‘VARUN’ or ‘ARUN’ ice cream- Are they confusing?
Case Background: Hatsun Agro Product Limited (Petitioner) sought to remove the trademark ‘VARUN’ used by the Respondent Balakrishnan Nair for ice creams, claiming it was similar to their trademark ‘ARUN’ used by them since 1970. This note examines the core arguments put forward by the parties and the order passed by the Court.
Petitioner in support of rectification raised the following:
- They are a well-established entity engaged in the manufacture and marketing of ice creams and other dairy products, and long and extensively operated under the trademark ‘ARUN’.
- Since adopting the mark in 1970, on account of consistent and extensive use they have acquired reputation and brand recognition and obtained registration for the mark in 1982.
- Over the years, through extensive sales and promotional efforts, the ‘ARUN’ trademark has become widely recognized, gaining distinctiveness and secondary meaning in the market.
- In May 2015, they became aware that the Respondent had begun using the mark ‘VARUN,’ which could cause confusion with their established brand.
- The Respondent’s business is confined to the state of Kerala and there has been no growth or expansion in their market share over the years.
- As the Respondent failed to comply with the cease-and-desist notice and stop use of the mark VARUN, this rectification petition was filed.
Respondent countered the contentions with the following contentions:
- They are a manufacturer of ice creams and have been using the trademark ‘VARUN’ for several years.
- is a composite mark featuring the name ‘VARUN’ with a cloud-like illustration resembling ice cream on a cone, and the tagline ‘Delicious, Nutritious & Healthy’. The VARUN mark stands registered in class 30 since 2006.
- The mark VARUN was honestly adopted and has been in use since June 2004.
- ‘VARUN’ is a distinct personal name with historical and cultural significance, referencing the Hindu god Varuna and there is no chance of confusion.
- Petitioner’s claim of use since 1970 is false and there is no document to substantiate this.
- The Petitioner did not take any action against the use of the ‘VARUN’ mark for years and is not selling products in Kerala, where the Respondent operates.
- The Petitioner, having previously argued for the registrability of the name ‘ARUN’ despite objections from the Registry, therefore, is now barred from asserting exclusive rights over it and challenging the Respondent’s use of the ‘VARUN’ mark.
- The Trademark Registry in the search report for VARUN did not cite ARUN as a conflicting mark.
- The use of the mark VARUN for almost 20 years without any instance of confusion or deception proves honest and concurrent use.
Court’s analysis and findings:
- Common Personal Names: In the instant case both ‘ARUN’ and ‘VARUN’ are common Indian personal names, both associated with Hindu deities, Aruna and Varuna. Thus, neither the Petitioner nor the Respondent can claim exclusive rights over the names unless they can prove that their respective names have acquired distinctiveness and a secondary meaning through extensive use, goodwill, and reputation.
- No likelihood of Confusion: Though the marks ‘ARUN’ and ‘VARUN’ are phonetically similar, there is no likelihood of confusion as they differ visually and due to their distinct depictions. Moreover, the marks have co-existed without confusion since at least 2006. The Respondent operates only in Trivandrum and Kollam in Kerala, where the Petitioner has no presence. Even though the Petitioner claims widespread marketing in South India, the rectification petition does not mention Kerala, and there is no evidence of any promotion or sales by the Petitioner in that state.
- No secondary meaning: The Petitioner’s contention that the Respondent obtained their trademark through misrepresentation ought to fail. Both parties were faced with similar objections from the Registry about registering common names, evidencing that their marks had acquired distinctiveness through prolonged use. As the Petitioner argued its own mark’s distinctiveness, it cannot challenge the Respondent’s registration, granted on the same grounds in 2006. The Court also referred to a previous ruling in which it was determined that ‘ARUN’ did not have a secondary meaning linked to the Petitioner and, as a common name, could not be monopolized.
- Territorial limitation: The Petitioner has no business presence in Kerala, where the Respondent solely sells the products, and the two marks have coexisted without issue for nearly two decades. This in turn shows that the Respondent’s use of the mark is honest and concurrent, without any likelihood of confusion which entitles them to protection.
- Honest and concurrent Use: The Petitioner claims to be using the mark ‘ARUN’ since 1970, with a registration application filed in 1982 and registration granted in1992. Thereafter, the Petitioner has obtained several registrations for various versions of the mark and has shown continuous use since at least 2006. However, the Respondent contends that there is no evidence support to the Petitioner’s claim of use since 1970, as no documents are on record to substantiate this. On the other hand, the Respondent has provided sufficient documentary proof of using the mark ‘VARUN’ since at least 2004-2005.
Considering the above findings the Court dismissed the petition seeking rectification of the Respondent’s mark VARUN in class 30 for ice cream.
Comment
The Court’s decision highlights substantial evidence of distinctiveness and secondary meaning is required when claiming exclusivity over common personal names.