IN THE HIGHCOURT OF JUDICATURE AT MADRAS CORAM THE HON'BLE MS.JUSTICE R.MALA A.No.2853 of 2008 and O.A.No.1095 of 2007 in C.S.No.845 of 2007 ORDER :
For the purpose of convenience, the parties are referred to as they are ranked in the suit.
2. The plaintiff filed the suit in C.S.No.845 of 2007 for the following reliefs:
(a) for permanent injunction restraining the defendant, by himself, his servants or agents or any one claiming through him, from in any manner infringing the plaintiff’s registered trade mark “S.BEEDI/S.MARK JADI BEEDIES” together with the letter “S” written in an artistic manner by using the offending trade mark “SRI RAGHAVENDRA SWAMY BEEDIES/R.S.BEEDIES” together with the letter “S” written in an identical artistic manner together with identical colour scheme and get up or any other mark or marks which are in any way identical to the plaintiff’s registered trade mark “S.BEEDI/S.MARK JADI BEEDIES” together with the letter “S” written in an artistic manner.
(b) for permanent injunction restraining the defendant, by himself, his servants or agents or any one claiming through him, from in any manner infringing the plaintiff’s registered copyright over the artistic work “S.BEEDI/S.MARK JADI BEEDIES” together with the letter “S” written in an artistic manner by using the offending artistic work “SRI RAGHAVENDRA SWAMY BEEDIES/R.S.BEEDIES” together with the letter “S” written in an identical artistic work or any other work or works which are in any way identical to the plaintiff’s copyrighted artistic work “S.BEEDI/S.MARK JADI BEEDIES” together with the letter “S” written in an artistic manner.
(c) for permanent injunction restraining the defendant, by himself, his servants or agents or any one claiming through him from in any manner passing off his “beedies” bearing the offending trade mark and artistic work “SRI RAGHAVENDRA SWAMY BEEDIES/R.S.BEEDIES” together with letter “S” written in an identical artistic manner as and for the celebrated “Beedies” of the plaintiff’s, sold under the registered trade mark and copyrighted artistic work “S.BEEDI/S.MARK JADI BEEDIES” together with letter “S” written in an artistic manner either by selling or offering for sale or in any manner advertising the same.
(d) to direct the defendant to render a true and faithful account of the profits earned by them through the sale of their “Beedies” bearing the offending artistic work and the trade mark “SRI RAGHAVENDRA SWAMY BEEDIES/R.S.BEEDIES” together with the letter “S” written in identical artistic manner and direct payment of such profits to the plaintiff for passing off committed by the defendant.
(e) to direct the defendant to surrender to the plaintiff the entire stock of unused jewel boxes, bill books, labels etc. bearing the offending artistic work and the trade mark labels together with the blocks and dyes for destruction.
(f) to direct the defendant to pay to the plaintiff the costs of the suit.
3. Pending disposal of the suit, the plaintiff filed Original Application No.1095 of 2007 in C.S.No.845 of 2007, seeking for ad-interim injunction restraining the defendant, by himself, his servants or agents or any one claiming through him from in any manner passing off his “Beedies” bearing the offending trade mark and artistic work “SRI RAGHAVENDRA SWAMY BEEDIES/R.S.BEEDIES” together with the letter “S” written in an identical artistic manner as and for the celebrated “Beedies” of the plaintiff, sold under the registered trade mark and copyrighted artistic work “S.BEEDI/S.MARK JADI BEEDIES” together with the letter “S” written in an artistic manner, either by selling or offering for sale or in any manner advertising the same.
4. This Court, after considering the arguments of the counsel for the plaintiff, on 24.9.2007, while ordering notice, granted an order of interim injunction, which was subsequently extended until further orders.
