Delhi High Court
Institut Europeen D Administration Des ... vs Fullstack Education Private Limited & ... on 17 May, 2023
Author: C. Hari Shankar
Bench: C. Hari Shankar
Neutral Citation Number : 2023:DHC:3524
$~26(Original)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.O. (COMM.IPD-TM) 1/2021
INSTITUT EUROPEEN D ADMINISTRATION DES
AFFAIRES ,INSEAD, ASSOCIATION ..... Petitioner
Through: Mr. Anirudh Bakhru, Mr. Vijay
Laxmi, Ms. Sejal Tayal, Mr. Raghav Vig,
Mr. Yashvardhan Singh and Mr. Naqeeb
Nawab, Ms. Pragya, Advs.
versus
FULLSTACK EDUCATION PRIVATE LIMITED & ANR.
..... Respondents
Through: Mr. Kunal Tandon, Ms. Niti
Jain and Ms. Aanchal Khanna, Advs. for R-1
Mr. Balendu Shekhar, CGSC, Mr. Krishna
Chaitanya, Mr. R.K. Maurya and Mr.
Sriansh Prakash, Advs. for D-2
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
J UD G M E N T (ORAL)
% 17.05.2023
1. The petitioner runs a business school under the name Institut
Europeen D Administration Des Affaires Association, which
abbreviates to INSEAD. The respondent also runs a business school,
under the name International School of AI and Data Science, which
abbreviates to INSAID. The logos of the petitioner and the respondent
are admittedly different, the petitioner's logo being and the
respondent's logo being .
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Signed By:SUNIL
SINGH NEGI
Signing Date:22.05.2023
11:20:25
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2. Both the marks stand registered, in favour of the respective
parties. The petitioner possesses a registration for the word mark
INSEAD, in the following Classes:
(i) In Class 16 for Paper; Cardboard; Posters; Notebooks;
Calendars; Printed Matter; Newspapers; Books; Periodicals;
Albums; Prospectuses; Publications; Journals; Magazines;
Catalogues, Manuals (Handbooks), Pamphlets, Guides, Booklets,
Tests, Photographs; Paper Or Cardboard Media For Photographs;
Stationery; Instructional And Teaching Material (Except
Apparatus), Namely: Teaching Documents Such As Lecture Notes,
Case Studies, Course Syllabuses, Files, Brochures
(ii) In Class 35 for Business Consultancy Or Information.
Business Management And Organisation Consultancy, Efficiency
Experts, Business Management Assistance Projects, Market
Studies; Economic Forecasting. Assistance To Commercial Or
Industrial Firms In The Conduct Of Their Business; Statistical
Information; Dissemination Of Advertising Matter And Of Direct
Mail Advertising (Leaflets, Printed Matter, Samples,
Prospectuses). Providing Of Professional Training
(iii) In Class 41 For Providing Of Training; Education;
Instruction Services; Teaching; Arranging And Conducting Of
Colloquiums, Congresses, Seminars, Conferences; Arranging And
Conducting Of Training Workshops; Publishing And Publication
Of Books, Journals, Printed Matter, Newspapers, Magazines, CD-
ROMS; Reservation Of Seats For Shows; Organization Of Sports
Competitions; Organization Of Exhibitions For Cultural And
Educational Purposes; Correspondence Courses; Entertainment;
Organisation And Conducting Of Examinations And Educational
Tests; Providing Sports Facilities; Book Lending; Teaching
Establishments And Services, Notably For Commercial Training
Or Advanced Training, Or Business Administration And
Management; Schools; Institutes; Academies (Education); Library
Services; Educational Tests. Vocational Guidance (Education And
Training Advice).
3. The word mark INSEAD stands registered in the petitioner's
favour w.e.f. 7th August 2007, on ―proposed to be used‖ basis . The
petitioner also possesses registration for the device mark in
Classes 41, 35 and 16 with effect from 28th December 2012.
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Signed By:SUNIL
SINGH NEGI
Signing Date:22.05.2023
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Neutral Citation Number : 2023:DHC:3524
4. As againt this, the mark stands registered in
favour of the respondent in Class 41 covering ―Education; Providing
of Training; Enertainment; Sporting and Cultural Activites‖ with
effect from 12th February 2020, claiming user with effect from 14 th
December 2018.
5. The petitioner was founded in 1957 and claims to have, over a
period of time, become the foremost financial institution in the world.
The petitioner offers a wide variety of courses, including data science
and machine learning for executives. In 2010, the petitioner launched
its India-specific programme. Mr Bakhru has invited my attention to
the following recitals which figure on the petitioner's website, which
underscore the similarity between the petitioner and respondent as
educational institutions:
―Learning Outcomes
Understand key principles for analysing data and managing
analytics projects;
Learn to better identify new business opportunities for data
analytics, machine learning and AI, and the specific strategies
for extracting business value from data
Get introductory understanding of several cutting-edge
machine learning and AI techniques; generalized linear moels
(logistic regression), CART, random forests, methods for
segmentation and clustering, and neutral network.‖
6. According to the petitioner, the respondent's mark INSAID is
deceptively similar to the petitioner's mark INSEAD. The petitioner
asserts that the two marks are phonetically nearly indistinguishable. In
support of the submission that the two marks are confusing, the
petitioner has placed on record an e-mail dated 5th December 2020
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from a student to the petitioner, stating that he had erroneously
attended a programme of the respondent instead of the petitioner. The
email in question reads thus:
―From: Arvind kumar [email protected]
Sent: 5 December, 2020 5:27 PM
To: EUROPE Execed <[email protected]>; INSEAD
Executive Education <[email protected]>
Subject:
Fwd: 90 mins to go | Data Science MasterClass
Greetings !
