JUDGMENT
S. Mukerjee, J.
IA No. 11043/2001
1. Alongside diamonds and designer clothes, perfumes are a lady’s (and in these unisex times perhaps even a man’s) best friend.
2. This case deals with the world renowned “chanel” brand of perfumes in the context of an application for interim injunction under Order 39 Rules 1 and 2, preferred by M/s Chanel Limited a foreign company manufacturing and marketing various kinds of perfumes and cosmetics and having established world-wide reputation with actual sales of about Rs. 5000 million in the three years immediately preceding the filing of the suit.
3. During this period the expenditure on advertisement is stated to be the region of about Rs. 500 million every year.
4. The plaintiff has set out in paragraphs 4-9 the details of various registered trademarks and particulars of registration certificate etc. in relation to its products.
5. The case of the plaintiff is that it is having this trademark since the year 1925, when the same was adopted in Great Britain by the plaintiffs predecessor-in-title.
The said trade mark was adopted on the basis of surname of its French promoter and the pronunciation of the trademark “CHANEL”, is starting with the “sh” sound and the last three letters dragged out into a longer sound “NELLE”.
6. The suit has been filed both on the allegation of infringement of trademark, in the sense that the defendant’s mark “SHANELLE” is deceptively similar to the registered trademark “CHANEL” of the plaintiff; and also on the point that the defendant is passing off its products as those of, and for, that of the plaintiff. The goods of both parties, are admittedly pertaining to the same category viz. perfumes.
7. The defense is primarily on two aspects. Firstly, that trademark “SHANELLE” being used by the defendant, is not deceptively similar to the plaintiffs registered trademark “CHANEL”. Secondly, that there is an allegedly long delay on the part of the plaintiff which disables the plaintiff from claiming any injunctive relief.
8. I heard both parties at some length of their respective contentions.
9. My findings prima facie on the following aspects involved in the matter are as under:
(i) The plaintiff has prima facie established that it is a reputed and internationally renowned company dealing in perfumes under various trademarks with “CHANEL” being the most prominent trademark of the plaintiff. It has very substantial turn-over and advertisement expenses in relation to its registered trademark. Learned counsel for the plaintiff has rightly relied upon Sections 28 and 29 of the Trademark Act and the reported decisions of the Supreme Court K.R. Chinna Krishna Chettiar v. Sri Ambal & Co, and Anr., and Parle Products (P) Ltd v. J.P. & Co., Mysore, to canvass the proposition that once the plaintiff is found to be having a registered mark, that itself confers on the plaintiff an absolute right of injunction as soon as infringing mark is shown to be capable of deceiving or causing confusion.
In my considered view similarity could be either visual or phonetic or otherwise. It need not be a similarity in all respects. It is also held that where the court reaches a conclusion that there is imitation, no further evidence is required to establish violation of plaintiff’s rights. It is also held that a brand is recalled imperfectly and remembered by general impression. Variations between the competing brands may be supposed to have been made by the manufacturers themselves and, therefore, despite variation between trade marks, confusion or deception may occur amongst the consumers on account of overall similarity and imperfect recollection. In the present case, there may be difference in the packaging, but they are visual differences. The trade marks CHANEL and SHANELLE are phonetically identical.
They may also be confused for each other on account of imperfect recollection of spelling of plaintiff’s trade mark.
(ii) The learned counsel for the defendant did try to make out a contention to the effect that in India no one will confuse or be deceived between “CH” sound and the “SH” sound. However, in my view on the material which has been brought on record by the plaintiff/applicant, and also by taking judicial notice of the pronunciation of alphabets “CH” as “SH” under number of circumstances, including in relation to plaintiff’s trademark which is shown as being pronounced with “SH” sound, even in the Websters Dictionary, I find no merit in this objection.
As held by the Hon’ble Supreme Court in the case reported in Parle Products (P) Ltd. v. J.P. & Co. Mysore, as under:-
“In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant’s mark is likely to deceive, but where the similarity between the plaintiff’s and the defendant’s mark is so close either visually or phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff’s rights are violated….,”
In the case of Amritdhara Pharmacy v. Satya Deo Gupta, Hon’ble Supreme Court held that the question of deceptive similarity has to be approached applying the test of imperfect recollect. It is the overall similarity which is to be considered observing as under:-
“. … As we said in Com Products Refining Co. v. Shangrila Food Products Ltd., , the question has to be approached from point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity of the two names “Amritdhara” and “Lakshmandhara” is, in our opinion, likely to deceive or cause confusion…..”
