INTRODUCTION
Whenever a person wishes to buy something, he starts by looking for the best option available in the market. There are several factors on which the choice of consumers depends. Sale of a product except for the other factors also depends on the initial interest of the consumer involved in a product. While the product sells because of the quality, some portion of its sale also occurs because of a reason of initial interest of the consumer towards the product.
Initial interest confusion is distinct from confusion over the identity of two trademarks, these two should not be confused with each other. It is associated with confusion over the timing of the search for a product. When someone is searching for a product for the first time, it is in this time frame that the initial interest confusion occurs.
WHAT IS THE DOCTRINE OF INITIAL INTEREST CONFUSION UNDER TRADEMARK LAW?
Initial interest confusion is a step by competitors to infringe trademarks by tricking consumers into linking a product/service with another brand as a consequence of trademark similarity. Such confusion can arise right from the first stage itself even prior to the consumer’s decision to purchase the product.
The core of this doctrine is that it targets the first point of interest of the consumer, but not the final buying decision. As an example, a consumer is shopping for “Brand X” online but winds up at “Brand Y” because there has been some overlapping branding or name. They may initially believe that “Brand B” is somehow affiliated with “Brand A.” Even if at some future time they realize that “Brand B” has no connection to “Brand A,” the initial mistake has already been made, and that can harm both the reputation and customer base of the first brand.
One of the earliest uses of this doctrine was done by the U.S. Court of Appeals for the Second Circuit in the case of Grotrian, Hellferich, Schulz Th. SteinwegNachf v. Steinway & sons. The court held in this case that the consumer had presumed at the beginning that “Steinweg pianos” were somehow connected with “Steinway”. But at the point of completion of the transaction of sale and purchase, the consumers were not deceived and fully aware that “Steinweg pianos” have no connection or relation to “Steinway pianos”. Despite having the same, it was ruled by the court that “Steinweg” has caused infringement of the registered mark of “Steinway” because the consumers had been misled at some initial stage.
LEGAL PROVISION CONCERNING DOCTRINE
Section 29(1) of the Trademarks Act, 1999 states that there must be similarity in trademarks that causes a likelihood of confusion for trademark infringement. Confusion is likely at the point of sale when the infringing party is taking advantage of the reputation already gained by the trademark. On the contrary, in initial interest confusion, there is confusion before purchase but the customer acquires a taste for the product even though he realizes the disparity before consummating the sale. This can be done in different ways, for instance, by using someone else’s trademark as a meta tag. The courts have deemed it to be an infringement in their decisions time and again.
FOODLINK F AND B HOLDINGS PRIVATE LIMITED V. WOW MOMO FOODS PRIVATE LIMITED
Facts of the case:
The plaintiff, Foodlink F and B Holdings India Private Limited had been registered as “CHINA BISTRO,” and the defendant, Wow Momo Foods Private Limited was utilizing the trademark “WOW CHINA BISTRO.” The plaintiff alleged that the defendant was infringing the terms of the trademark registration, which has been in class 43 since January 11, 2012, and covers a broad category of businesses like restaurants, bars, snack bars, hotels, cafes, cafeterias, canteens, catering, outdoor catering, food courts, and stalls. The “WOW! CHINA,” being a device mark, was used by the defendant until 2019.
They then supplemented the word element “BISTRO” below the word “CHINA” to create the mark “WOW! CHINA BISTRO.” Plaintiff claimed that Defendant’s mark is confusingly similar to theirs because of the placement of the word element “BISTRO” below “CHINA” in the mark. Both marks now bear the inscription “CHINA BISTRO,” the Defendant’s mark being identical except for the addition of “WOW!” over “CHINA.” The plaintiff stated that for even the average client who has a bad memory, such a “WOW!” is not enough to dispel possible confusion. The contested mark was never registered with the defendant. Both terms were employed for upscale dining restaurants serving Chinese cuisine, identical services.
Plaintiff’s arguments:
The plaintiff contends that Individual components of a composite mark may be not distinctive but, collectively, they constitute a distinctive mark. The passage quotes the example of two words that are ordinary when used separately but, combined, are distinctive. However, the passage continues to explain the distinctiveness of a composite mark as not necessarily founded on its components being distinctive. In some cases, a composite mark can be distinctive even when its elements are not distinctive, provided that when assembled, the elements form a distinctive mark.
The text further observes that the composite mark CHINA BISTRO, by itself, is not in a position to be held as lacking distinctiveness, particularly given the fact that no supporting document is provided by the defendant. This means that the uniqueness of a composite mark is relative and will be a function of diverse factors, such as the nature of the different elements of the mark and the context in which the mark is being used.
Arguments of the defendant:
During the judicial process, the defendant objected to the plaintiff’s right to bring an action for infringement. As in the opinion of the defendant’s lawyer, words “CHINA” and “BISTRO” are generic names and in global usage, hence they are not distinctive and unable to be trademarked separately. Moreover, the defense attorney further added that registration of the plaintiff’s trademark, which was carried out on July 18, 2006, was in a device mark in Class 42. The mark was used in a variety of services from restaurants to bars, snack bars, hotels, cafes, and cafeterias. The registration contained a disclaimer, though, that the plaintiff did not reserve exclusive rights in the word “China” and “Bistro” unless otherwise stated.
Observation of the court:
The court noted that since it was held that the provided mark was not a combination of words but was distinctive in nature. The term “BISTRO” may be used synonymously with the term “cafe,” but it was claimed that the term was not commonly used. As opposed to “CHINESE CAFE,” the composite word “CHINA BISTRO” differed, and thus should be granted legal protection.
In its decision, the court directed that the defendant was restrained from adopting the mark/name or WOW CHINA BISTRO as a trade mark, label, device, trading style, trade name, logo, keyword, meta tag, domain name, or in any other form similar to “CHINA BISTRO,” save for “WOW CHINA LIVE CHINESE” and “WOW! CHINA” and that under Section 17 of the Trade Marks Act, marks are to be compared as a whole. According to this, the signs “WOW China Bistro” and “China Bistro” were held to be deceptively similar since they used the identical word elements while the difference between them was merely in the prefixes.
CONCLUSION
In the case of Foodlink FB Holdings India Private Limited v. Wow Momo Foods Private Limited, initial interest confusion occurred due to the defendant’s adoption of the mark “WOW CHINA BISTRO,” which is very similar to the plaintiff’s registered mark “CHINA BISTRO.” The court observed that even with the prefix “WOW” added, the essential elements of both marks, “CHINA” and “BISTRO” are the same, resulting in a misleading similarity.
This resemblance can confuse consumers who might at first instance think that “WOW CHINA BISTRO” is affiliated with or sponsored by the plaintiff. Consequently, even if later on the consumers realize that the two businesses are different, the initial impression given by the similarity of the marks may cause confusion and damage the reputation and goodwill associated with the plaintiff’s trademark.
The case highlights the importance of evaluating the distinctiveness of composite marks and the overall impression created by the mark.
Author: Manasi Mishra
Wish to read similar articles? Click the link to read more: https://jpassociates.co.in/blog-copyright-infringement/
Link to the complete judgement: https://indiankanoon.org/doc/5839808/