Recently I got an emial for a Data science course and attended the
session for a few minutes before I realoised that this is not the
actual insead program. The links, names give a false impression to
people like me that the course is being conducted from INSEAD. I
hope they are harming the reputation of INSEAD with a name
which is very similar and people get trapped.
Best Regards,
Arvind Kumar
------Forwarded message ------
From: INSAID ([email protected]>
Date: Sat, Dec 5, 2020 at 9:30 AM
Subject: 90 mins to go | Data Science MasterClass
To: Arvind <[email protected]>‖
7. Drawing attention to the fact that the INSAID acronym of the
respondent is not formed out of the first letters of the words in the
name of the institution, Mr Bakhru submits that, thereby, the intent to
device a mark which would phonetically resemble the plaintiff's
INSEAD became apparent.
8. Mr Bakhru refers to an article by Manvender Singh, Chief
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Executive Officer (CEO) at the respondent-institution [which, in the
article, is conspicuously abbreviated as INSAID], written on 24 th
December 2013 and published in the Business Insider's e-paper
businessinsider.in, which reads thus:
―London Business School needs no introduction. Along with
INSEAD, it is considered one of the top two MBA programmes
outside the United States. Just pick up any business school
rankings and you will see it is quite rare when London Business
School has not made it to the list of top 10 B-schools globally.
The school offers a great programme, has a formidable alumni
network and because of its location in the heart of London, has
strong ties with the financial industry.
But of late, I have increasingly observed that many of my best
students are either not applying to LBS or keeping it as a ‗safe'
option. The five schools that mostly make it to the list of the top
Indian students are Harvard, Stanford, Wharton, INSEAD and ISB.
Sometimes LBS make it to their list; at other times it doesn't. I've
also observed that 7 out of 10 times, when students have offers
from both INSEAD and LBS, they end up choosing INSEAD. This
probably isn't good news for LBS and if the trend continues, it
may suffer the same fate that Wharton has suffered over the past
few years. Wharton's application volumes have decreased 17% in
the last 5 years and the acceptance rates have increased 22%,
almost double the acceptance rates for HBS and Stanford.
I regularly speak to many students to understand why they are
more interested in attending schools other than LBS and I see three
primary reasons.
1. Applicants view LBS as the go-to school only for finance. If a
student is keen on pursuing a career in investment banking, he
feels that LBS will open a lot of opportunities for him but
otherwise, he doesn't know what other doors LBS can open for
him. Post the financial crisis of 2009, students are increasingly
interested in pursuing careers in technology and entrepreneurship.
But LBS hasn't done much to position itself as a school that
provides a launch pad to students interested in pursuing diverse
career choices. While schools such as HBS and Wharton have
revamped their curricula to reflect the changing market dynamics
and are consistently delivering the message that they are breeding
more entrepreneurs than ever, LBS has been slow in its rebranding
efforts.
2. Another reason for declining interest (among the best applicant
pool) in LBS's MBA is the rapid emergence of its close rival
INSEAD over the past few years. With a new campus in Abu
Dhabi besides the existing campuses in France and Singapore,
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INSEAD's MBA programme is aggressively delivering a
consistent message that it is a highly international school that helps
its students launch a global career in whatever field they choose.
Apart from being a consulting juggernaut, INSEAD has one of the
best entrepreneurship programmes and is strong in luxury goods
and retail, too. Since many students enter MBA programmes to
explore new careers, they feel that they should rather be at
INSEAD where they have access to diverse career opportunities,
than at LBS where they will be primarily restricted to finance.
3. The third reason is the emergence of Indian School of Business,
Hyderabad, as a strong choice for Indians who form the largest
pool of MBA applicants outside the United States. A lot of Indian
students are staying back to join ISB even when they get through
to LBS. Since ISB is a partner school of LBS, many professors
from LBS come to teach here and applicants think it doesn't make
much sense for them to go to LBS and spend around $130,000
doing an MBA there, especially when the EU and the UK visa
rules have made it even more difficult for non-EU students to
secure jobs in Europe.
In spite of all this, I'm still very bullish on LBS for two reasons. I
believe that the programme is next to none and its problems are
more related to its stereotypical image of a finance school, rather
than any fundamental problem with the school itself. I also believe
that the biggest parameter for a top school is how successful the
school's alumni have been. LBS boasts some formidable and
highly successful alumni. Thirdly, LBS is one of the most
recognised brands globally. It takes decades for business schools to
build a strong global brand and the fact is that most in Asia or the
rest of the world would not recognise what INSEAD or HEC Paris
is, but most would know what LBS is. In short, the LBS brand is
here to stay.
The question is - can it change its stereotypical image? I believe it
definitely can. The school can take cue from HBS, Stanford and
Wharton, which in recent years, have revamped their websites and
changed their value propositions to prospective students to reflect
changing market dynamics and student aspirations. LBS's website
is minimalistic right now and I believe it could do much better by
highlighting its strengths in areas other than finance. For example,
LBS has one of the best programmes for entrepreneurship and the
faculty has absolutely stellar credentials. But the website doesn't
do much to highlight this.
I also think LBS has a strong brand and it is not going anywhere.
