In a recent judgment, the Hon’ble Delhi High Court quashed and set aside the registration of a Trademark and directed the Learned Registry of Trademarks to carry out a more diligent phonetically similar Trademark search.
Petitioner’s Mark Respondent’s Mark 

The Hon’ble Delhi High Court, in the matter of Institut Européen d’Administration des Affaires, INSEAD Association v Full Stack Education Private Ltd, delivered a judgment wherein it had quashed and set aside the registration of a Trademark. The court also directed the Learned Registry of Trademarks to conduct a more diligent search for phonetically similar Trademarks. This ruling highlights the importance of conducting thorough investigations for phonetically similar marks before registering a Trademark. It also emphasizes the need for the Learned Registry of Trademarks to exercise due diligence in carrying out such searches to ensure that the rights of existing Trademark holders are protected and that new registrations do not infringe upon those rights.

The present case is a trademark infringement suit filed by the petitioner, Institut Européen d’Administration des Affaires, INSEAD Association, against the respondent, who uses a similar mark, “INSAID,” for educational services in India. The petitioner is a renowned graduate business school with campuses in various countries and has been operating since 1957. The petitioner has registered its device mark “INSEAD” under three different classes, namely class 16, class 35, and class 41, effective from 07th August 2007. The respondent, on the other hand, is a relatively new entrant in the market and has registered its mark “INSAID” under class 41 with effect from 12th February 2020. The petitioner contends that the respondent infringes its registered mark by using a phonetically similar mark that is likely to cause confusion and deception among the public, especially among the prospective students seeking to enroll in the petitioner’s institution. The petitioner also alleges that the respondent has adopted its mark with mala-fide intention and with full knowledge of the petitioner’s reputation and goodwill in the market. To substantiate its claim, the petitioner relies on several pieces of evidence, including an email dated 05th December 2020 sent by a student who mistakenly attended the respondent’s program instead of the petitioner’s orientation session. The petitioner also invokes the Triple Identity Test, a legal test to determine whether two marks are deceptively similar based on their visual, phonetic, and conceptual similarity. The petitioner argues that its mark and the respondent’s are phonetically similar, if not identical, and that they relate to the same category of services under class 41. The petitioner further states that it had sent a Cease and Desist notice to the respondent on 15th December 2020, asking them to stop using the ” INSAID ” mark and refrain from infringing the petitioner’s “INSEAD.” However, the respondent did not respond to the notice or comply with its directions. Therefore, the petitioner approached the court of law seeking an injunction order against the respondent to restrain them from using the impugned mark and to protect the petitioner’s rights and interests under section 11 of the Trademarks Act. 

In their defense, the respondents raised several arguments to counter the petitioner’s claim of trademark infringement. They asserted that their mark “INSAID” was not phonetically similar to the petitioner’s “INSEAD,” as they had different syllables and sounds. They pointed out that the petitioner’s mark consisted of three syllables, namely “IN,” “SE,” and “AD,” while their mark had only two syllables, namely “IN” and “SAID.” They also emphasized that the pronunciation of their mark’s second syllable differed from that of the petitioner’s mark, as it sounded like “said” and not like “see.” They contended that this phonetic difference was sufficient to distinguish their mark from the petitioner’s and avoid any confusion among the public. Another argument put forth by the respondents was that both the marks were device marks, which meant that they had a graphical or pictorial representation along with the word. They submitted that in such cases, the comparison between the effects should not be based solely on the word element but also on the overall appearance and impression of the marks. They claimed that their device mark had a distinctive design and color scheme that made it visually different from the petitioner’s device mark. They argued that this visual difference was also enough to differentiate their mark from the petitioner’s mark and prevent any public deception. A further argument advanced by the respondents was that both the marks were related to educational services, which catered to a specific segment of consumers who were students seeking higher education. They averred that such consumers were intelligent and well-informed and would not be easily misled by the similarity of the marks. They stated that such consumers would exercise due care and diligence while choosing an educational institution and would not rely merely on the name or logo of the institution. They contended that this factor also eliminated the possibility of any confusion or mistake among the public caused by the use of their mark. These were the main contentions submitted by the respondents before the court of law to defend themselves against the allegation of trademark infringement made by the petitioner.

Observation of the Court

The case involved a dispute over the similarity of two trademarks, one belonging to the petitioner and the other to the respondent. The petitioner claimed that the respondent’s mark infringed its registered mark and also amounted to passing off. The respondent argued that the marks were not confusingly similar and that the students, who were the target consumers of both parties, were intelligent and well-informed and would not be easily misled by the similarity of the marks. The court of law rejected this argument and stated that it was relevant for the matter of passing off but not for the matter of infringement. The court applied the classic test of Pianotist, which was upheld by the Supreme Court in the case of Amritdhara Pharmacy versus Satyadeo Gupta, to determine whether the marks were confusingly similar. The Pianotist test is an objective test that compares the marks by their appearance, sound, and meaning and considers the goods or services to which they are applied and the type of customers who buy them. The court found that both the marks were not phonetically identical but phonetically similar and were applied to similar goods in the same class.

Therefore, the issue fell within section 11 (1) (b) of the Trademarks Act, which prohibits the registration of a mark that is deceptively similar to an earlier mark regarding identical or similar goods or services. The court accepted the petitioner’s contentions and quashed and set aside the registered mark of the respondent. The court also directed the Learned Registry of Trademarks to file an affidavit stating the preliminary search that was conducted by it while examining the trademark application of the respondent. Upon receiving the affidavit, it was revealed that the Learned Registry of Trademarks conducted no search for phonetically similar trademarks. The court expressed its displeasure at this lapse and directed the Learned Registry of Trademarks to conduct an efficient public search for phonetically similar trademarks in the future.

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Nidhi Bakshi
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