The Delhi High Court is now Factoring in Neuroscience Research While Granting Injunctions in Trademark Disputes

On June 25, 2018, in a post titled “The Impact of Neuroscience on How Courts in India Typically Address Trademark Disputes”, Ryan Wilson, a senior associate at the firm, argued that under the traditional test of deceptive similarity followed by Indian courts for decades (i.e. perceiving rival marks through the lenses of an average consumer of imperfect recollection) brands are protected, “from multiplicity of associations in respect of the same kind of goods/services – unless the plaintiff proves that it has spent money and acquired a significant reputation in the mark, or if the defendants’ adoption of the mark is shown to be dishonest.” Since then, the Delhi High Court in The Gillette Company v. Tigaksha Metallics (Order dt. 09.07.2018 in CS(COMM) 153/2017) kicked up a hornet’s nest by issuing a temporary injunction on the basis of conceptual similarity alone upon recognizing developments in neuroscience research to deviate from the “traditional approach”. This post discusses how and why the Delhi High Court made this leap, and its implications of the future of trademark litigation in India.

The rival trade dresses in The Gillette Company case (depicted below) are undoubtedly dissimilar in appearance and sound. Even assuming that the trade dresses depicted below, are indeed conceptually similar, this begets the question – should injunctions, and temporary injunctions in particular, be granted on the basis of conceptual similarity alone even though the rival trademarks are dissimilar in appearance and sound?

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In The Gillette Company the Delhi High Court acknowledged that it deviated from the traditional “test applied by [c]ourts since the beginningi.e. assessing deceptive similarity between rival marks by factoring in the perception of a consumer of ordinary intellect. The Delhi High Court justified this departure in light of the “sweeping scientific advances in the study of the human mind and the way it works” that have unravelled “in the last . . . 50 years”. The court also acknowledges, that such advances in scientific literature warrant a greater emphasis on the conceptual similarity between marks “though on first blush, the possibility of confusing the two marks appeared to be remote.”

In 2015, a two-judge bench of the Delhi High Court’s (in Shree Nath Heritage Liquor v. Allied Blender & Distillery, 221 (2015) DLT 359) recognized the importance of creating “a parameter within which marks conveying similar ideas should be accorded protection under trademark law.” The court recognized the harm that would accrue from the “slippery slopei.e.to what extent such monopoly over the sense relations be extended under trademark law?”. Citing an example of five brands of orange juice named after islands of the Caribbean, the court asked if naming a brand of orange juice after any other island X (which is not in the Caribbean) would also be prohibited in stating that island X is a hyponym of the broader hypernym ‘Island’?

However, in The Gillette Company, the Delhi High Court appears to have taken the view that, in light of the nature of the rival trade dresses, the Caribbean Island-Orange Juice limitation discussed in Shree Nath Heritage Liquor was inapplicable. Considering this, and citing Nobel Laureate Daniel Kahneman’s book, “Thinking, Fast and Slow”, on the subject of how the human mind thinks and how we make choices, the judge felt that he “need say no more” (presumably because both trade dresses emphasize the idea of a “sword” on an in relation to identical goods i.e. razors) and ruled that the trade dresses depicted above were deceptively similar.

All in all, it appears that the Delhi High Court has struck the right balance in factoring in neuroscience research while granting injunctions in trademark disputes. The approach taken in The Gillette Company suggests that courts would protect brands from multiplicity of association if the compliant brand is able to show that such protection would not result in a slippery slope that would preclude honest traders – who have adopted marks that could possibly conjure associations to the complainant brand.