House marks revisited in Indian Parle dispute

Lex Orbis
Manisha Singh Nair
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Many large and well established business houses adopt family names as trade marks, and some of these attain great brand value and reputation. These marks are generically known as house marks and they often become the bone of contention in disputes where businesses have split among family members and the question arises of who has the right to use the mark.

Indian courts have considered the issue of house marks during various trade mark disputes that have come before it. For example, during the European case of Canon Kabushiki Kaisha vs. Metro-Goldwyn-Mayer Inc., (1999) RPC 117, consideration was given as to what constituted 'confusion'. This can be summarised as:

i) The public would confuse the sign and mark in question.

ii) The public would make a connection between the proprietor of the sign and the mark and confuse them.

iii) The public would consider the sign to be similar to the mark although the two are not confusing.

While these tests govern direct and indirect confusion as well as association in respect of house marks, the Supreme Court of India has considered the difference in house and product marks specifically. The case of Astra Pharmaceuticals (P) Ltd. vs. Collector of Central Excise, Chandigarh, (1995) 2 SCC 84 elaborated on the differences stating:

“677- A. House mark and product mark (or brand name). - In the pharmaceutical business a distinction is made between a house mark and a product mark. The former is used on all the products of the manufacturer. It is usually a device in the form of an emblem, word or both. For each product a separate mark known as a product mark or a brand name is used which is invariably a word or a combination of a word and letter or numeral by which the product is identified and asked for. In respect of all products both the product mark and house mark will appear side by side on all the labels, cartons etc. Goods are ordered only by the product mark or brand name. The house mark serves as an emblem of the manufacturer projecting the image of the manufacturer generally.”

In the case of Parle Products v. Parle Agro 2009 (39) PTC 405 (Bom.), the Bombay High Court revisited the dicta behind the use and sharing of house marks. Parle is a popular bakery and confectionary brand in India, and is engaged in the manufacture and marketing of a variety of products. The parties in the case disputed the use of the house name Parle after family members split the business among themselves into Parle Products and Parle Agro.

While not disputing Parle Agro's right of carrying on business in confectioneries or biscuits, Parle Products did raise an objection to use of the trade mark Parle singularly or in conjunction with its product identification marks.

Parle Products contended that although the two groups were part of the same family, they were carrying on business in distinct and separate fields. It argued that neither could trample on the business of the other by using any trade name or marketing any product that might be construed as similar to a registered trade mark of the other.

The Court noted that the trade marks of Parle Products must be first seen and appreciated. Considering the range of products and the evolution of the brand over time, the Court opined that the individual names of the products were identification marks of those products. Parle Agro had stated them to be “product identification marks”.

With respect to a company or a business house that manufactures an array of products, the Court stated that it would require separate brands for each product to give an identity to the product. This in turn would enhance the recognition of the product and distinguish it from others. The fact that the two groups hailed from a single seminal partnership meant that they were entitled to carry on both the businesses. The Court stated that the aspect that needed to be looked into was if use of the word Parle was feasible, be it a house mark or otherwise along with a new word.

Issues pertaining to the usage of house marks and the like are bound to arise as businesses expand, flourish and often undergo a change of ownership. As of now, the Court seems to have clarified the position governing house marks and product identification marks amply so as to be able to address disputes that may arise.