5. The defendant has come forward with Application No.2853 of 2008 in C.S.No.845 of 2007, for vacating the interim order of injunction. The averments in the said vacate-injunction application, are as follows:
(a) The defendant is manufacturing and selling Beedies, trading under the name and style of “K.Rajender & Sons” from 2000-2001. He adopted a trademark label consisting of “SRI RAGHAVENDRA SWAMY BEEDIES” at its top and in the centre of an artistic work with interwoven alphabets “RS” depicted, which again are placed in a diamond shaped design with the expression “R.S.JADI BEEDI” in various languages on four sides of the diamond design and at the bottom of the label, his trading style “K.Rajender & Sons, Shiva Nagar, Warangal-2 (A.P)” is depicted and all the described matters are surrounded by a border consisting of “RS”, all of them are again printed on repeated expressions of “R.S.BEEDIES” as its background. It is further stated by the defendant that his Beedies packed in the label as described above, are demanded, distributed, sold or supplied as “SRI RAGHAVENDRA SWAMY BEEDIES” and also as “R.S.BEEDIES” in the State of Andhra Pradesh. It is further stated that before introducing the mark into the markets, the defendant obtained necessary approval of the label from the Central Excise Department, vide Registration No.AHKPK1153HXMOO1. The defendant also obtained registration of his trade mark in No.1072315 in Class 34, in respect of the Beedies, under the Trade Marks Act, 1999 and the registration is subsisting.
(b) It is further stated by the defendant that the plaintiff has come forward with the suit and obtained an ex-parte interim order of injunction, by suppressing the material facts. Hence, the defendant has come forward with the vacate-injunction application.
(c) The defendant further stated that the labels of both the plaintiff and the defendant, are visually, phonetically and structurally different and distinct and one can never be mistaken for the other. Even assuming without admitting that the labels are visually similar, the Apex Court held that the ocular test is not always the decisive factor and it is only the phonetic expression that is important in deciding similarity between the competing marks. Applying the said principle, it cannot be said that “R.S.BEEDIES” or “SRI RAGHAVENDRA SWAMY BEEDIES” of the defendant, are identical, similar or deceptively similar to the trade mark “S.BEEDIES” or “S.MARK JADI BEEDIES” of the plaintiff.
(d) The defendant further states that this Court has no territorial jurisdiction and the Beedies of the defendant are sold only in the State of Andhra Pradesh, particularly, in the Districts of Khammam, Krishna and Guntur. The suit has been under-valued and the Court fee paid was insufficient in respect of the prayer relating to passing off action. This Court has even no pecuniary jurisdiction.
(e) The defendant further states that since a large number of Beedi manufacturers have been using “S” in different artistic works and get up, the letter “S” has become “publici juris” and the plaintiff is not entitled to claim exclusive right over the letter “S”. The defendant further states that it is settled law that when a number of persons are using a particular trade mark or a part of trade mark and when that has become “publici juris”, the consumers are expected to distinguish one from the other.
(f) The defendant further contends that he is the registered proprietor of the label consisting of “SRI RAGHAVENDRA SWAMY BEEDIES” and also “R.S.BEEDIES” and so, he is entitled to claim exclusive right to use the trade mark as long as the registration subsists. The defendant further states that he has been manufacturing and marketing the Beedies under the trade mark “SRI RAGHAVENDRA SWAMY BEEDIES”/”R.S.BEEDIES” from 2000-2001 continuously without interference or interruption from any quarter whatsoever, including the plaintiff, though the goods bearing the trade mark are sold side by side.
(g) The defendant further alleges that there is inordinate delay in filing the suit, since the goods bearing the competing marks are being sold side by side from 2000-2001. The plaintiff failed to explain the reason for the delay. The plaintiff kept quiet for more than half a decade from 2000-2001 to 2007, without taking any action, and if really the grievance of the plaintiff is that the marks are identical, it amounts to acquiescence of use of any mark and waiver of the right of the plaintiff, if any, in respect of the said trade mark.
The defendant prayed for vacating the interim order of injunction granted in O.A.No.1095 of 2007.
6. The gist and essence of the counter affidavit filed by the plaintiff in the vacate-injunction application, are as follows:
(a) The registration or otherwise of the mark of the defendant may not have any relevance in an application for passing off, when the plaintiff has produced enough materials for prima-facie proof that he is the prior user of his trade mark, which has been copied by the defendant. The plaintiff has also taken steps before appropriate authorities for rectification of the trade mark which has been registered in favour of the defendant.
