A British manufacturer of biscuits has been selling cookies in India for more than 20 years, and had a registered trademark 'ChipsMore' for these products during all that time. Two years ago, an Indian company started ma

The British manufacturer can institute a suit seeking relief for infringement and/or passing off under the Trade Marks Act, 1999. Infringement under the Trade Marks Act, 1999: Section 29 of the Trade Marks Act, 1999, deals with infringement of registered trademarks. A registered trademark is infringed if: A person uses a mark identical or deceptively similar to the registered trademark. The use is in relation to goods or services for which the trademark is registered. The use is likely to cause confusion on the part of the public or is likely to be taken to have an association with the registered trademark. In this case, the British manufacturer has a registered trademark 'ChipsMore' for biscuits/cookies for over 20 years. The Indian company started selling cookies under the brand 'ChipsPlus' two years ago. The mark 'ChipsPlus' is deceptively similar to 'ChipsMore' both phonetically and visually, and it is used for identical goods (cookies). This similarity is highly likely to cause confusion among consumers, who might believe that 'ChipsPlus' products originate from or are associated with the British manufacturer. Therefore, the British manufacturer has a strong case for trademark infringement under Section 29 of the Act. Passing Off: Passing off is a common law remedy that protects the goodwill and reputation of a trader from misrepresentation by another trader. Even if a trademark is not registered, a passing off action can be initiated if the following elements are proven (the 'classic trinity' or 'five-part test'): Goodwill/Reputation: The plaintiff must have established goodwill or reputation in its goods/services. Misrepresentation: The defendant must have made a misrepresentation (whether intentional or not) that its goods/services are those of the plaintiff. Damage: The plaintiff must have suffered or be likely to suffer damage as a result of the misrepresentation. The British manufacturer has been selling 'ChipsMore' cookies in India for more than 20 years, indicating a well-established goodwill and reputation in the Indian market. The use of 'ChipsPlus' for similar products constitutes a misrepresentation, as it is likely to deceive consumers into believing that the Indian company's cookies are those of the British manufacturer or are somehow associated with them. This misrepresentation would cause damage to the British manufacturer's goodwill and sales. Case Law Support: The given case is similar to Hindustan Unilever Limited v. Ashique Chemicals & Ors [BOM] Notice of Motion No. 926 of 2010 in Suit No. 862 of 2010 S.J. Vazifdar, J. [Decided on 08/08/2011] . In this case, Hindustan Unilever (plaintiff) sought an injunction against the defendants for using the mark "SunPlus" or "Sun" with any prefix/suffix, or deceptively similar labels for soaps/detergents, infringing the plaintiff's registered trademarks like "Sunlight" and "Sunsilk". The plaintiff was the registered proprietor of "Sun", "Sunlight", and "Sunsilk" under class 3. The court dismissed the suit, noting that the defendant had been using "SunPlus" since 1997 and had developed its own reputation in Kerala. Crucially, the court found no deceptive similarity between "SunPlus" and "Sunlight", stating that the mere prefix "Sun" did not make them deceptively similar, and that "Sunlight" and "SunPlus" were phonetically and visually distinct. The plaintiff had also not used the mark "Sun" in India for over 60 years, and its action for passing off failed as the mark had never been used. However, the present case is distinguishable from the Hindustan Unilever case. In the given scenario: The British manufacturer has a registered trademark 'ChipsMore' and has been selling for more than 20 years , establishing significant goodwill. The Indian company's mark 'ChipsPlus' is for identical goods (cookies) . The marks 'ChipsMore' and 'ChipsPlus' are phonetically and visually very similar, making them deceptively similar . Unlike 'Sunlight' and 'SunPlus' which the court found distinct, 'ChipsMore' and 'ChipsPlus' share a common, distinctive element ('Chips') and a similar suffix ('More' vs 'Plus'), leading to a high likelihood of confusion. Another relevant case is Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980) , where the Supreme Court held that in an infringement action, if the defendant's mark is deceptively similar to the plaintiff's registered mark, then infringement is established, and it is not necessary to prove actual confusion or damage. The test is whether the overall impression created by the marks is likely to deceive or cause confusion. Also, in N. R. Dongre v. Whirlpool Corporation (AIR 1995 Delhi 300) , the court granted an injunction against the use of the mark 'Whirlpool' by an Indian company, even though the foreign company's mark was not registered in India, based on its trans-border reputation and passing off. Conclusion: Considering the long-standing use and registration of 'ChipsMore' by the British manufacturer, and the deceptive similarity of 'ChipsPlus' for identical goods, the British manufacturer has a strong legal basis to institute a suit for both trademark infringement (due to the registered mark and deceptive similarity) and passing off (due to established goodwill and misrepresentation) under the Trade Marks Act, 1999. The facts clearly indicate a likelihood of confusion among consumers, which is sufficient for both actions.