a trademark under the Trade Marks Act, 1940. The respondent before the Supreme Court applied in 1949 for registration of the mark 'Gluvita' in respect of biscuits in class 30. Such marks had not been used prior to the application for registration. The appellant opposed the application since the appellant had a 1942 registration of the mark 'Glucovita' in class 30 in respect of dextrose or glucose powder and also for infants' and invalids' foods. The objection failed before the trademark registry and an appeal was carried before a Single Bench of the Bombay High Court. The appellant succeeded as it was held that the two marks were sufficiently similar so as to be reasonably likely to cause deception and confusion. The respondent preferred an intra-court appeal and it was held by a Division Bench that there was no evidence that the appellant's mark had acquired any reputation among the general public though it may have been well-known in the trade. It was also held that the evidence established that there were several marks carrying 'Gluco' or 'Vita' as prefix or suffix and, thus, it could not be said that the appellant before the Supreme Court could claim any exclusivity over such features of the mark. The Supreme Court read the evidence somewhat differently and opined that "it would be wrong ... to say that the appellant's trademark had not acquired any reputation among the general public and that hence there is no reasonable apprehension of their being confused or deceived by the use of the respondent's proposed mark." The Supreme Court was also critical of 'Glucovita' being judged on the basis of it being a combination of the common prefix or suffix 'Gluco' and 'Vita'. The Honourable Court held as follows:
The absolute identity of the two competing marks or their close resemblance is only one of the tests for determining the question of likelihood of deception or confusion. Trade connection between different goods is another such test. Ex hypothesis, this latter test applies only when the goods are different. These tests are independent tests. There is no reason why the test of trade connection between different goods should not apply where the competing marks closely resemble each other ... Whether by applying these tests in a particular case the conclusion that there is likelihood of deception or confusion should be arrived at would depend on all the facts of the case.
The triple test has found a significant place in Indian Trademark law and they are a great aid to courts in granting/refusing injunction against purported infringement of trademark and passing off. In many cases of trademark infringement, triple identity means that a trademark that has already been registered and owned by someone cannot be used by anyone else, even if the mark is slightly different; if this is the case, it will eventually result in deceptively identical marks, harming the goodwill of the originally registered trademark.
Also, see FDC Limited v. Faraway Foods Pvt. Ltd. MANU/DE/0230/2021; Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. and Ors. MANU/SC/1619/2017