(b) It is further stated by the plaintiff that the trade mark “R.S.Beedies” used by the defendant, is deceptively similar in all respects to that of the plaintiff. The plaintiff denied the claim of the defendant that the letter “S” which has been adopted by the plaintiff in an artistic manner and get up, has become “publici juris”. In Trade Marks Journal No.1335, dated 1.10.2005, the defendant’s trade mark was advertised inviting oppositions to the trade mark by the interested parties, if any, and it was made available to the public only on 14.2.2006. However, the abovesaid publication escaped the attention of the plaintiff and hence, the opposition could not be filed by the plaintiff in time, because of which, the defendant’s mark had been registered.
(c) It is further averred by the plaintiff that in September 2007, when the plaintiff noticed the sale of the defendant’s Beedies with a mark deceptively similar as that of the plaintiff, he took immediate steps and applied for rectification of the mark registered in favour of the defendant and immediately, the plaintiff filed the present suit. Hence, there is no inaction on the part of the plaintiff and as such, there is no acquiescence by the plaintiff.
(d) If interim order of injunction is vacated and if the defendant is allowed to trade under the impugned trade mark, the plaintiff would be seriously prejudiced, besides losing the good will and reputation built up by the plaintiff for more than seven decades.
The plaintiff prayed for dismissal of the vacate-injunction application.
7. Learned counsel for the plaintiff would contend that the plaintiff is manufacturing Beedies in the name and style of “S.MARK JADI BEEDIES/S BEEDIES” and he is having a registered trade mark; that the defendant is manufacturing the Beedies in the name and style of “SRI RAGHAVENDRA SWAMY BEEDIES/R.S.BEEDIES” and the defendant also used the artistic letter “S” deceptively similar to that of the plaintiff’s registered trade mark and hence, the plaintiff was constrained to file the suit, and along with the suit, the plaintiff filed application for interim injunction and also obtained the interim injunction in respect of passing off his trade mark. As against the same, the defendant came forward with the application for vacating the interim order of injunction. Learned counsel for the plaintiff prayed for confirming the order of interim injunction.
8. Learned counsel for the defendant would contend that the defendant is manufacturing the trade mark “SRI RAGHAVENDRA SWAMY BEEDIES” from 2005 and he has registered his trade mark with the Central Excise Department and the trade mark “SRI RAGHAVENDERA SWAMY BEEDI” and “R.S.JADI BEEDI” is found at page No.1 of the typed set of papers, dated 14.11.2009, filed by the defendant, from which, it is also evident that the defendant registered the trade mark; in page 2 of the same typed set of papers, the Trade Marks Registry of the Government of India, has given a Certificate of Registration of Trade Mark, in which also, the trade mark “SRI RAGHAVENDERA SWAMY BEEDIES” is found, and the trade mark was registered in Class 34 under No.1072315 as of the date 8.1.2002. Learned counsel for the defendant further contended that the defendant is manufacturing the Beedies and conducting business only in three Districts in the State of Andhra Pradesh, namely Khammam, Krishna and Guntur, and not in other places. The learned counsel for the defendant further contended that the plaintiff is manufacturing “S” Beedies only at Gudiyatham. In the same typed set of papers, dated 14.11.2009, the defendant has filed a copy of the order dated 31.10.2008 in ORA/178/2007/TM/CH, passed by the Intellectual Property Appellate Board (for short, “IPAB”), Chennai, as per which, a petition was filed by the plaintiff for removal of the trade mark No.1072315 in Class 34 from the Register of Trade Marks or rectification of the Register under Sections 47/57/125 of the Trade Marks Act, 1999 and the said petition was dismissed by the IPAB as per the said order dated 31.10.2008. In the same typed set of papers, dated 14.11.2009, the defendant also filed copies of his invoices from 31.5.2001 to 9.1.2007, which shows that the defendant is doing business even from 2001. But the plaintiff has come forward with suit only in 2007, very belatedly. Learned counsel for the defendant prayed for vacating the order of interim injunction.
9. It is worthwhile to refer Section 2(1)(zb) of the Trade Marks Act, 1999, which defines the “trade mark”, as follows:
“Section 2(1)(zb): “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and–
(i) in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and
(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark.”
