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In the Highcourt of Delhi at New Delhi Pronounced on: 10th April, 2023

The use of the article ”the”, in Section 17(2)(b) of the TradeMarks Act, 1999 is, in our opinion, significant. There is a clear difference between the expressions “common to trade” and “common to the trade” which was mentioned by the Hon’ble Justice C Hari Shankar with his usual perspicuity explained that if the legislature has, in the phrase “common to the trade”, inserted the definitive article “the”, that insertion has to be treated as deliberate and intended to serve a particular purpose.

“The trade” referring hereby to actual flow of goods in the market it is necessary for the defendant who invokes Section 17(2)(b) to establish that, in the market, relating to such goods, the use of the asserted mark, or part thereof, is common. Further, the word “common” too has its own significant  etymological connotation. Commonality cannot be easily presumed.

Sufficiently overwhelming evidence would be required for the satisfaction of following two ingredients:

(1) The existence of a trade in the article, or class of articles, in respect of which the plaintiff used the asserted mark, and

(2) Common, i.e. frequent, customary or habitual use, in that way, of the mark or part thereof.

All the cases referred by the Attorney for the defendants related, therefore, to situations in which the common part of rival marks was found to be common to the trade as it was an abbreviation of the API, and the remaining parts of the marks were dissimilar. DEX, as used either by the plaintiff of the defendant, however, is not intended, as an abbreviation of the API, or the organ, or the ailment that the products intend to alleviate. The use, by the plaintiff, of DEX as the suffix in COBADEX is, therefore, arbitrary, and the referred decisions, which pertains to the cases where the common suffix, or prefix, was an abbreviation of the API in the product concerned, would not apply.