But then, if it doesn't evolve with the changing times, it may soon
find itself losing better quality students to its rivals such as
INSEAD. Having said that, I believe that LBS will soon follow the
footsteps of its American counterparts to position itself as a
programme where students do amazing things and a programme
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that is in sync with the changing aspirants of students.
Manvender is the Co-founder & Managing Director of Aristotle
Prep, a test prep company that provides popular test prep products
and publishes books for the GMAT & GRE across seven global
locations for students in more than 60 countries.‖
9. The petitioner, in these circumstances, issued a notice to the
respondent on 19th January 2021, calling on the respondent to cease
and desist from using the acronym INSAID, alleging that it was
deceptively similar to the petitioner's acronym INSEAD and was
creating confusion. Needless to say, the notice did not result in any
favourable response.
10. It is in these circumstances, that the petitioner has moved the
present rectification petition under Section 57 of the Trade Marks Act,
1999, for rectification of the Trade Marks Register by removal, from
the register, of the respondent's registered trademark INSAID.
11. The rectification petition has been seriously opposed by the
respondent.
12. I have heard Mr. Anirudh Bakhru, learned Counsel for the
petitioner and Mr. Kunal Tandon, learned Counsel for the respondent
at considerable length.
Rival Contentions
13. Mr. Bakhru submits that the petitioner enjoys, over the
respondent, priority both of registration and of use. The petitioner's
word mark INSEAD stands registered with effect from 7 th August
2007 and the petitioner's device marks stand registered with effect
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SINGH NEGI
Signing Date:22.05.2023
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from 28th December 2012. As against this, the respondent's device
mark stands registered with effect from 12th February 2020. The
petitioner has been using its mark in India prior in point of time to the
respondent.
14. On merits, Mr Bakhru submits that the acronyms INSEAD and
INSAID are, phonetically, confusingly similar and that, therefore, the
respondent's INSAID mark was not entitled to registration, in view of
Section 11(1)(b)1 of the Trade Marks Act, 1999. The likelihood of
confusion, resulting from the similarity in the marks and the services
provided, he submits, was manifested from the e-mail dated 5th
December 2020 received from the student. Mr Bakhru emphasises, in
this context that confusion has to be examined from the initial interest
point of view. The fact that the persons who would be using the said
marks happen to be students, asserts Mr. Bakhru, does not lessen or
mitigate, in any manner, the possibility of confusion. To support these
submissions, Mr. Bakhru has placed reliance on the judgment of this
Bench in Bacardi & Co. Ltd v. Bahety Overseas Pvt Ltd2 and Bulgari
SPA v. Notandas Gems Pvt Ltd3.
15. In anticipation of an objection from the defendant on that score,
Mr. Bakhru further submits that the nature of the consumer to whom
the services of the petitioner and respondent cater would not be a
relevant consideration. He cites, for this purpose, Baker Hughes Ltd
1
11. Relative grounds for refusal of registration. -
(1) Save as provided in Section 12, a trade mark shall not be registered if, because of -
(a) its identity with an earlier trade mark and similarity of goods or services
covered by the trade mark; or
(b) its similarity to an earlier trade mark and the identity or similarity of the goods
or services covered by the trade mark,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of
association with the earlier trade mark.
2
(2021) 284 DLT 529
3
2022 (90) PTC 171
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SINGH NEGI
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v. Hiroo Khushalani4 and certain passages from Mc Carthy on
Trademarks and Unfair Competition, to which I would allude later in
this judgment.
16. Inasmuch as the marks in question are deceptively similar, both
pertain to educational institutions and, therefore, both cater to students
who seek higher education, it is submitted that, even on the anvil of
the triple identity test, the petitioner is entitled to injunction.
(i) Mr. Bakhru has drawn my attention to certain statements
made by Mr. Manvender Singh, Chief Executive Officer of the
respondent, much prior to the application, for registration of its
INSAID mark, which indicates that Mr. Singh was aware of the
petitioner, its mark, and the reputation that it commanded
among business schools. This, he submits, is relevant as it
indicates that the adoption of the impugned INSAID mark is not
innocent but purposefully done so as to approach as close to the
petitioner's INSEAD mark as possible.
(ii) Mr. Bakhru further submits that, having been in the
knowledge of the petitioner's INSEAD mark, the respondent
when it chose an acronym for the name of its institution, ought
to have adopted an acronym which was dissimilar to INSEAD,
instead of one which came as close to INSEAD as possible.
(iii) The registration of the respondent's INSAID mark is in
violation of the Rule 33(1)5 of the Trade Marks Rules, 2017
4
(1998) 74 DLT 745
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read with Section 11(3)(a)6 and 57(2)7 of the Trade Marks Act,
1999. Mr. Bakhru has relied for this purpose, on the judgment
in DCM Shriram Consolidated v. Sree Ram Agro Ltd.8
(iv) No proper notice was given to the public before
registering the respondent's mark, as, in the notice extended to
the public on the website of the respondent, the petitioner's
mark did not figure.
(v) As the very initial adoption, by the respondent, of the
impugned INSAID mark was dishonest, the respondent was not
entitled to the benefit of Section 12 of the Trade Marks Act, for
which purpose Mr. Bakhru relies on para 30 of the judgment in
Mac Personal Care Pvt. Ltd. v. Laverana GMBH and Co.
KG9.
