Safiya Malik

A recent judgement by the Calcutta High Court has addressed a trademark dispute between two companies in the scientific instruments industry. The court has granted an injunction restraining the use of the contested trademark, citing its similarity to an existing mark and the likelihood of consumer confusion.

The dispute arose between a petitioner company engaged in the business of selling and distributing electrical and electronic measuring instruments and a respondent company operating in a similar domain. The petitioner, incorporated in 2009, asserted that its predecessor in interest had coined and adopted the mark in question as early as 1998. The mark had been continuously used and registered, and the company had invested substantially in its promotion, thereby acquiring significant goodwill. The predecessor, M/s Arun Enterprises, had initially coined and used the mark "METRAVI" in connection with scientific and industrial instruments. The petitioner acquired rights to the mark through a deed of assignment executed on 17 December 2015, transferring all rights, goodwill, and interests associated with the mark.

The respondent company, incorporated in 2016, was initially a distributor of another entity’s products. However, in January 2024, it obtained registration for a trademark that the petitioner claimed was phonetically, structurally, and visually similar to its own. The contested mark, "METERIVA," was registered on a "proposed to be used" basis in Class 9, covering identical products to those sold by the petitioner.

The petitioner alleged that the respondent’s mark, when used on similar products, was likely to cause confusion and deception among consumers. It was further contended that the respondent had prior knowledge of the petitioner’s mark and had even engaged in business discussions regarding distribution of the petitioner’s products. The petitioner produced evidence that the respondent had approached them for business collaboration in June 2022 and again in October 2023. The respondent had also purchased and resold some of the petitioner’s products before launching its own brand.

The petitioner contended that the respondent intentionally adopted a phonetically, structurally, and visually similar mark to benefit from the goodwill of "METRAVI." The trade dress and packaging of the impugned product also bore a striking resemblance to the petitioner’s branding, further increasing the likelihood of consumer deception.

The petitioner relied on legal precedents, including Lakshmikant V. Patel vs. Chetanbhai Shah & Anr. (2002) 3 SCC 65, Regency Plywood Industries Pvt. Ltd. vs. Chowdhury Enterprise & Ors. (2024) SCC OnLine Cal 10655, and Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73, to argue that phonetic and visual similarity in trademarks can mislead consumers and lead to unfair business advantages. The petitioner also stated that courts have consistently held that prior users of trademarks have enforceable rights over later adopters.

The respondent, in its defense, contended that both marks were distinct and that no exclusivity could be claimed over common elements. It was also argued that the petitioner had not disclosed the consideration for the assignment of the mark and that the financial statements did not reflect its intangible assets. The respondent relied on J.R. Kapoor vs. Micronix India (1994) SUPPL 3 SCC 215 and Subway IP LLC vs. Infinity Food & Ors. (2023) SCC OnLine Del 150 to argue that exclusivity could not be claimed over a portion of a mark and that a minor variation in spelling or phonetics did not automatically constitute deceptive similarity.

The court examined whether the marks in question were phonetically similar, considering the possibility of confusion in pronunciation and imperfect recollection among consumers. The judgment noted:

"In order to decide whether a word is phonetically similar or not, diverse factors need to be taken into consideration i.e. whether the recollection of such trade names is likely to be faltered or confused with or whether the pronunciation of such word would likely to be indistinct or imperfectly heard."

The court noted that phonetic and visual similarities must be assessed from the perspective of an average consumer with imperfect recollection. It was recorded that misrepresentation is central to passing off actions and that businesses entering a market must ensure their branding does not create confusion. The judgment stated:

"Both parties are operating in the same field of activity. In such circumstances, there was an obligation on the respondent no.1 coming into the same market to ensure that its products are not confused with that of another."

The court referenced Cadila Health Care Ltd. and Laxmikant V. Patel vs. Chetanbhai Shah (2002) 3 SCC 65, reaffirming that phonetic similarity plays a crucial role in assessing trademark disputes. The ruling stated:

"The petitioner is also the prior user and adopter of the mark which has also been registered in its favour. The respondent no.1 had adopted the impugned mark only in 2022. Confusion and deception regarding the source and origin of the goods under the impugned mark is highly probable and there is every likelihood for such confusion to happen amongst innocent customers."

The court rejected the respondent’s argument that "MET" was a common element, holding that the overall similarity between "METRAVI" and "METERIVA" was sufficient to create a likelihood of confusion. The court also observed that the respondent had prior knowledge of the petitioner’s mark and had attempted to enter into business dealings with the petitioner before launching its own mark.

Additionally, the court considered that the petitioner had invested significantly in advertising and brand promotion over the years. The court noted that long-term commercial use of a mark contributes to its distinctiveness and that deliberate attempts to imitate an established mark must be prevented.

Upon reviewing the submissions and relevant case law, the court ruled in favor of the petitioner, confirming the interim injunction that had been previously granted. The final order stated:

"In such circumstances, the ad interim order dated 8 April 2024 stands confirmed. GA-COM 1 of 2024 in I.P (Com) 7 of 2024 stands allowed. There shall be an order in terms of the prayer (a) of the Notice of Motion. Consequently, GA 6 of 2024 for vacating of the order dated 8 April 2024 stands dismissed."

Case Title: Metravi Instruments Private Limited vs. Dhanbad Lab Instruments India Private Limited & Ors.

Case Number: IA NO: GA-COM/1/2024, GA-COM/6/2025, IP-COM/7/2024

Bench: Justice Ravi Krishan Kapur

[Read/Download order]