Merely adding a suffix to a popular name can't be the basis of a new trademark - Bombay HC

  In a case of alleged infringement of a trademark, a bench comprising of  SJ Kathawala, J granted an interim injunction restraining a firm from marketing an edible oil brand on the grounds that the name was similar to an established product. The court said that merely adding a suffix to a popular name can't be the basis of a new trademark. In the present case, the plaintiff had acquired registration of the trademark ‘RISO’ in 2012. The plaintiff alleged that the impugned trademark ‘RISO-LITE’ of the defendant was deceptively similar to its mark ‘RISO’. The Counsel for the defendant argued  that ‘RISO’ was an Italian name for rice and hence it was descriptive in nature and can be freely used by anyone. The Court however rejected this contention stating though it is true that certain words are often borrowed from a foreign language and commonly used in India but ‘RISO’ is not one such word which is commonly used in India, and cannot be held as descriptive in the Indian context. The defendant further contended that the plaintiff had not honestly adopted and conceived the said trademark ‘RISO’ since there were other marks, already using the word ‘RISO’, existing in the market, namely “RISONA” and “RISOLA”. However, the court held that the defendant in the present case has not been able to show that the prior marks ‘RISONA’ or ‘RISOLA’ have actually been used or that they have a reputation or market of their own and thereby granted interim injunction in favour of the plaintiff. [Kamani Oil Industries Pvt. Ltd vs. Bhuwaneshwar Refineries Pvt. Ltd., Notice of Motion No. 139 of 2014, decided on May 9, 2014]

Article referred: http://blog.scconline.com/post/2014/06/10/merely-adding-a-suffix-to-a-popular-name-can-t-be-the-basis-of-a-new-trademark.aspx