Takkar (India) Tea Company v. Soongachi Tea Industries Pvt. Ltd.
2010 (44) PTC 90 (Del)
Intellectual Property Appellate Board held that the mark of the Petitioner, being ‘GOLD LEAF’ is similar to the mark of the Respondent being ‘SONA’ for tea leaves and denied registration of the same. Aggrieved by the said order, the Petitioner filed the present petition.
The application was ordered to be advertised subject to a disclaimer, namely “registration of this trade mark shall give no right to the exclusive use of the word ‘LEAF’.
There was a fundamental error by the IPAB as it split the mark ‘GOLDLEAF’, into ‘GOLD’ and ‘LEAF’ and compared part of the mark with the competing mark ‘SONA’.
If the meaning conveyed by the marks was the same, the idea conveyed would be the same and that would result in deception and confusion.
The application of the Petitioner was ordered to be advertised subject to a disclaimer, namely “registration of this trade mark shall give no right to the exclusive use of the word LEAF”.
The word ‘LEAF’ was indicative of the grades of tea and by itself was incapable of describing the origin of tea. He urged that the comparison had to be of the claimed distinctive features of the mark in order to ascertain the idea conveyed by the mark.
Marks must be compared as a whole.
No deceptive similarity between the two marks.
The customer looking at both the packets is not likely to notice immediately the two marks as ‘GOLD LEAF’ and ‘SONA’ and automatically start translating the word ‘SONA’ into ‘GOLD’ by keeping aside the disclaimed portion ‘LEAF’. From the point of view of the consumer, it is but natural that both marks will be viewed as they are.
When Gold Leaf is translated into Hindi it should read ‘Sona (ka) patta’ and not just ‘Sona’.
It is unlikely that even a discerning consumer will immediately begin to dissect the Petitioner’s mark into its generic/descriptive and distinctive parts. It is unlikely that a consumer will know that a part of the mark is disclaimed and therefore has to be kept out of comparison. Even more unlikely is the possibility of a consumer beginning to reflexively translate the English word Gold into its Hindi equivalent Sona, and then conclude that they convey the same ‘idea’ and consequently get deceived or confused about the source of both goods being the same.
The Petition was allowed.