In K.R. Chinna Krishna Chettiar v. Sri Ambal & Co. and Anr., while dealing with marks “Sri Ambal” and “Sri Andal” the Supreme Court held that there is striking similarity and affinity of sound between “Ambal” and “Andal”. Even though there is no visual resemblance between the two marks, but because of phonetic resemblance the trade marks were held to be deceptively similar and the registration was refused holding as under:
“. . . . There is a striking similarity and affinity of sound between the words “andal” and “Ambal”. Giving due weight to the judgment of the Registrar and bearing in mind the conclusions of the learned Single Judge and the Division, we are satisfied that there is a real danger of confusion between the two marks.”
“There is no evidence of actual confusion, but that might be due to the fact that the appellant’s trade is not of long standing, there is no visual resemblance between the two marks, but ocular comparison is not always the decisive test. The resemblance between the two marks must be considered with reference to the ear as well as the eye. There is a close affinity of sound between Ambal and Andal.”
The plaintiff has also claimed injunction on the ground of passing off. The principles of passing off have been succinctly laid down by the Hon’ble Supreme Court in the case of Laxmikant V. Patel v. Chetanbhai Shah and Anr., that the law of passing off is designed to protect traders against unfair competition which consists in acquiring for oneself, by means of false or misleading devices, the benefit of the reputation already achieved by rival traders.
In my view, deception and confusion prima facie may be taken to occur on account of:-
(a) Imperfect recollection of the plaintiff's trade mark due to phonetic similarity; (b) During verbal pronouncement or hearing, it is not possible to identify whose trade mark is being referred to, both being pronounced as "SHANEL"; (c) The first time consumers who have only heard about plaintiff's trade mark and its reputation but not purchased plaintiff's perfumes, are likely to associate the defendant's perfumes with the plaintiff's goods and business and purchase it; (d) A consumer dissatisfied with the defendant's product would refer to the defendant's perfumes as CHANEL; (e) The confusion or deception may be about goods or about the source. The defendant's goods may be associated with the source originating from the plaintiff. The variation may be presumed as having been made by the plaintiff. The defendant's merchandise may be perceived as an Indian and cheaper franchised produce of the plaintiff. The questions and doubts arisen in the consumers' mind are not answered. The extent and nature of the activities of both the parties are not known to the consumers.
The abovementioned incidents of confusion and deception are forms of “injurious association” which would injure the goodwill and reputation of the plaintiff which cannot be assessed, quantified or compensated in monetary terms. As held by the Hon’ble Supreme Court in the judgment reported in Laxmikant V. Patel v. Chetanbhai Shah and Anr., as under:-
“… The legal and economic basis of this tort is to provide protection for the right of property which exists not in a particular name, mark or style but in
an established business, commercial or professional reputation or goodwill. So to sell merchandise or carry on business under such a name, mark, description, or otherwise in such a manner as to mislead the public into believing that the merchandise or business is that of another person is a wrong, actionable at the suit of that other person. This form of injury is commonly, though awkwardly, termed as that of passing of one’s goods or business as the goods or business of another and is the most important example of the wrong of injurious falsehood. The gist of the conception of passing off is that the goods are in effect telling a falsehood about themselves, are saying something about themselves which is calculated to mislead. The law on this matter is designed to protect traders against that form of unfair competition which consists in acquiring for oneself, by means of false or misleading devices, the benefit of the reputation already achieved by rival traders.”
