Court Rules No Statutory Protection for Abbreviation 'HOM' Without Distinct Public Identification
In a significant ruling, the Bombay High Court has dismissed an interim application by Indian Express and Commercial Ventures and Projects Private Limited seeking trademark infringement protection for the abbreviation 'HOM' of its registered trademark 'House of Mandarin.' The court held that statutory protection cannot be extended to mere abbreviations or acronyms unless they have acquired distinctiveness and are recognized by the public as associated with the original trademark.
The case arose from a trademark dispute between Indian Express and Commercial Ventures and Projects Private Limited, operators of the 'House of Mandarin' restaurant, and Fundamental Hospitality Private Limited, who adopted the mark 'HOM' for their own restaurant services. The plaintiff argued that 'HOM' was a well-known abbreviation of their trademark 'House of Mandarin,' and sought to restrain the defendants from using 'HOM' in their business operations.
Justice Sharmila U. Deshmukh, presiding over the matter, emphasized the importance of establishing public recognition of an abbreviation as a brand identifier. The court found that the plaintiff failed to provide sufficient evidence demonstrating that the abbreviation 'HOM' was widely recognized in the public mind as associated with their services. The court scrutinized various materials presented by the plaintiff, including social media posts and news articles, but deemed them insufficient to establish the distinctiveness required for trademark protection.
Furthermore, the court noted that the defendants adopted 'HOM' based on its Sanskrit meaning, describing the act of offering something into fire, and demonstrated independent and bona fide adoption of the mark. The defendants argued that their restaurant services, which focus on modern Indian cuisine, differed significantly from the plaintiff’s offerings, which are predominantly Chinese/Pan Asian cuisine.
The judgment also addressed the plaintiff's claim of passing off, which requires proof of goodwill, misrepresentation, and likelihood of injury. The court found that the plaintiff failed to establish goodwill and reputation for the abbreviation 'HOM,' and noted the absence of evidence showing likelihood of confusion among consumers. Sporadic instances, such as WhatsApp chats, were deemed unreliable and insufficient to substantiate the claim of passing off.
Justice Deshmukh highlighted the importance of producing cogent material to demonstrate public recognition of an abbreviation as a brand identifier. The court reiterated that mere registration of an acronym does not automatically extend the benefits of a registered trademark unless the abbreviation is shown to be consistently recognized by the public and trade.
Ultimately, the court concluded that the plaintiff did not make out a prima facie case for trademark infringement or passing off, and dismissed the interim application. The ruling underscores the importance of establishing public identification and distinctiveness for trademark protection of abbreviations, setting a precedent for similar cases in the future.
Bottom Line:
Action for infringement and passing off - Mere abbreviation/acronym of a registered trademark does not automatically inherit statutory protection unless it is established that the abbreviation has acquired distinctiveness and public identification with the original trademark.
Statutory provision(s): Trade Marks Act
