Recently, the Madras High Court examined a challenge to the refusal of a food company’s trademark application, raising important questions on deceptive similarity and consumer confusion in trademark law.
The dispute arose from an appeal filed by Freshtohome Foods Private Limited, which had sought registration of the mark “FRESH NOT FROZEN” for online retail services dealing with vegetarian and non-vegetarian food products under Class 35. The application was originally rejected by the Trade Marks Registry, Chennai, citing similarity with an already registered mark “FRESH N FROZEN” for identical services. Aggrieved by the rejection order, the company approached the High Court under Section 91 of the Trade Marks Act, 1999, seeking to set aside the refusal and revive its application.
The counsel for the Appellant argued that “FRESH NOT FROZEN” was conceptually different and, in fact, diametrically opposite to “FRESH N FROZEN”. It was contended that the phrase was generic in nature and unlikely to mislead consumers, especially in the context of food products marketed as fresh rather than frozen.
The Trade Marks Registry, on the other hand, maintained that the proposed mark was deceptively similar to the existing registered mark, particularly since both were used for identical services under the same class.
The High Court reiterated settled principles for determining deceptive similarity, including the nature of the marks, phonetic and visual resemblance, the nature of goods and services, and the likelihood of consumer confusion. On a plain comparison, the Court noted that the only addition in the proposed mark was the word “NOT”, while all other dominant elements remained identical. The Court observed that an average consumer, exercising ordinary caution, was likely to be misled at first glance, especially given that both marks operated in the same commercial space and class.
Emphasising that trademark law prioritises the overall impression of a mark rather than semantic explanations offered later, the Court held that the Registry’s objection under Sections 9 and 11 of the Act was justified.
Dismissing the appeal, the High Court upheld the rejection of the trademark application, finding no illegality in the Registrar’s decision. However, the Court clarified that the company was free to apply afresh for registration of a different, unobjectionable trademark, which would be considered independently on its own merits.
Case Title: Freshtohome Foods Private Limited v. The Registrar of Trade Marks
Case No.: (T)CMA(TM) No. 189 of 2023
Coram: Hon’ble Mr. Justice N. Anand Venkatesh
Counsel for the Appellant: Advocate P. Magesh
Counsel for the Respondent: Central Government Standing Counsel G. Ilangovan
Read Judgement @Latestlaws.com
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