I find prima facie that the phonetic similarity between the trademark of the plaintiff and the mark adopted by the defendant, is so much that in juxtaposition no explanation has been given by the defendant for using a word having no common parlance meaning and significance “SHANELLE” and which sounds identical to the trade mark CHANEL of the plaintiff and using the same in respect of perfumes for which the plaintiff’s trademark warrants the grant of injunction in favor of the plaintiff and against the defendant on account of infringing mark of the defendant being deceptively similar with that of the plaintiff, both on the ground of infringement and passing off;
(iii) Coming now to the other point of delay, it may be noted that plaintiff claims that it came to know about the defendant’s mark in January 1995 pursuant to publication in the Trademark Journal whereupon the plaintiff filed opposition which was decided only on 28.4.2000. Against the said decision, plaintiff preferred an appeal which is still pending, wherein there has been an ex-parte stay of the decision appealed against vide this Court’s order dated 7.8.2000;
(iv) As such according to plaintiff there has been no delay at all, since the opposition proceedings and the appeal thereafter is continuing till date. If during this period the defendant has used his infringing mark, that has been at defendant’s own peril;
(v) In the case of a registered mark, the defense of delay, is very, very limited, if at all available. In Shri Swaran Singh Trading as Appliances Emporium v. Usha Industries (India) New Delhi and Anr., of this Court held that an exclusive right is granted by the registration to the holder of a registered trade mark and is a statutory right which cannot be lost by delay. defense of laches or delay can be set up in equity but it cannot be put forth by
some one who had not acted fairly and honestly and has used the trade mark of another person.
In absence of any satisfactory explanation by the appellants, the adoption of the mark by them cannot prima facie is regarded as honest and plea of delay and laches would be of no avail to them. Moreover even if there is an inordinate delay on the part of the plaintiff in taking action against the defendant, the relief of injunction is not to be denied. The defense of laches or inordinate delay is a defense in equity. Inordinate delay or laches may defeat the claim of damages or rendition of accounts but the relief of injunction should not be refused. The defendant has not been able to make out that case. The defendant has failed to show sale of impugned products in the open market. All the sale of the defendant’s goods are confined to canteens/stores of Ministry of defense. I also agree with the further contention of plaintiff’s counsel that even assuming there is delay, that can only adversely affect the plaintiff’s claim for damages but not the claim for injunction.
On the point of delay, I also find that plaintiff has been able to explain the entire period which has been consumed by the objections filed by the plaintiff, as the appeal against the same is pending before this Court, where there is an interim order operating in favor of the plaintiff to the extent of stay of an order of the Registrar by which he had declined relief to the plaintiff. There is merit in plaintiff’s contention that where adoption of the mark is mala fide or where trademark is so deceptively similar, delay cannot be a ground to deny the relief of injunction.
(vi) The other defense of the defendant viz. that he has been a user for the last about 17 years and that his bona fides are clear from the fact that he has not adopted either shape of the bottle or the design of the label of the plaintiff does not appeal to me to disentitle the holder of registered mark from injunction.
(vii) Furthermore it is contended by defendant that a trademark is to be understood in the language in which the mark is written and not by the different pronunciations or different language or nuances of the different language such as French language tone to be adopted in relation to the word “CHANEL” written in the alphabet language but with “CH” being pronounced as “SH”.
10. Considering the wide spread pronunciation of the alphabets “CH” when placed together as “SH” and also the acknowledgment of same even in the Websters Dictionary, to my mind the defendant cannot be allowed to adopt hairsplitting defense regarding pronunciation. The use of sound “SH” for words beginning with alphabet is “CH” is quite common.
11. Considering the above, I find that in the present case all the ingredients required for grant of interim injunction viz. strong prima facie case, balance of convenience and irreparable loss and hardship do exist in favor of plaintiff in the
present case, and therefore, the plaintiff is entitled to grant of injunction in its favor till the final disposal of the main suit.
12. Accordingly an order of interim injunction is granted in favor of the plaintiff restraining the defendants, their partners, stockists, agents and dealers from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in perfumes under the impugned trade mark “SHANELLE” or any other trademark identical to, or deceptively similar to the plaintiff’s trademark “CHANEL” or which amounts to infringement of trademark Registration Nos. 13385, 266305, 336035, 517221, 517222 and 517223 and/or passing off of the goods and/or business of the defendants as and/or for those of the plaintiff.
13. Application is accordingly decided in favor of plaintiff as allowed to above extent.
14. It is made clear that above observations are limited to the context of prayer for interim injunction only.
IA No. 11043/2001 stands disposed of. S. No. 2436/2001
List before the Joint Registrar for admission/denial of documents on 17.1.2003.
In the meanwhile parties may file their documents in original/certified copies/additional documents, if not already filed, within a period of eight weeks from today after exchanging copies.