What’s your preference Blacksmith or Goldsmith?
Can Goldsmith be confused for Blacksmith? The issue came up before the court in the context of a trademark infringement and passing off action brought by Jaideep Mohan (JM) against HUB International Industries (HUB). JM on the basis of its registered trademark BLACKSMITH for alcoholic beverages sought restraint order against HUB’s GOLDSMITH.
- They are engaged in the manufacturing and marketing of alcoholic beverages and carries on business as sole proprietor in the name and style of M/s. Mayfair Enterprises. In the year 2011, they coined and adopted an arbitrary and distinctive trade mark ‘BLACKSMITH’ in respect of alcoholic beverages and obtained trademark registration in Class 33 in October, 2011.
- They came to know of HUB’s use of the GOLDSMITH mark when the same was published in the Trademarks Journal for opposition purposes.
- The trade mark ‘GOLDSMITH’ is deceptively/confusingly similar to the registered trade mark ‘BLACKSMITH’ more so when both are used in relation to same goods.
- JM has opposed the GOLDSMITH mark and inquiries revealed that HUB has started using the mark only in the year 2016.
- JM has concealed that their application for registration of the mark ‘SMITH’ in Class 33 is pending, thus, cannot claim monopoly over the word ‘SMITH’.
- Several entities have been using the mark ‘SMITH’ and ‘BLACKSMITH’ prior to and/or along with JM. ‘OLD BLACKSMITH’ whiskey has been in existence in United States much prior to adoption of the mark ‘BLACKSMITH’ by JM.
- HUB commenced manufacturing alcoholic beverage under the mark ‘GOLDSMITH’ in the year 2014.
- The marks ‘BLACKSMITH’ and ‘GOLDSMITH’ are conceptually, structurally and visually different.
- The words ‘BLACK’ and ‘GOLD’ are entirely different.
- The words ‘Blacksmith’ and ‘Goldsmith’ are dictionary words and will not be confused by ordinary person. Moreover, there are also differences in lay-out, get-up and packaging of the rival products.
- JM’s product is sold in grey colour packaging with background of black and white and the words MAYFAIRS along with BLACKSMITH are prominently written. HUB’s ‘GOLDSMITH’ is a bottle which is sold inside the carton/case with dark brown and golden colour and the word ‘GOLDSMITH’ is written along with the pictures of crown prominently displayed along with the expression “Rare Premium Whiskey”.
- The parties have been competing with each other while supplying their goods to canteens of paramilitary forces and JM was aware of the GOLDSMITH product for more than a year, thus, there is delay in filing the action.
- JM has not made any averments with regard to similarity of packaging and shape of the products and on verifying this aspect it is clear that there can be no confusion between the two products on account of packaging or shape of the bottle/container in which the products are sold.
- BLACKSMITH and GOLDSMITH do not comprise of two separate words and are one word with a meaning of its own. Further, the rival marks are unlikely to be remembered by breaking each of them into two parts i.e. Black and Smith or Gold and Smith.
- The words BLACKSMITH and GOLDSMITH are words of English language which a person not habituated to reading or speaking the English language is also likely to identify. Further, the differences between two are also taught in elementary school with pictorial depiction. This further diminishes the chances of confusion.
- The Judge also considered whether the instant matter should go through the lengthy process of a complete trial when the main issue was similarity of marks. The court opined allowing the parties to examine self-serving witnesses would not change the position as the Court will anyway be required to form its own opinion for which the requisite material is already available. Thus, court ruled no case of infringement or passing off is made out and accordingly dismissed the same.