17. Responding to the aforesaid submissions of Mr. Bakhru, Mr.
Kunal Tandon, learned Counsel for the respondent disagrees, in the
first instance, with Mr. Bakhru's submission that the rival marks of
the petitioner and respondent are phonetically similar. He submits that
5
33. Examination, Objection to acceptance, hearing. -
(1) The Registrar shall cause the application to be examined as per provisions of the Act,
wherein a search shall also be conducted amongst the earlier trade marks, registered or applied for
registration, for the purpose of ascertaining whether there are on record in respect of the same
goods or services or similar goods or services any trade mark identical with or deceptively similar
to the trade mark applied for. The Registrar may cause the re-examination of the application
including research of earlier trade marks at any time before the acceptance of the application but
shall not be bound to do so.
6
(3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be prevented
-
(a) by virtue of any law in particular the law of passing off protecting an unregistered trade
mark used in the course of trade; or
(b) by virtue of law of copyright.
7
(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry
made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any
error or defect in any entry in the register, may apply in the prescribed manner to the High Court or to the
Registrar, and the Registrar or the High Court, as the case may be, may make such order for making,
expunging or varying the entry as it may think fit.
8
MANU/DE/0526/2012
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petitioner's mark is a three-syllable mark with IN, SE and AD
consisting of being distinct syllables whereas the respondents mark
INSAID is a two syllable mark consisting of the two syllables IN and
SAID. He submits that, while examining aspect of likelihood of
confusion, the Court is also required to take into consideration the
nature of the consumers who would be dealing with the rival marks.
The consumers who would be the persons interested in the marks of
the petitioner and the respondent, he submits, would be students who
seek entrance into such educational institutions. Such students, he
points out, are enlightened and there is little or no chance for a student
taking or securing admission in one institution instead of the other.
Moreover, he submits, the courses provided by the petitioner are
degree courses, whereas the courses provided by the respondent is
only a certificate course. Mr. Tandon reiterates that, therefore, there is
no chance of any person confusing between the petitioner's and the
respondent's institutions because of the rival marks.
18. Apropos the allegation of violation of Rule 33 of the Trade
Marks Rules, Mr. Tandon submits that failure to conduct a phonetic
search, at the initial stage of examination of the application for
registration of the marks, does not fatally imperil the registration once
granted. Such failure, even if it took place, he submits, cannot
constitute a ground to seek removal of the mark from the register
either under Section 47 or under Section 57 of the Trade Marks Act.
In this context, Mr. Tandon has placed reliance on the judgment of the
Supreme Court in Khoday Distillaries Ltd. v. Scotch Whisky
9
2016(65) PTC 357
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Association10, which specifically recognises the fact that the Registrar
of Trade Marks may, in a given case, even register a confusing mark.
19. Mr. Tandon further disputes Mr. Bakhru's contention that no
proper notice in this regard had been given to the public, of the
advertisement of the impugned mark, as the mark was not reflected in
the advertisement. He has drawn my attention to Section 2011 of the
Trade Marks Act read with Rule 2(l)12, 3913 and 4114 of the Trade
Marks Rules, to contend that the mark was required to be placed in the
physical trademark journal, in which it was always available. The
mere fact that the respondent's mark may not had been reflected in the
virtual advertisement on the respondent's website, he submits, cannot
be a ground to allege violation of the mandatory provisions relating to
registration of a mark.
20. Mr. Tandon has also pointed out that, in the present case, in
fact, the two marks were both device marks. As such, the aspect of
confusion, if at all, would have to be decided by comparing the two
device marks, and not by not comparing the words INSAID and
10
(2008) 10 SCC 273
11
20. Advertisement of application.--(1) When an application for registration of a trade mark has been
accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be
after acceptance, cause the application as accepted together with the conditions or limitations, if any, subject
to which it has been accepted, to be advertised in the prescribed manner:
Provided that the Registrar may cause the application to be advertised before acceptance if it relates
to a trade mark to which sub-section (1) of Section 9 and sub-sections (1) and (2) of Section 11 apply, or in
any other case where it appears to him that it is expedient by reason of any exceptional circumstances so to
do.
12
2. Definitions. -
(1) In these rules, unless the context otherwise requires, -
*****
(l) ―Journal‖ means the trade marks Journal made available at official website of
Controller General of Patents, Designs and Trade Marks;
13
39. Manner of Advertisement. -
(1) Every application for the registration of a trade mark required to be advertised by sub-
section (1) of Section 20 or to be re-advertised by sub-section (2) of that section shall be advertised
in the Journal.
14
41. Request to Registrar for particulars of advertisement of a trade mark. -
Any person may request the Registrar in Form TM-M to be informed of the number, and date of the
Journal in which a trade mark which is sought to be registered specified in the Form was advertised
and the Registrar shall furnish such particulars to the person making the request.
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INSEAD. When the two device marks are compared, Mr. Tandon
submits that the distinction between the two becomes starkly apparent
as they are written in entirely different styles and are accompanied by
logos which are completely distinct from each other. In fact, submits
Mr. Tandon, the two logos, when compared, belie any possibility of
confusion between them.
21. On the aspect of phonetic dissimilarity, Mr. Tandon has also
sought to contend that, even on the petitioner's website, the
petitioner's mark is pronounced as in-si-yaad, with three syllables,
which is completely different and distinct from the manner in which
the respondent's INSAID mark would be pronounced, with two
syllables. The plea of phonetic similarity is also, therefore, he submits,
bereft of merit.
