Summary Judgment Granted for Deceptive Similarity and Infringement of the Registered Trademark ‘PROTINEX’

In brief

The question

1. Whether the Plaintiff is entitled to a summary judgment against the Defendants under Order XIII-A of the CPC due to the lack of a real prospect of a successful defense.

The court held

The court answered both issues in the affirmative, allowing the application for summary judgment. It held that the Impugned Marks were deceptively similar to ‘PROTINEX’ and that the Defendants' actions constituted infringement and passing off.

It also directed

The suit was decreed in favor of the Plaintiff against Defendant Nos. 1, 3, 4, 5, and 6, granting a permanent injunction and the reliefs prayed for in Paragraph 125(a) to (e) of the Suit. The court ordered the preparation of the decree sheet and disposed of all pending applications.

01Facts

The Plaintiff, a member of the Danone Group, is the registered proprietor of the trademark ‘PROTINEX’, used in India since 1957 for protein supplements.

¶ 9.1–9.2

The Plaintiff alleged that Defendant No. 1 (marketed by) and Defendant No. 4 (manufactured by) were using the mark ‘PROTEX’ (Impugned Mark No. 1), while Defendants 4–6 were using ‘PROTRILEX’ (Impugned Mark No. 2) for identical goods.

¶ 9.7–9.8

Notably, Defendants 4–6 had previously settled a similar infringement suit (CS(COMM) 306/2020) regarding the mark ‘PROTILEX’ but continued infringing activities.

¶ 9.9

Despite being duly served, Defendants 1, 3, 4, 5, and 6 failed to file written statements within the statutory period, leading the court to close their right to defense and proceed ex-parte.

¶ 5–7

The Plaintiff subsequently moved an application for summary judgment under Order XIII-A of the CPC.

¶ 1

02Issues

i.1. Whether the Plaintiff is entitled to a summary judgment against the Defendants under Order XIII-A of the CPC due to the lack of a real prospect of a successful defense.

¶ 1, 12

ii.2. Whether the Impugned Marks ‘PROTEX’ and ‘PROTRILEX’ are deceptively similar to the Plaintiff’s registered mark ‘PROTINEX’, causing a likelihood of confusion.

¶ 14–15

03Law Applied

The court applied Order XIII-A of the Code of Civil Procedure (CPC), 1908, which allows for summary judgment in commercial disputes when a party has no real prospect of successfully defending the claim.

¶ 1

Regarding trademark infringement, the court relied on Section 29 of the Trade Marks Act, 1999, which defines deceptive similarity.

¶ 13

It further invoked the "Initial Interest Confusion Test" as established in Under Armour Inc. v. Anish Agarwal, holding that confusion even at the initial stage is sufficient to attract infringement.

¶ 13

Additionally, the court cited Inter Ikea Systems BV v. Imtiaz Ahamed to establish that defendants should not benefit from evading court proceedings.

¶ 11

Provisions in the judgment · 1

Trade Marks Act, 1999 Section 29, 135

04Reasoning

The court found that the Plaintiff established a strong case of statutory and common law rights through continuous use since 1957 and extensive registrations.

¶ 9.2, 14

Upon comparison, the court noted that ‘PROTEX’ was derived by merely omitting the letters ‘IN’ from ‘PROTINEX’, and ‘PROTRILEX’ was created by substituting ‘N’ with ‘L’ and adding ‘R’. These minor/cosmetic variations were deemed "dishonest adoptions" intended to ride upon the Plaintiff’s goodwill.

¶ 9.11, 14, 16

Applying the Initial Interest Confusion Test, the court reasoned that the structural, visual, and phonetic similarities would inevitably lead the public to associate the Defendants’ products with the Plaintiff.

¶ 15

Since the Defendants failed to raise any defense or participate in trial, the court concluded there were no "real prospects" for a successful defense, making the matter fit for summary adjudication without a full trial.

¶ 12, 16