A house mark is the primary source identifier for major conglomerates and businesses who already have a well-established reputation in the market. It acts as an umbrella brand under which multiple sub-brands can be introduced and marketed in order to retain consumer familiarity with the parent brand. For instance, well-known brands such as Volkswagen includes its house mark to its sub-brands such as Tiguan, Vento, Polo, etc., to cultivate individual distinctiveness of its sub-brands, such that they ultimately obtain secondary significance on their own.
Brand owners often question whether adding a house mark can reduce confusion with prior marks in the same class. Even though there is no straitjacket answer, various courts across the globe have weighed in on whether the addition of a house mark to a sub-brand will assist in distinguishing them from earlier marks.
Indian courts have oscillated in placing the import of adding house marks to secondary marks while assessing similarities of rival marks. In an early decision in Peshawar Soap and Chemicals Ltd. v. M/s Godrej Soaps Ltd., 2001 (58) DRJ 170, the Delhi High Court ruled that use of the house mark GODREJ along with the mark NIKHAR, which is topical for soaps, does not infringe plaintiff’s rights in the KESH NIKHAR mark.
A. Use of house marks with descriptive and generic secondary marks
In a landmark decision addressing this aspect, the Division Bench of the Bombay High Court in Meso Private Limited v. Liberty Shoes Ltd., AIR 2019 Bom 305, considered the issue of whether using the words LEGEND and FLIRT along with the house mark LIBERTY is likely to cause confusion with perfumes LEGEND and FLIRT used with the house mark DEVON by Meso. The Court agreed that the words LEGEND and FLIRT were used by various perfume companies with their house marks and, therefore, consumers purchasing perfumes will depend on the house names associated with those perfumes to make their choices. Therefore, it held that use of these words with the respective house marks will not cause confusion. The Court laid down the principle that the presence of a house mark before a secondary mark is one of the factors to be looked at while comparing rival marks, while also relying on other factors such as appearance in the marketplace, perception of consumers, and the whether the secondary marks are generic or descriptive words.
Recently, the Delhi High Court in Capital Food Private Limited v. Radiant Indus Chem Pvt. Ltd., 2023/DHC/ 000224, also opined that the house mark in the rival marks (CHING’S SCHEZUAN CHUTNEY v. MRS. FOODRITE SCHEZUAN CHUTNEY) sufficiently distinguish the source of the goods especially when the words SCHEZUAN CHUTNEY identifies the nature of the product and is descriptive in nature.
B. Use of house marks with arbitrary secondary marks
Taking a contrary stand, the Division Bench of the Bombay High Court in Meher Distilleries Pvt. Ltd. v. SG Worldwide Inc., Commercial Appeal (L) No 10963/2021, observed that the decision rendered in Meso pertained to the peculiar facts of that case, and did not lay down an absolute position in law. The Court noted that the decision in Meso pertained to expensive consumable products and the relevance of house marks in obviating the likelihood of confusion in those products, and that the decision could not be generally applied in all circumstances.
Recently, the Division Bench of the Delhi High Court in Crompton Greaves Consumer Electricals Ltd. v. V-Guard Industries Limited, 2024/DHC/1852/DB, upheld the order of the single judge, which had granted a temporary injunction restraining the appellant from using the respondent’s registered mark, PEBBLE, on and in relation to electric irons. The appellant had raised the plea that they use the mark PEBBLE along with their house mark CROMPTON. The Court differentiated this case from the decision in Meso by stating that since the word PEBBLE was arbitrary in relation to water geysers, unlike the words LEGEND and FLIRT which are connected to the perfumery industry, and required the house mark to act as a source identifier.
C. Use of house marks with prominent secondary marks
The Bombay High Court in Pidilite Industries Ltd. v. Jubilant Agri and Consumer Products Limited, Notice of Motion (L) No. 1717 of 2013, rejected the defendant’s argument that use of the mark MARINE PLUS in combination with their house mark JIVANJOR, would sufficiently differentiate it from the plaintiff’s FEVICOL MARINE mark. The Court found that the prominent use of MARINE in both marks overshadowed the house mark, leading to potential confusion. Moreover, the Court emphasized that consumers in this case, typically carpenters or similar individuals, would not rely on the house marks to identify the products, but will rely on secondary marks.