22. I have heard learned Counsel for both sides and perused the
material on record.
Analysis
23. There is no dispute about the fact that the petitioner has, over
the respondent, the benefit of priority of registration as well as priority
of use. The petitioner's word mark INSEAD stands registered with
effect from 7th August 2007 and its device marks stand registered, in
all the three Classes 16, 35 and 41 with effect from 28 th December
2012. The respondent claims user, at the earliest, since 14 th December
2018. As such, the user of the petitioner's INSEAD mark is prior in
point of time to the user claimed by the respondent in respect of the
impugned INSAID mark.
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24. On the aspect of phonetic similarity, I am unable to accept the
submission of Mr. Tandon, learned Counsel for the respondent, that
the marks INSEAD and INSAID are not phonetically similar. What is
required, in such cases, is phonetic similarity, not phonetic identity.
The reliance, by Mr. Tandon, on the website of the petitioner, to
contend that the petitioner's mark is pronounced as in-si-yad, to my
mind, cannot advance the respondent's case. The aspect of phonetic
similarity has to be assessed from the point of view of the consumer,
and not from the point of view of either of the parties. A consumer,
again, is a consumer of average intelligence and imperfect
recollection. The consumer in question cannot be treated as one who is
over familiar with either of the marks.
25. The classical test to apply, in the matter of phonetic similarity,
is that postulated by Parker, J., in Pianotist Co. Application15:
―You must take the two words. You must judge them, both by their
look and by their sound. You consider the goods to which they are
to be applied. You must consider the nature and kind of customer
who would be likely to buy those goods. In fact you must consider
all the surrounding circumstances; and you must further consider
what is likely to happen if each of those trade marks is used in a
normal way as a trade mark for the goods of the respective owners
of the marks.‖
The Pianotist test has been applied, over the years, by Courts on
numerous occasions, including, inter alia, by the Supreme Court in
Amritdhara Pharmacy v. Satyadeo Gupta16, Cadila Health Care Ltd
v. Cadila Pharmaceuticals Ltd17 and Khoday Distilleries Ltd10.
26. Mr Tandon has stressed the fact that the rival marks, in the
15
(1906) 23 RPC 774
16
AIR 1963 SC 449
17
(2001) 5 SCC 73
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present case, were used for educational institutes, and that students
who desired to study at such institutes were an enlightened lot, who
know where to go. That may be an argument which is available to
defend a charge of passing off; but not a charge of infringement.
Infringement, in such cases, is to be decided on the basis of initial
interest confusion. In other words, if the marks are such that, when
they are initially encountered by the consumer, there is a chance of
confusion, infringement, ipso facto, stands made out. The fact that,
later, the confusion may be dispelled, and enlightenment may dawn,
does not wipe out the infringement which already stands committed.
27. A Division Bench of this Court identified four categories of
confusion, all of which attracted Section 29(1) and (2) of the Trade
Marks Act and resulted in infringement, thus, in Shree Nath Heritage
Liquor Pvt Ltd v. Allied Blenders & Distillers Pvt Ltd18:
―5. Confusion can be of the following categories:
• Point of sale confusion - this refers to confusion that
takes place at the time of purchase.
• Post sale confusion - this includes confusion of those
other than the purchaser.
• Initial interest confusion - this refers to confusion that
may be caused initially, i.e. prior to purchase, but at the
time of purchase of the alleged infringer/tortfeasor's
product or using its service, the consumer is not confused.
• Reverse confusion - this occurs when consumers
purchase the goods or use services of the senior user
thinking them to originate from the junior user.‖
(Emphasis Supplied)
In the same decision, the Division Bench distinguished ―confusion‖
from ―deception‖:
18
221 (2015) DLT 359 (DB)
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―6. When a person knows that the mark in question does not
originate from the senior user but the senior user is called to mind,
then it's a step before confusion. If on the other hand, the consumer
is in a state of wonderment if there's a connection, this is
confusion. Further, if this consumer then purchases the junior users
product, this is then deception.‖
(Emphasis Supplied)
28. Reverting, again, to Section 11(b)(2) of the Trade Marks Act, a
mark is disentitled to registration, thereunder, if,
(i) the mark is similar to an existing mark,
(ii) the marks are used for identical, or similar, goods or
services, and
(iii) because of the cumulative effect of these factors, there is
―likelihood of confusion among the public‖.
29. Applying these tests, it is seen that
(i) INSAID and INSEAD are phonetically similar,
(ii) they are used for similar services, of providing higher
education involving AI, and
(iii) applying the initial interest confusion principle, there is
likelihood of confusion, as, given the phonetic similarity of the
marks and the fact that they are acronyms for institutions
providig similar services, there is likelihood of a consumer,
even a student intending to take admission, on encoutering
INSAID after INSEAD, being placed in a state of wonderment
as to whether he had seen, or heard, the mark before.
Likelihood of confusion would, ipso facto, stand made out.
30. It cannot be definitively said that one would pronounce
INSEAD as in-si-yaad. ―-Ead‖ and ―-aid‖ are, for example,
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identically pronounced in ―dead‖ and ―said‖. What is needed is not
phonetic identity, but phonetic similarity and, between INSEAD and
INSAID, prima facie, phonetic similarity exists.
31. The submission that there is no phonetic similarity between the
INSEAD and INSAID, therefore, fails to impress.
32. One of the contentions advanced by Mr. Tandon was that the
competing marks in the present case are device marks, and not word
marks, and that, if the two marks are regarded as device marks, they
are dissimilar with no chance of confusion.