10. Learned counsel for the plaintiff argued that since the plaintiff has obtained interim order of injunction in respect of passing off the trade mark, the defendant has been now abstained from doing his business and if the interim order of injunction is vacated, the plaintiff would be put to irreparable loss and therefore, learned counsel for the plaintiff prayed for allowing the application for interim injunction or for confirming the interim order of injunction already granted.
11. Learned counsel for the defendant demonstrated before Court stating that the defendant’s trade mark label consists of only “RS” (SRI RAGHAVENDERA SWAMY BEEDIES/R.S.JADI BEEDIES/R.S.BEEDIES) and not “S”, but the plaintiff’s trade mark is “S” (S.MARK JADI BEEDIES/S.BEEDIES) and hence, both the trade marks are entirely different and distinct and are not similar or identical and hence, the learned counsel for the defendant prayed for vacating the order of interim injunction.
12. Per contra, learned counsel for the plaintiff contended that the plaintiff is doing manufacturing business even before 1947 and sold the products even throughout India and he is also exporting the same to foreign countries.
13. Learned counsel for the defendant relied on the order dated 31.10.2008 passed by the IPAB, referred to above, in which, in paragraph 21, it was observed as follows:
“21. A proprietary right in a mark sought to be registered can be obtained in a number of ways. The mark can be originated by a person or can be acquired, but in all cases it is necessary that the person putting forward the application should be in possession of some proprietary right, which, if questioned can be substantiated. In the instant case, the respondent obtained the registration of the trade mark and it is therefore, for him to establish his proprietary right. It is evident from the records that the respondent has not made a whisper about how he adopted the trade mark and in view of the provisions of section 31 of the Act, the rebuttal of the statutory presumption is to be made by the applicant. We cannot assume that the respondent has dishonestly adopted the trademark. We cannot uphold the applicant’s plea that the respondent was fully aware at the time of making application for registration. There is nothing on record to show that the applicant has made advertisements to popularize its mark to assume that the respondent might have come to know the existence/use of the mark of the applicant. The applicant has not attempted to prove that the respondent was aware of its mark and he has malafidely and dishonestly copied its trade mark.”
Relying on the said order passed by the IPAB, the learned counsel for the defendant prayed for vacating the interim order of injunction.
14. Learned counsel for the defendant also relied on the provisions of Sections 27 and 28 of the Trade Marks Act, 1999 and prayed for dismissal of the injunction application. Sections 27, 28 and 31 of the Trade Marks Act, 1999, which are relevant for the purpose of this case, are extracted hereunder:
“Chapter IV: Effect of registration:
Section 27: No action for infringement of unregistered trade mark.–(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.”
“Section 28: Rights conferred by registration.–(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.”
“Section 31: Registration to be prima facie evidence of validity.–(1) In all legal proceedings relating to a trade mark registered under this Act (including applications under section 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof.
(2) In all legal proceedings as aforesaid a registered trade mark shall not be held to be invalid on the ground that it was not a registrable trade mark under section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade mark had been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration.”
15. While considering the arguments of the learned counsel on both sides, admittedly, the defendant got his trade mark registered only on 8.1.2002 in Registration No.1072315 in the Trade Mark Journal No.1,335 and his trade mark label has been mentioned as “SRI RAGHAVENDERA SWAMY BEEDIES” in the name of K.Rajender Trading as “K.Rajender & Sons”, 16-10-751, Shiva Nagar, Warangal-506 002, Manufacturers and Merchants” and inside the trade mark symbol, there are multi-lingual wordings including Tamil, called as @Mh;/v!;/khh;f; $ho gPo@/ These are evident from the copy of the Certificate of Registration of Trade Mark, issued by the Government of India, Trade Marks Registry, which is filed in page 2 of the typed set of papers, dated 14.11.2009, filed by the defendant. The defendant also obtained the Registration Certificate issued by the Central Excise Department in which the Registration Number is indicated as “AHKPK1153HXM001” certifying/registering the trade mark of the defendant as “M/s.RAGHAVENDRA SWAMY BEEDI & R.S.JADI BEEDI”, indicating as “A Proprietorship Firm” registered for manufacturing of excisable goods at 16-10-751, Shiva Nagar, Warangal, H.O. Warangal, Andhra Pradesh-506 002, and the certificate came into effect from 2003, i.e. issued on 25.2.2003 at Warangal. This is also evident from page 1 of the Central Excise Registration Certificate, filed by the defendant in the said typed of papers. The invoices of the defendant’s firm are filed in the same typed set of papers, dated 14.11.2009, filed by the defendant, which indicates that the defendant has been doing business even from 2001 onwards.
