Understand the role of dominant marks in Indian trademark law with case studies like PhonePe v. BharatPe. Protect your brand with expert insights.
In the realm of trademark law in India, the concept of the “dominant mark” plays a critical role in determining the likelihood of confusion, trademark infringement, and passing off. Whether you are a brand owner, legal professional, or entrepreneur, understanding this concept is vital to protecting your brand identity in today’s competitive market.
🔍 What is a Dominant Mark in Trademark Law?
A dominant mark refers to the most essential or impactful part of a trademark, which leaves a lasting impression in the minds of consumers. In cases where two trademarks are being compared for similarity, courts often look at the dominant feature of each mark to assess the probability of consumer confusion.
✅ Example:
Let’s consider two trademarks:
- “SUNFRESH JUICES”
- “SUNFRESH FRUITS”
Even though the second word differs, “SUNFRESH” is the dominant element in both marks. If one party already owns a registered trademark over “SUNFRESH” for beverages, the use of the same word by another company, even with a different suffix – may still constitute infringement.
📜 Legal Basis under Indian Trademark Law
The Trade Marks Act, 1999 doesn’t explicitly define the term “dominant mark.” However, Indian courts have recognized and applied the concept in numerous judicial precedents under Sections 11 (Relative Grounds for Refusal of Registration) and 29 (Infringement of Registered Trademarks).
🏩 Landmark Indian Case Laws on Dominant Mark
1. Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. [(2001) 5 SCC 73]
In this landmark judgment, the Supreme Court laid down factors to determine deceptive similarity, one of which includes identifying the dominant part of the mark. The Court emphasized the need to look at phonetic similarity, nature of goods, and overall impression.
2. South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. [2015 (61) PTC 231 (Del)]
This case involved a trademark dispute between “HAAGEN DAZS” and “D’DAAZS.” The Delhi High Court ruled in favor of General Mills, holding that “DAZS” was the dominant mark, and the use by the defendant was likely to deceive or confuse consumers.
3. Puma Stationer Pvt. Ltd. v. Hindustan Pencils Ltd. [2009 (39) PTC 346 (Del)]
The court recognized that the use of the word “Nataraj” in a similar stylized script and color scheme was enough to constitute passing off, as “Nataraj” was the dominant and distinguishing element of the plaintiff’s brand.
4. PhonePe Pvt. Ltd. v. Ezy Services & Anr.
In this notable case, PhonePe, a leading digital payments company, sued Ezy Services, which operates under the name BharatPe, over the use of the suffix “Pe.” PhonePe claimed that “Pe” is the dominant part of its trademark and that BharatPe’s use of the same suffix amounts to trademark infringement and passing off.
The Delhi High Court, however, refused to grant an interim injunction to PhonePe. The Court observed that “Pe” could be a descriptive or generic term, derived from the Hindi preposition meaning “on.” It ruled that the dominant impression created by “PhonePe” and “BharatPe” was visually and phonetically different. The case is ongoing, with the trial expected to determine whether “Pe” has acquired sufficient distinctiveness to warrant exclusive rights.
This case highlights how courts consider context, language, and market perception when determining if a part of a mark is truly dominant.
🔍 Factors to Identify a Dominant Mark
When assessing trademarks, Indian courts consider the following to identify the dominant part:
- Visual and phonetic similarity
- Meaning and conceptual impression
- Prominent placement of words or logos
- Size, color, and stylization
- Commercial impression on an average consumer
⚖️ Importance of Dominant Mark in Trademark Infringement
The dominant mark is often the deciding factor in infringement or passing off cases. Even if two marks are not identical, similarity in the dominant element may lead courts to:
- Issue an injunction against the infringing party
- Order damages or account of profits
- Refuse registration to similar marks
✅ Case Study:
Marico Ltd. v. Agro Tech Foods Ltd. [2010 (44) PTC 736 (Bom)]
The Bombay High Court held that Marico’s mark “Saffola” had a strong reputation and the use of a similar packaging design and use of yellow color by Agro Tech created an association in the consumer’s mind, primarily due to the dominant color scheme.
💼 Implications for Businesses and Brand Owners
✅ Trademark Clearance:
Before registering a trademark, ensure your mark does not contain a dominant part that is similar to an existing brand, especially in the same industry.
✅ Brand Strategy:
Focus on creating a distinctive dominant element – be it a word, logo, or color combination that differentiates your brand.
✅ Legal Protection:
Monitor the market and initiate legal action if a competitor uses a mark with a confusingly similar dominant element.
🧠 Expert Tip for Brand Owners
When defending a brand, analyze the dominant portion of the mark not just in isolation, but in the context of:
- Target audience
- Nature of products/services
- Market segment
Dominant mark analysis can make or break your case.
📚 Concluding
The concept of dominant mark in trademark law is essential to understanding how Indian courts analyze similarity and confusion. From a legal standpoint, focusing on what stands out most in a trademark can be the key to winning or losing an IP dispute.
As India’s startup and business ecosystem grows, the need for robust trademark strategies – including analysis of dominant marks, has never been greater.
Safeguard your business by ensuring your trademark has a distinct and legally defensible identity.
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This content is for general informational purposes only and does not constitute legal advice.