33. Section 11(1)(b) proscribes registration of a trademark which,
owing to its similarity of an earlier trademark, and identity or
similarity of the goods or services covered by the trademark, results in
a likelihood of confusion on the part of the public. As already noted,
confusion, in such cases, is required to be seen from the point of view
of the impression conveyed to the consumer at the stage of initial
interest. Further, it is also well settled that, when examining the aspect
of confusion, one is not to place the two marks side by side to
examine whether they are confusingly similar. The aspect of
confusion has to be examined when from the point of view of a
consumer of average intelligence and imperfect recollection who
comes across the mark of the petitioner in one point of time and
sometime later, comes across the mark of the respondent. If such a
consumer is likely to be placed in a state of wonderment, on seeing the
second mark, as to whether he has seen the same mark at an earlier
point of time, likelihood of confusion, within the meaning of Section
11(1)(b) of the Trade Marks Act, would exist.
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34. Again, I am not persuaded to accept the contention of Mr.
Tandon, predicated on the fact that the marks in question are device
marks. The law on this issue stands settled as far back as in
Amritdhara Pharmacy and K.R. Chinna Krishna Chettiar v. Shri
Ambal and Co.19. The Supreme Court has clearly held in both these
decisions, that, if the words, constituting the prominent parts, or
essential features, of both of the rival marks are similar or identical,
the mere fact that when, used as devices, the surrounding features of
the devices may by markedly different, cannot lessen or mitigate the
possibility or likelihood of confusion between the marks. In the
present case, the acronyms INSAID and INSEAD form the prominent
parts of the rival marks. Even otherwise, it is a matter of common
knowledge that, when referring to such acronyms of educational
institutions, the man on the street, i.e. the average consumer, would
remember the acronym, rather than the various pictorial features or
representations which accompany it. When, today, one refers to the
All India Institute of Medical Sciences, the average consumer
remembers the institute by the acronym AIIMS, and not by the various
figures which accompany the AIIMS acronym when used as a logo.
35. Where, therefore, there is marked phonetic similarity between
INSEAD and INSAID, mere fact that, in the overall logos of the two
marks, there may be accompanying pictorial representations or other
features which may distinguish the marks as device marks, cannot
detract from the confusingly similar nature of the two marks.
36. The contention of Mr. Tandon, predicated on the nature of the
19
MANU/SC/0303/1969
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consumer in question, i.e., in the present case, students, can also fail to
impress. On this aspect, it is well settled that the mere fact that,
especially in the matter of infringement, as compared to passing off,
the nature of the consumer who is dealing with the marks is a relevant
consideration only thus far and no further. One may refer, in this
context, to the following passages from Baker Hughes4, which
enuntiate the legal position in this regard:
―53. Learned counsel for the defendants pointed out that in this
country only three customers, namely, ONGC, Oil India and Essar
are buying oil field equipment and there is no likelihood of their
being deceived into buying the products manufactured by the
second defendant by mistaking them to be manufactured by the
plaintiffs. He emphasised that the purchasers have sophisticated
knowledge of the oil field equipment and the companies
manufacturing the same, and in such circumstances the action for
passing off is not maintainable. The learned counsel for the
defendants contended that in ascertaining the possibility of
deception or confusion it is important to identify the class of likely
consumers in each case and in a specialised limited market
consumers are not likely to be confused especially where they buy
goods directly from the manufacturer. The learned counsel referred
to passages from ‗Passing Off Law and Practice' by John Drysdale
and Michael Silverleaf, Second Edition (Butterworths, 1995), para
4.03; Law of passing Off by Christopher Wadlow, Second Edition
1995, and the decision rendered in John Hayter Motor
Undertaking Agencies Ltd. v. RBHS Agencies Limited20 : [1977]
Fleet Street Patent Law Reports 285.
54. I have given my anxious consideration to the submissions
of the learned counsel for the defendants on this aspect of the
matter. There can be an informed class of purchasers who have a
degree of knowledge and a sense of discrimination more substantial
than that of an ordinary purchaser, but the mere fact that the
customers are sophisticated, knowledgeable and discriminating
does not rule out the element of confusion if the trade marks/trade
names/corporate names of two companies are identical or if the
similarity between them is profound. In several cases it has been
held that initial confusion is likely to arise even amongst
sophisticated and knowledgeable purchasers under a mistaken
belief that the two companies using the same corporate name,
trading name or style are inter-related. It is the awakened
consumers who are more aware of the modern business trends such
20
[1977] 2 Lloyds Rep. 105
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as trade mark licensing, mergers, franchising, etc. It is this class of
buyers who are likely to think that there is some sort of association
between the products of two different companies when they come
across common or similar trade names or corporate names or
trading styles used by them. The sophistication of a buyer is no
guarantee against likely confusion. In some case, however, it is also
possible that such a purchaser after having been misled into an
initial interest in a product manufactured by an imitator discovers
his folly, but this initial interest being based on confusion and
deception can give rise to a cause of action for the tort of passing
off as the purchaser has been made to think that there is some
connection or nexus between the products and business of two
disparate companies. This view finds support from various
decisions gathered in Section 20.12 of the Filing Instructions 1988,
Fall Cumulative Supplement from Callmann ‗Unfair Competition,
Trademarks and Monopolies'. This Section reads as under:--
―But even apart from the doctrine of greater care, if the
manner of purchasing becomes routine, the possibility of
confusion can arise notwithstanding the expertise of the
purchasers (Layne-Western Co. v. Fry.21). The mere fact
that all the customers are discriminating technicians does
not by itself insure against confusion; being skilled in the
relevant art does not necessarily preclude confusion if the
similarity between the marks is great (Wincharger
Corpn. v. Rinco. Inc.22). ―The words ‗sophisticated' and
‗knowledgeable' are not talismans which, when invoked,
act magically to dissipate a likelihood of confusion. It must
also be shown how the purchasers react to trademarks, how
observant and discriminating they are in practice, or that the
decision to purchase involves such careful consideration
over such a long period of time that even subtle differences
are likely to result in a recognition that different marks are
involved before an irrevocable decision is made
―(Refreshment Mach., Inc. v. Read Industries. Inc.23‖.