16. The defendant, in the very same typed set of papers, dated 14.11.2009, has also filed the order copy of the IPAB, dated 31.10.2008, as referred to above, in which, in paragraph 19, the IPAB observed as follows, in the application filed by the plaintiff for rectification of the Register of the Trade Marks, which was rejected by the IPAB:
“19. … … The applicant has, except copies of trade marks certificates/certified copies for legal use, has not filed a shred of documents to prove or show its use of the mark in the course of trade. Mere existence of mark on the register cannot be proof of use of the mark. Though the applicant has given handsome sales figures in the application but not an iota of invoice has been filed. The sales statement is not certified by the Chartered Accountant. In the absence of any invoice/document, we are unable to come to a conclusion that the applicant is using the trade mark or that the applicant is in the trade of beedies and the respondent’s goods under his trade mark is causing confusion or deception. Without cogent documentary evidence on record, we are not inclined pass any adverse order against the respondent. The applicant has failed to prove its ground of objection under section 11 of the Act.”
17. At this juncture, it is appropriate to consider the documents filed by the plaintiff, in his typed set of papers, dated 19.9.2007, filed by the plaintiff along with the suit; in page 4 therein, a copy of the contents of the Trade Marks Journal had been enclosed, from which it is evident that the plaintiff has been doing business from 27.5.1947 and the renewal/registration of the trade mark was done periodically, and one such registration was on 25.10.1985, in Class 34, under No.444677, which is evident from page 1 of the typed set of papers, dated 19.9.2007 and subsequently it was renewed on 16.10.2006, which is evident from page 2 of the typed set of papers filed by the plaintiff, dated 19.9.2007; from page 3 therein, it is also evident that the trade mark was certified on 18.1.1994; and subsequently, the trade mark was renewed from 27.5.2004, which is evident from page 7 of the typed set of papers and also certified on 24.9.2001, which is evident from page 8 of the same typed set of papers. All these show that the trade mark of the plaintiff has been registered/renewed/certified periodically.
18. In page 9 of the same typed set of papers filed by the plaintiff, dated 19.9.2007, it is indicated therein with regard to registration of the trade mark, in which the “Word Mark “S” is shown in the column “Trade Mark Type Letter”, and the registration date therein is mentioned as “23.2.1945”, with renewal date mentioned as “23.2.1995” in Journal No.32. This shows that even from 1995, the plaintiff has got the registered trade mark “S” by using the artistic trade mark with colour scheme. While perusing page 28 of the typed set of papers, dated 19.9.2007 filed by the plaintiff, it is seen that the registration date was mentioned therein as “20.1.1943”, with the renewal date as “20.1.2000” and in the column “Type Device”, it has been indicated as “Word Mark S”. In page 48 of the same typed set of papers, the plaintiff has filed the extracts from the Register of Copyrights, issued by the Government of India, Copyright Office, which also shows that the plaintiff has obtained copyright in respect of the artistic work “S.BEEDI” and in the said extract, the name of the owner has been shown as “M/s.A.Habeebur Rahman Sons, 245, Thalayatham Bazar, Santhapet, H, Gudiyatham”
19. In page 50 of the said typed set of papers, dated 19.9.2007, filed by the plaintiff, the plaintiff also enclosed a copy of the extracts from the Register of Copyrights of the Government of India, Copyright Office, in which also, the copyright has been issued in the name of the plaintiff with artistic work in respect of “S.BEEDI”. In page 54 of the same typed set of papers, the plaintiff has enclosed a copy of page 806 of the Trade Marks Journal No.1335, Regular, 1st October, 2005, in which, the defendant’s trade mark is published, with address, design and artistic work, and it is further stated therein that, “Registration of this Trade Mark will give no right to the exclusive use of the expressions R.S.JADI BEEDI …”. In the same typed set of papers, the specimen of the plaintiff’s trade mark label (for packing etc.,), with design, colour, etc., is enclosed in page 55 and that of the defendant is found at page 56, and on comparing these two pages 55 and 56 of both the trade mark/labels of the plaintiff and the defendant, it is to be noted that they are somewhat similar in colour, design and get up.
