Delhi High Court Gives “Likelihood of Confusion” A Psychological Twist

In the case of Gillette Company LLC v. Tigaksha Metallics Private Ltd. & Anr[1]., Hon’ble Mr. Justice Endlaw passed an order of ex-parte injunction against the Defendants, abstaining them from infringing the Plaintiff’s trademarks. This decision seems to be based on psychological theories and research about memory and associative thinking on the part of a consumer.

The Plaintiff, Gillette Company, had filed the suit for permanent injunction against the two Defendants Tigaksha Metallics Private Limited and Supermax Personal Care Pvt. Ltd., restraining them from infringing their trademarks “WILKINSON SWORD”/ “LEMON SPLASH” of the Plaintiff by adopting the mark “TALVAR” and/or the device of a sword and/or deceptive variations of the Plaintiff’s trademarks, thereby passing off their goods as that of the Plaintiff’s. The trademarks of the Plaintiff, as well as the Defendants’, had the depiction of a sword and thus the Plaintiff claimed that the Defendants had adopted a deceptively similar variation of their marks in respect of identical goods.

In particular, the Plaintiff claimed that the device of a sword was a distinguishing feature in their trademarks and the same was being used by the Defendants with mala fide intention.

Therefore, the Plaintiff argued that “TALVAR” is the literal translation of the word “SWORD” and also contended that the trademarks are conceptually and visually similar in depiction. The Plaintiff’s trademarks embodied the depiction of the double-edged swords and the Defendants had adopted a mark containing a single sword and both the marks were written in italics. It was further contended that the Plaintiff has prior rights since they had been using the trademarks since 1962 whereas the Defendants adopted their mark in June 2016.

On the other hand, the Defendants contended that they had been using the trademark “ZORRIK” since the past 50 years. It was also contended that the term "SWORD” is not the registered trademark of the Plaintiff. Further, they claimed that since the launch of their product, they had sold razor blades worth Rs.6.87 Crores and had put in Rs.2 Crores in advertising the product. Moreover, they claimed that the target audience of the two were different and since the pricing of the products was different there was no question of deception or confusion between the products of the Plaintiff and the Defendants.

Hon’ble Mr. Justice Endlaw in this judgment decided the case not purely on the basis of precedents in this area of the law or what has been followed so far but on the basis of the element of scientific advancements in the study of the human mind and how it functions. In his judgment he states;

"The test applied by the courts since the beginning has been of the way a consumer with ordinary intelligence would perceive the two marks and whether such a consumer would be able to distinguish the goods under the two or is likely to be taken for a ride owing to similarity/ deceptive similarity. However, in the last 50 years, there have been sweeping scientific advances in the study of the human mind and the way it works. Unfortunately, however, the courts, in deciding such cases, have not taken the benefit of the said scientific advancement, in arriving at the conclusion about the perception of a consumer with ordinary intellect."

The Hon’ble Judge forayed into various researches and psychological theories in order to decide this judgment. One such theory discussed is an article published in the Journal of Consumer Psychology (2012) titled “Branding the Brain: A Critical Review and Overview”. This theory states that remembered value refers to how different brand associations are stored in the mind of the consumer. It consists of the explicit memory and also the implicit memory of a prior experience. Retrieval of that memory is a dynamic relearning process.

In the present case, it was discussed whether words which convey the same ideas should be protected or not and it was observed that in the case of Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillery Pvt. Ltd.[4] it was held that;

“…we may arrive at the conclusion that marks containing words with the same sense relation (or falling in the same sematic field or conveying the same or similar idea in the mind) as that of previously existing marks are likely to be considered so similar as to be refused registration or deemed to constitute infringement of the previously existing trademark.”’

Following similar lines, in the present case it was held that the words “SWORD” and “TALVAR” are words conveying the same meaning in respect of the same product and the Defendant’s mark is a deceptively similar variation of the Plaintiff’s mark, therefore, the likelihood of confusion amongst consumers cannot be ruled out.

Hon’ble Mr. Justice Endlaw cited the case of Prathiba M Singh v. Singh and Associates[5], wherein the theory of “word association” has been applied, which means “stimulation of an associative pattern by word”. In simpler words, it means that our mind associates words with other concepts and words are not stored in isolation. Therefore, applying this theory in the present case, the Hon’ble Judge held that there will certainly be confusion in the minds of the consumers since both the trademarks, being similar in depiction, are in relation to the same product i.e. safety razor blades. Thus, the court allowed the continuation of the temporary injunction against the Defendants and dismissed their application to set aside the interim injunction.

This judgment seems to have extended the scope to the test of likelihood of confusion and what seems unsettling is the fact that now judges may also now be required not only to understand psychology to an extent but to also observe behavioral patterns in order to decide such cases. The question then arises that would judges require training in the social sciences? The scope would be extended much further away from a mere visual and phonetic similarity thereby leading to a lot of uncertainty in this area of the law.

Furthermore, while the “likelihood of confusion” test is the cornerstone of trademark law, applying associative thinking theories could hinder the rights of trademark holders and give competitors much lesser freedom to use words and other intellectual property as well.

In conclusion, this judgment seems to have opened up a much broader spectrum to the "likelihood of confusion" test and at the same time has in itself a tendency to cause some uncertainty in the law by rejecting well-settled principles and precedents.

[1] CS(COMM) 153/2017

[2] https://www.gillette.co.in/en-in/products/razor-blades/replacement-razor-blades/wilkinson-sword-blades

[3] https://m.ebay.com/itm/7-Parker-Premium-Double-Edge-Safety-Razor-Blades-1-Bonus-Blade-/263713488854

[4] 221 (2015) DLT 359

[5] 2014 SCC Online DEL 1982

The article was originally posted on www.lexology.com on August 09, 2018 and can be accessed here.