***
―In some cases it has been held that a different type of
confusion, referred to as ―initial confusion‖, is likely to
arise even among sophisticated purchasers. As one court
has said; by intentionally copying the trademark of another
more established company, one company attempts to attract
potential customers based on the reputation and name built
up by the first user; the older company. The danger here is
not that the sophisticated purchaser [in the oil trading
market] will actually purchase from Pegasus Petroleum
believing that he has purchased from Mobil [Oil Co.], the
21
174 FSupp 621 (CCPA 1960)
22
297 F2d 261 (CCPA 1962)
23
196 USPQ 840 (TTAB 1977
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danger is that the purchaser will be misled into an initial
interest in Pegasus Petroleum based on a mistaken belief as
to the two companies' inter-relationships [Mobil Oil
Corp. v. Pegasus Petroleum Corp.24]
(Emphasis supplied).
It has also been suggested that sophisticated consumers, being more
aware of such modem business trends as trademark licensing and
conglomerate mergers, are more rather than less likely to suspect
some association between disparate companies or products when
they see what appears to be one company's mark on another's
product [Lois Sportswear, USA Inc. v. Levi Straus & Co.25]‖.
55. In John Hayter's case (supra) the court failed to notice the
principle that even the informed, sophisticated and knowledgeable
customers suffer from initial confusion where the corporate names
trade names or trade marks of two different companies are the same
or similar to each other. Therefore, the view expressed in the case
does not commend to me and compels me to respectfully depart
from the same.
56. In Mobil Oil Corp. v. Pegasus Petroleum Corp.24, the
court while dealing with the question of ‗initial confusion' held as
follows:--
―....... In short, the harm to Mobil is the likelihood that
potential purchasers will think that there is some connection
or nexus between the products and business of Pegasus
Petroleum and that of Mobil. ―Such initial confusion works
and injury to (Mobil)‖. See Grotrian-Steinweg26, supra‖.
57. In Lois Sportswear, USA. Inc. et al v. Levi Straus & Co.25,
the Court of Appeal, Second Circuit, held as follows:--
―The eighth and final factor--the sophistication of
relevant buyers--does not, under the circumstances of this
case, favour appellants. The district court found, and the
parties do not dispute, that the typical buyer of ―designer‖
jeans is sophisticated with respect to jeans buying.
Appellants argue that this sophistication prevents these
consumers from becoming confused by nearly identical
back packet stitching patterns. On the contrary, we believe
that it is a sophisticated jeans consumer who is most likely
to assume that the presence of appellant's trademark
stitching pattern on appellants' jeans indicates some sort of
24
229 USPQ 890
25
230 USPQ 831, 837 (CA2, 1986)
26
523 F. 2dat 1342 : 186 UPSQ at 445
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association between the two manufacturers. Presumably it
is these sophisticated jeans buyers who pay the most
attention to back pocket stitching patterns and their
―meanings‖. Cf. Steinway27, supra, (buyers of quality
pianos, being sophisticated, are more likely mistakenly to
associate piano manufacturers using similar trade names).
Likewise, in the post-sale context, the sophisticated buyer is
more likely to be affected by the sight of appellant's
stitching pattern on appellants' jeans and, consequently, to
transfer goodwill. Finally, to the extent the sophisticated
buyer is attracted to appellant's jeans because of the
exclusiveness of its stitching pattern, appellant's sales will
be affected adversely by these buyer ultimatem realization
that the pattern is no longer exclusive‖.
58. In Wincharger Corporation v. Rinco, Inc, 297 F2d 261
(1962), it was observed as follows:--
―It is true that in most instances technicians would
use the products of either party and they are a
discriminating group of people but that does not eliminate
the likelihood of purchaser confusion here. Being skilled in
their own art does not necessarily preclude their mistaking
one trademark for another when marks are as similar as
those here in issue, and cover merchandise in the same
general field‖.
59. Again in Grotrian, helfferich, Schulz. Th. Steinweg
Machf, a corporation v. Steinway & Sons28, a corporation,
striking a similar note the court held as under:--
Plaintiff argues that purchaser will not be confused
because of the degree of their sophistication and the price
(B & L Sales Associates v. H. Daroff & Sons29, Inc, supra).
It is true that deliberate buyers of expensive pianos are not
as vulnerable to confusion as to prodcts as hasty buyers of
inexpensive merchandise at a newsstand or drug store
[Callmann, Unfair Competition-Trademarks and
rd
Monopolies, (3 ed. 1971]. The sophistication of buyers,
however, does not always assure the absence of confusion
[Communication Satellite Corp. v. Comcet. Inc.30]. It is
the subliminal confusion apparent in the record as to the
relationship, past and present, between the corporate
entities and the products that can transcend the competence
of even the most sophisticated consumer.