20. In this context, learned counsel for the defendant relied upon a decision reported in AIR 1988 DELHI 282 (P.M.Dissels Pvt. Ltd. Vs. Thukral Mechanical Works), in which, the Delhi High Court held as follows:
“Trade and Merchandise Marks Act (43 of 1958), Ss.28(3), 31(1)–Registered proprietors of identical trade marks in different goods–Infringement of, by one of them–Grant of interim injunction in favour of other–Application by him for deleting of name of one who infringed trade mark from register during pendency of suit for perpetual injunction–Proprietary rights of both of them were protected till their names were on register–No one is entitled to take action against another–No one can be restrained from using his trade mark–Interim injunction vacated.”
“Reading the two provisions together, namely S.28(1) and S.31(1), the implication would be that as long as a trade mark stands registered in the name of a proprietor, the said registration shall be deemed to be valid and the registered proprietor would have an exclusive right to use the said trade mark. If the registration is cancelled by an action being taken under S.56 of the Trade and Merchandise Marks Act, then the protection and right afforded under S.28(1) read with S.31(1) would no longer be available, but till the Register of Trade Mark is corrected and the name of a person holding a trade mark is deleted, that person who is shown as the proprietor of the registered trade mark would continue to have all the rights and privileges which are conferred by the Act on the registered owner of the trade mark.”
21. In the present case, even though the plaintiff filed application for rectification of the trade mark, as observed earlier, the said application has been dismissed by the IPAB on 31.10.2008, holding that the plaintiff (applicant therein) has not attempted to prove that the defendant (respondent therein) was aware of its mark and he has mala-fidely and dishonestly copied its trade mark.
22. Now, it is worthwhile to refer the following decisions relied on by the learned counsel for the plaintiff:
(a) AIR 1972 SC 1359 (Parle Products Vs. J.P.& Co. Mysore):
“To decide the question as to whether the plaintiffs’ right to a trade mark has been infringed in a particular case, the approach must not be that in an action for passing off goods of the defendant as and for those of the plaintiff. In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. It is of no use to note on how many points there is similarity and in how many others there is absence of it.”
(b) AIR 1974 MADRAS 7 (K.R.C.Chetty Vs. K.V.Mudaliar):
“15. On appeal the High Court came to the same conclusion viz., that the defendant’s wrapper was not deceptively similar to the plaintiffs and dismissed the appeal. The appeal to the Supreme Court was filed by special leave and the learned Judges observed at page 622 (Parle Products (P) Ltd. Vs. J.P. and Co., Mysore, 1972-1-SCC 618 = AIR 1972 SC 1359) as follows:-
‘It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered trade mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. ….”
… …..
