TRIPLE IDENTITY TEST IN TRADEMARK

INTRODUCTION

A trademark is a distinctive word, symbol, sign or combination thereof, that distinguishes the goods or services of one enterprise from those of others in the marketplace.It functions as a distinctive mark or a unique identifier for a business’s products or services giving customers a simple means of identifying and differentiating brands. Trademarks are crucial for safeguarding a company’s reputation, intellectual property and brand identity. A trademark, as defined by law is any word, name, symbol, device or combination of these that is used to identify and set one entity’s goods or services apart from another. A trademark confers upon its registered proprietor the exclusive right to use the mark in relation to the specified goods or services and protects against unauthorized use of confusingly similar marks.

THE TRIPLE IDENTITY TEST

As branding becomes more and more important in the marketplace,courts are frequently asked to decide whether a mark has been violated by another’s use. In such cases, Indian courts have implemented a structured judicial standard called the ‘Triple Identity Test’, particularly those involving direct copying.

The ‘Triple Identity Test’ as a judicially developed standard, looks at three concurrent elements to determine whether a trademark has been violated.

• Whether the mark in question identical or deceptively similar to the registered trademark;
• Whether the goods or services in question are identical or of the same description; and
• Whether the trade channels or distribution networks used by the parties overlap.

Under Sections 29(1) to 29(3) of the Trade Marks Act, 1999, courts establish infringement where all three limbs are satisfied and which presume likelihood of confusion by the consumers.

Section 29(1), (3) of the Trade Marks Act, 1999

(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.

In cases, where the marks are either identical or deceptively similar and the infringement occurs on the same class of goods through comparable distribution networks, this test has proven especially helpful. It not only makes judicial reasoning easier but it also strengthens the enforcement of statutory rights conferred upon registered trademark owners.

CASE ANALYSIS

1. M/s Jain Electronics v Cobra Cables Pvt Ltd and Ors [2011] 45 PTC 52 (Del)

Facts

M/s Jain Electronics, the petitioner, submitted an application on 19, November 1987, to register the trademark ‘COBRA’ for voltage stabilizers under Class 9. The Cobra Cables Pvt Limited opposed the application claiming that it had previously registered the identical ‘COBRA’ mark for electrical apparatus and that it had obtained the mark through a series/chain of assignments. The Deputy Registrar rejected the petitioner’s application on the grounds that the triple identity test was satisfied, as the goods were of the same description, the mark was identical and the channels of trade and sale were similar. This decision was affirmed by the Intellectual Property Appellate Board (IPAB), leading the petitioner to file a writ petition before the Delhi High Court.

Petitioner’s Contention

The petitioner contended it had been using the mark “COBRA” since 1978 and that such prior use justified the registration.

Respondent’s Contention

The respondent arguedthat,they were the lawful proprietor of the registered trademark, that was acquired through a valid assignment, and that the petitioner’s use was insufficiently evidenced.

Held

The Hon’ble Delhi High Court dismissed the writ petition, upholding the findings of the Deputy Registrar and the IPAB. The Court observed that the petitioner’s 1984 invoices did not prove that the mark ‘COBRA’ specifically was used in connection with voltage stabilizers. The Court reiterated that:

• That, the marks were identical;
• That, the goodsvoltage stabilizers and electrical apparatuswere identical in description;
• That, there was overlap in the sales channel.

Hence, the Triple Identity Test was deemed to be met and it was assumed that the general public would become confused.

“The use of an identical mark in respect of the two goods is bound to cause deception and confusion in the market.”– Delhi High Court

2. Sumeet Research and Holdings Pvt Ltd v Sipra Appliances [2018] CS (COMM) 428/2016 (Del HC)

Facts

Sumeet Research and Holdings Pvt Ltd, the plaintiff, was the registered owner/proprietor of the well-known trademark ‘SUMEET’ which is widely used in relation with kitchen appliances.After, the defendant, Sipra Appliances started using the similar mark ‘SUMEET’ on similar goods. The plaintiff filed a permanent injunction under the Trade Marks Act, 1999, fortrademark infringement and passing off.

Issue

Whether the defendant’s use of the identical mark ‘SUMEET’ for similar goods sold through the same channels amounted to trademark infringement under the ‘Triple Identity Test’.

Petitioner’s Contention

The plaintiff claimed that the defendant’s use of “SUMEET” was dishonest, amounted to infringement under Section 29(1) of the Trade Marks Act,1999 and by deceiving customers into thinking that it was an association or affiliation.

Defendant’s Contention

The defendant was unable to provide the convincing evidence of prior use or lawfuladoption of the said mark.

Held

The Delhi High Court granted a permanent injunction, holding that the plaintiff had established infringement by satisfying all three limbs of the Triple Identity Test:

• That the trademarks were deceptively similar;
• That the goods, namely kitchen appliances, were identical in nature and the way it functions;
• That the trade channels, retail stores and electronic marketplaceswere also similar.

 The Court further noted that the reputation and goodwill attached to the plaintiff’s mark would be diluted and that the consumer confusion was inevitable/unavoidable. Infringement under Section 29(1)(3) of the Trade Marks Act, 1999 was held to be clearly established.

“The concurrent satisfaction of all three conditions—the mark, the goods, and the trade channels—creates a presumption of confusion and deception.” – Delhi High Court

CONCLUSION

Under Indian law, the ‘Triple Identity Test’ has established a solid reputation as a useful and judicially accepted technique for identifying trademark infringement. Examining the concurrent similarity of the mark, the products or services and the trade routes, this test provides a targeted method for determining the possibility of consumer confusion which is a crucial component of both infringement and passing-off cases. As evidenced by landmark rulings like Sumeet Research and Holdings Pvt Ltd v. Sipra Appliances and Jain Electronics v. Cobra Cables Pvt Ltd the courts have continuously used the test to maintain trademark protection in cases where obvious imitation is present. Although the test is not legally codified, judges have endorsed it indicating that it is a useful tool for expediting infringement analysis in cases with clearcut facts. Its rigidity however, might make it less applicable in complicated disputes that call for a more nuanced multifactorial analysis. Finally, by striking a balance between doctrinal clarity and business viability the ‘Triple Identity Test’ strengthens trademark law’s fundamental goals of safeguarding marks, distinctiveness and preventing consumer deception in the marketplace.

Author: Suhani Sharma

REFERENCES

1. Trade Marks Act 1999 (India), ss 2(1)(zb), 28.
2. The rights of prior users of trade mark under the Trade Marks Act, 1999, SCC Online Blog (5 December 2022) https://www.scconline.com/blog/post/2022/12/05/the-rights-of-prior-users-of-trade-mark-under-the-trade-marks-act-1999/ accessed 19 May 2025.
3. Trade Marks Act 1999 (India), ss 29(1), 29(3).
4. The importance of distinctive elements to the question of similarity, Henry Hughes https://www.henryhughes.com/Site/news/the-importance-of-distinctive-elements-to-the-question-of-similarity.aspx accessed 19 May 2025.
5. Trademark Squatting, Markshieldhttps://markshield.in/trademark-squatting/ accessed 19 May 2025.
6. M/s Jain Electronics v Cobra Cables Pvt Ltd and Ors [2011] 45 PTC 52 (Del HC).
7. Sumeet Research and Holdings Pvt Ltd v Sipra Appliances [2018] CS (COMM) 428/2016 (Del HC).
8. Infringement of trademark: what, when and how?, Nyaaya Weekly https://nyaaya.org/nyaaya-weekly/infringement-of-trademark-what-when-and-how/ accessed 19 May 2025.