27
523 F. 2d at 1341-42 : 186 USPQ at 444-45
28
365 F.Supp. 707 (1973),
29
421 F.2d at 354
30
429 F.2d at 1252
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Misled into an initial interest, a potential Steinway
buyer may satisfy himself that the less expensive Grotrian-
Steinweg is at least as good, if not better, than a Steinway,
Deception and confusion thus work to appropriate
defendant's goodwill. This confusion, or mistaken beliefs as
to the companies' inter-relationships, can destroy the value
of the trademark which is intended to point to only one
company [American Drill Busing Co. v. Rockwell Mfg.
Co.31]. Thus, the mere fact that purchasers may be
sophisticated or discriminating is not sufficient to preclude
the likelihood of confusion. ―Being skilled in their own art
does not necessarily preclude their mistaking one trademark
for another when the marks are as similar as those here in
issue, and cover merchandise in the same general field‖
[Id]. ‖
37. The mere fact that the consumers who would seek to take
admission in the institutions of the petitioner and the respondent are
students, therefore, is no guarantee against the likelihood of confusion
between the two marks. It is necessary to reiterate, in this regard, that
one is concerned with initial interest confusion. If, therefore, at an
initial interest stage, the student has a chance of confusing the
respondent's mark for that the petitioner, the tort of infringement
stands committed ipso facto. The mere fact that, later, the student may
be enlightened and come to realise that the two institutions does not
take away the effect of the initial interest confusion that has already
occurred.
38. Section 11(1)(b) of the Trade Marks Act prohibits registration
of a mark which, owing to its similarity to an earlier trademark,
combined with identity or similarity of the goods or services covered
by the two marks, results in a likelihood of confusion on the part of
the public. This provision is made only subject to Section 12 of the
Trade Marks Act, which permits registration of identical or similar
31
342 F.2d 1992 : 52 CCPA 1173 (1965)
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marks, where the use of the latter mark is found to be honest and
concurrent.
39. Prima facie, it is not possible to accept the use of the INSAID,
by the respondent, is honest and concurrent with the petitioner's mark
INSEAD. Mr. Bakhru has drawn my attention to the material, already
referred to hereinabove, which indicates that Mr. Manvender Singh,
Chief Executive Officer of INSAID, was well aware of the reputation
of the respondent as well as of the fact that the acronym of the
petitioner's institution was INSEAD. In fact, even in the interview of
Mr. Manvender Singh, which figured on the website of the
respondent, he is referred to as Chief Executive Officer at INSAID.
Mr. Manvender Singh, the CEO of the respondent, therefore, chose to
adopt the acronym INSAID in full awareness of the petitioner's
acronym INSEAD and later in point of time. It cannot, therefore, be
held, prima facie, that the use of the acronym INSAID which is
phonetically similar to the acronym of the petitioner is honest or
concurrent. At the very least, that would be an aspect which would
have to be decided consequent to trial.
40. Mr. Bakhru has also questioned the registration of the
respondent's mark as being violative of Rule 33 of the Trade Marks
Rules, 2017. He has pointed out that, when a phonetic search of the
mark of INSAID is given, the petitioner's mark INSEAD turns as one
of the suggested similar marks. This Court had, therefore, vide order
dated 27th January 2023 directed the Registrar of Trade Marks to
place, on affidavit, the result of the preliminary search which had been
conducted when the respondent applied for registration of the mark
INSAID. The affidavit which has been placed on record indicates that
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no phonetic search was conducted and that a mere word mark search
was conducted, which did not throw up the petitioner's INSEAD mark
as a suggested similar mark.
41. As neither Counsel is able to draw my attention to any fixed
guideline which envisages the nature of the searches which are
required to be conducted when an application is submitted for
registration of a mark, it is not possible for me to invalidate the
registration of the respondents' INSAID mark on the sole ground that
the initial search under Rule 33 of the Trade Marks Rules, was not
properly conducted, as no phonetic search was carried out. The plea of
Mr. Bakhru that, on that ground, the registration of the impugned
mark should be set aside cannot, therefore, be accepted. However, in
order to avoid such confusion in future cases, I deem it appropriate to
direct that, where an application is submitted for registration of a mark
which involves a word, then,even at the preliminary stage, a word
mark search as well as a phonetic search should be conducted, so that
the possible marks which are phonetically similar to the mark applied
for, are thrown up as suggested results. Needless to say, it would be
for the Registrar to take a view as to whether any of the suggested
marks are actually phonetically similar to the marks for which the
registration is applied, within the meaning of Section 11(1)(b) of the
Trade Marks Act.
42. For the aforesaid reasons, I am unable to sustain the registration
of the respondent's mark, as, owing to its similarity to the petitioner's
existing earlier trademark INSEAD, and the similarity of the services
provided under the two marks, which are both educational services,
there exists a likelihood of confusion, on the part of the public,
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between the two marks. The case, therefore, falls entirely with in the
four corners of Section 11(1)(b) of the Trade Marks Act.
43. For the aforesaid reasons, the petition succeeds. The impugned
registration no. 4438201 of the impugned device mark INSAID shall
stand quashed and set aside.
44. Let a copy of this order may be communicated to the Registrar
of Trade Marks for appropriate action.
C. HARI SHANKAR, J.
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