“19. Though at one stage we considered that the addition of the word ‘Radha’ to the legend ‘Sri Andal’ makes all the difference, after our attention was drawn to the three cases referred to above, viz., (1) relating to the Vick Vaporub, where the objection to the registration of the respondents’ Vaporub which infringed the appellants’ registered mark was sought to be got over by adding a word ‘karosote’ to the respondents’ legend, and (2) where the objection to the registration of the respondents’ trade mark ‘Rustam’ was sought to be met by the addition of the word ‘India’ to the objected legend and (3) where the word “Bulova” was sought to be added to the legend “Accutron” which legend was held to infringe the respondents’ trade mark “Accurist”, we are persuaded to come to the opposite conclusion that the addition of the word ‘Radha’ to the legend ‘Sri Andal’ will not make the slightest difference and that the view of the learned Judge, is correct. The appellants’ snuff sold under the trade name “Sri Andal” the registration of which was objected to by the respondents, has been in the market for some years and the objection to its registration has now been finally upheld. The question for consideration now will be whether by the addition of the word ‘Radha’ to the objected legend makes a vital difference. When the two marks are compared side by side the question will be whether the addition of the word will make any vital difference. As observed by Stamp J. in 1969 RPC 102 at p.109, “Where imperfect recollection is relevant what has to be considered is how far the additional word is significant to prevent imperfect recollection and the resultant confusion.” We are of opinion that the combination of the two words “Radha’s Sri Andal” is likely to be taken by snuff users as the snuff manufactured and marketed by the appellant originally as “Sri Andal”. The appellants’ learned counsel sought to distinguish the above three cases on the ground that in the aforesaid decisions the new word sought to be added was only the name of the country of manufacture while in the present case, the addition of the word ‘Radha’ to the legend ‘Sri Andal’ is a combination which has nothing in common with the respondents’ legend “Sri Ambal”. We are unable to accept the ground of distinction made by the learned counsel. We are of opinion that there is a tangible danger that a substantial number of persons will confuse the appellants’ ‘Radha’s Sri Andal’ mark applied for with the respondents’ legend ‘Sri Ambal Snuff’. ”
23. It is true that if there is a similarity between two trade marks, they should not be placed side by side to find out if there is any difference in the design and if so, whether they are of such a character as to prevent one design from being mistaken for the other. While applying the aforesaid decisions to the facts of the present case, it is seen that from 1943, the plaintiff has been manufacturing the Beedies, selling the same and even exporting. In such circumstances, even though the trade mark of the plaintiff and that of the defendant, to some extent, is similar in design, colour and get up, it will not affect the quality of the products, because, the consumers are very particular about the quality of the goods supplied to them, that too relating to smoking.
24. Learned counsel for the plaintiff also relied on the following decisions:
(a) Ahuja’s Intellectual Property cases (AIPC) No.2, Vol.1, July 1995, Delhi High Court, page 52 : N.R.Dongre and others Vs. Whirlpool Corporation and another:
” …. Therefore, registration of a trade mark under the Act would be irrelevant in an action for passing off. Registration of a trade mark in fact does not confer any new right on the proprietor thereof than what already existed at common law without registration of the mark. The right of goodwill and reputation in a trade mark was recognised at common law even before it was subject of statutory law. Prior to codification of trade mark law there was no provision in India for registration of a trade mark. The right in a trade mark was acquired only by use thereof. This right has not been affected by the Act and is preserved and recognised by sections 27(2) and 33.
The law of passing off as it has developed, permits an action against a registered proprietor of a trade mark for its mendacious use for inducing and misleading the consumers into thinking that his goods are the goods of or are connected with the goods of a prior user of the trade mark. It seems to us that in so far as this Court is concerned, this position cannot be disputed in view of the judgment of the Division Bench in Century Trader Vs. Roshan Lal Duggar & Co. 1978, Delhi 250 where, while construing sections 27(2) and 106 of the Act, it was held as follows:-
“From a reading of the above section it is clear that registration of mark in the trade mark registry would be irrelevant in an action for passing off.”
Thus, the law is pretty well settled that in order to succeed at this stage the appellant had to establish user of the aforesaid mark prior in point of time than the impugned user by the respondents. The registration of the said mark or similar mark prior in point of time to user by the appellant is irrelevant in an action for passing off and the mere presence of the mark in the register maintained by the trade mark registry did not prove its user by the persons in whose names the mark was registered and was irrelevant for the purposes of deciding the application for interim injunction unless evidence has been led or was available of user of the registered trade marks….
Again in Consolidated Foods Corporation Vs. Brandon & Co., AIR 1965 Bombay 35 similar view finds expression. In this regard it was held as follows:
” …. To summarise, therefore, a trader acquires a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection directly the article having assumed a vendible character is launched upon the market. As between two competitors who are each desirous of adopting such a mark, “it is, to use familiar language, entirely a question of who gets there first.” (Gaw Kan Lye v. Saw Kyone Saing, AIR 1939 Rang 343 (FB). Registration under the statute does not confer any new right to the mark claimed or any greater right than what already existed at common law and at equity without registration. It does however, facilitate a remedy which may be enforced and obtained throughout the State and it established the record of facts affecting the right to the mark. Registration itself does not create a trade mark. The trade mark exists independently of the registration which merely affords further protection under the statute. Common law rights are left wholly unaffected. Priority in adoption and use of a trade mark is superior to priority in registration.”
