Background of the case:

A complaint was filed by M/s The New York Pizza (the ‘Complainant’) against M/s New Yorker Pizza (the ‘Respondent’) wherein it was alleged that the Respondent had engaged in deceptive marketing practices in violation of Section 10 of the Competition Act, 2010 (the ‘Act’), and that the Respondent was allegedly using a trademark deceptively similar to that of the Complainant. Thereafter, an enquiry was initiated to probe into the matter.

The enquiry committee concluded that prima facie, the allegations made against the Respondent were not made out as the Respondent had created a distinguishable trademark and trade dress in terms of labeling & packaging which was different from the Complainant’s labelling & packaging, so there could not reasonably be no confusion between the two graphically different trademarks.

The Commission deemed it appropriate to provide the Complainant with an opportunity of hearing. The Complainant argued that the two subject trademarks were phonetically similar and emphasized on the similarities between the trade dress of the Complainant and the Respondent. Furthermore, it was contended that the observation of the enquiry committee, that the actual owner of the trademark had passed away and therefore the Complainant lacked ownership right over the registered trademark was incorrect. It was trade was registered in the name of the Complainant and the Complainant had being using it prior to the start of the business of the Respondent.

The Complainant argued that the enquiry committee failed to appreciate that the Complainant has exclusive rights over the term “New York Pizza” as a whole has been ignored by the enquiry. It was argued that the Complainant having less followers than the Respondent did not give the Respondent the right to copy the trade dress of the Complainant. Lastly, it was alleged that the enquiry committee failed to compile all the relevant documents from the Respondent and the burden of proof was rather shifted on towards the Complainant to prove his ownership.

Conclusion:

It was held that that the conclusion of the enquiry report was primarily based on the defense of Genericism. The Commission held that the terms being used by the Complainant and the Respondent may sound generically separate. However, peculiar combination of the two terms cannot be simply understood as generic, and the reasoning in the enquiry report was not accepted.

Secondly, it was held that the conduct of the Respondent falls within the purview of Parasitic Copying, that is, while an exact infringement of trademark is not involved, the trademark has been sufficiently copied in a confusing or deceptive manner, which can mislead consumers.

Lastly, the Commission noted that the Respondent had not only copied brand name, but also the trade dress of the Complainant.

The Commission concluded that deeper appreciation of the facts and evidence was required in the instant matter, and the matter was remanded back to the Enquiry Committee to peruse the matter again with respect to the aforesaid issues.