D. Requirement of addition of a house mark as part of regulatory compliance
Commercial laws concerning businesses often require companies to sell their goods and services with their respective corporate names, such as the mandatory requirements under the Legal Metrology Act, 2009, the Drugs and Cosmetics Act, 1940.
The Bombay High Court, in the case of Aegon Life Insurance Company Ltd. v. Aviva Life Insurance Company India Ltd., MANU/MH/2279/2019, ruled that use of I-TERM in Aviva i-Term Smart did not infringe upon the plaintiff's use of I-TERM in Aegon Life i-Term Plus. The Court considered various factors, including the mandatory use of corporate names in policy names per Insurance Regulatory and Development Authority of India (“IRDAI”) guidelines, the focus of consumers on the insurer’s reputation and financial stability, the complex nature of life insurance products, and the common purchase methods through agents or online platforms. Given these factors, the Court concluded that the two marks were sufficiently distinct to avoid consumer confusion.
As elucidated from the above decisions, it is clear that the mere inclusion of a house mark to a secondary sub-brand does not automatically obviate the likelihood of confusion from a prior registered mark. Instead, courts are required to consider various factors, such as the test of prominent element, how the rival marks are perceived by an average consumer with imperfect recollection, the distinctiveness or generic nature of the secondary marks, and how much importance the consumer will give to the presence of house marks while purchasing goods or availing services.
In the United States, the presence of a house mark is often a double-edged sword when it comes to trademark infringement. For instance, the United States Court of Appeals, Second Circuit in Nabisco, Inc. v. Warner-Lambert Co. 220 F.3d 43 (2d Cir. 2000), held that the prominent use of a well-known house brand, in the mark DENTYNE ICE significantly reduces, if not altogether eliminates, the likelihood of confusion with Nabisco’s ICE BREAKERS mark.
On the other hand, the Trademark Trial and Appellate Board while deciding the refusal of Christian Dior’s application to register the LE CACHET DE DIOR mark for shirts, due to the presence of an earlier mark CACHET for dresses, held that the presence of a house mark can lead to purchasers believing that Christian Dior is the source of Cachet’s products. Similarly, the United States District Court, CD California, Western Division in Glow Industries, Inc. v. Lopez, 252 F. Supp. 2d 962 (C.D. Cal. 2002), while considering whether Jennifer Lopez’s GLOW BY J LO infringed the plaintiff’s GLOW marks for perfumes, observed that the addition of house mark might heighten confusion rather than reduce it, and might confuse consumers into believing that the GLOW’s goods were sponsored by Lopez.
The decisions of various Indian courts indicates that while they consider the presence of house marks with the secondary marks as a relevant factor in accessing trademark infringement, it is not an absolute rule. Courts have held that the significance of a house mark depends on the nature of the secondary mark, i.e., they act as a distinguishing factor only when the secondary marks are either common to trade, generic or descriptive, However, their presence might be irrelevant where the secondary marks are arbitrary and inherently distinctive, or form a prominent element in the rival marks.
While considering the similarity of rival marks with house marks, the courts also consider the nature of the target consumers, and whether they will place emphasis on the house marks while choosing these goods and/or services.
Brand owners must, therefore, be careful while using a house mark, and not opt for a blanket approach. As seen in the US, the presence of a house mark may sometimes also lead to the creation of reverse confusion - a scenario where a consumer mistakenly believes that the products of a senior mark holder are associated with the junior mark holder merely due to the large scale of the fame associated with the house name of the junior mark holder. Brands must, therefore, also consider their reach and impact on the market, before considering using of a house mark in relation with their newly adopted marks.
About the authors: Janaki Arun is a Principal Associate and Anuja Chaudhury is a Senior Associate at Sujata Chaudhri IP Attorneys.
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