Trademark Battle between EAGLE and GARUDA Fireworks
The present appeal was filed by M/s The Southern India Exporting Company (SIECO) against M/s The Classic Fireworks Industries (Classic Fireworks), challenging an order passed by the Deputy Registrar of Trademarks, which allowed the registration of the “Garuda” mark. SIECO argued that the mark was deceptively similar to their “Eagle” mark.
The marks in question:
SIECO claimed prior use of their trademark in the fireworks industry and argued that the visual similarities between the two marks could lead to confusion among consumers. They contended that Classic Fireworks’ use of the “Garuda” mark could result in passing off, as consumers might associate the mark with their “Eagle” mark. SIECO further asserted that the Registrar had failed to apply the test for deceptive similarity under Section 11(b) of the Trade Marks Act, overlooking the perspective of an average consumer when permitting the registration of the “Garuda” mark.
Classic Fireworks countered that both marks had coexisted in the market for several years without causing confusion. They argued that the marks were phonetically and visually distinct, with the “Eagle” mark depicting a bird in flight and the “Garuda” mark showing a bird perched on a tree branch. Classic Fireworks also raised the defense of acquiescence under Section 33 of the Trade Marks Act, claiming that SIECO had not opposed the earlier registrations of the “Garuda” mark.
The Madras High Court found that SIECO had established prior use of the “Eagle” trademark since 1956, which had significant goodwill and recognition. The Court highlighted the high likelihood of consumer confusion due to the visual and conceptual similarities between the two marks, especially since both marks operated in the same industry. The Court noted that average consumers, who may not pay close attention to details, could easily be confused. The Court also rejected Classic Fireworks’ defense of acquiescence, emphasizing that SIECO had promptly opposed the registration in 2004. Consequently, the Court allowed the appeal, quashed the impugned order, and rejected Classic Fireworks’ application for the registration of the “Garuda” mark. No costs were awarded.
Caselaw: M/s. The Southern India Exporting Company Vs. M/s. The Classic Fireworks Industries, High Court of Madras, 20th September 2024 https://indiankanoon.org/doc/189736486/
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