… …
“The concept and principle on which passing off action is grounded is that a man is not to sell his own goods under the pretence that they are the goods of another man. A trader needs protection of his right of prior user of a trade mark as the benefit of the name and reputation earned by him cannot be taken advantage of by another trader by copying the mark and getting it registered before he could get the same registered in his favour. We see no reason why a registered owner of a trade mark should be allowed to deceive purchasers into the belief that they are getting the goods of another while they would be buying the goods of the former which they never intended to do. In an action for passing off it should not matter whether misrepresentation or deception has proceeded from a registered or an unregistered user of a trade mark. He cannot represent his own goods as the goods of some body else.”
(b) AIR 1992 MADRAS 253: (G.T.C. Industries Ltd., Bombay Vs. I.T.C. Limited, Madras):
“In the instant case the registered trade mark of Cigarette “Gold Flake”; the name, being common to the trade was modified by the Company I.T.C. Ltd. The leave under S.58 (of the Trade and Merchandise Marks Act) of the said modifications however were not procured from the competent authority. “Another cigarette manufacturing company” was also manufacturing cigarettes by the same name “Gold Flake”. The colour scheme and other features of the modified trade mark were adopted by the said “offending company” with some variation. The imitations however were “deceptively similar”. It was held that as imitations prima facie are deceptively similar the Company offending the trade mark cannot be allowed to continue with the infringement offended trade mark.
As regards the plea of Company offending the trade mark that the name and colour scheme etc. are features common to the trade it was held that what features in a trade mark are common to a trade is a matter of evidence which can be gone into only at the trial of the suit.”
… …
“26. Then, with reference to the above referred to paragraph 8(iib) submissions of the learned counsel for the appellant, we state that even though S.58(1) of the Act says that a registered proprietor for leave to alter the trade mark in any manner not substantially affecting the identity thereof, no provision of authority was shown to use to the effect that if the leave is not obtained, the altered trade mark cannot be made use of. No doubt, Kerly (Kerly’s Law of the Trade Marks and Trade names–12th Edition) says in his book in paragraphs 15-41 at page 310 that the variation in one’s registered mark, provided it is not an infringement of any other person’s mark or a breach of any agreement binding upon him, is perfectly lawful, although, so far as the mark actually used differs substantially from his registered mark, it is an unregistered mark. But Kerly also adds therein that it is well settled that the use of a varied mark by the plaintiff does not in any way stop him from proceeding against infringers. ….. ”
(c) 1996 “The Patents and Trade Marks Cases” (PTC) (16) SC 583 (N.R.Dongre Vs. Whirlpool Corporation):
“Trade and Merchandise Marks Act, 1958 : Section 106: Passing off: Action against registered owner of trade mark at the instance of prior user of the same or similar mark maintainable–Injunction can be granted even against an owner of the trade mark in an appropriate case.”
25. While applying the citations relied on by both parties, to the facts of the present case, as per the documentary evidence, the defendant is having a registered mark only from 2002/2003 and he is manufacturing and selling the Beedies only in the State of Andhra Pradesh, that too, in three Districts, namely, Khammam, Krishna and Guntur. Admittedly, no document has been filed by the plaintiff to show that he is selling his products in Tamil Nadu and the consumers were confused in view of the similar design, colour scheme and get up, by combination of the letters “RS/S” in the trade marks in question. These facts have also been considered by the IPAB, as referred to in the earlier paragraphs, by order dated 31.10.2008 and after elaborate enquiry, the IPAB, considered the facts and rejected the petition filed by the plaintiff herein for removal of trade mark No.1072315 in Class 34 from the Register of Trade Marks or rectification of the Register under Sections 47/57/125 of the Trade Marks Act, 1999.
26. In such circumstances, I am of the view that as per the decision relied upon by the learned counsel for the plaintiff, reported in AIR 1992 Madras 253 (cited supra), the plea of the Company offending the trade mark therein was that the name and colour scheme, etc., are features common to the trade, and it was held that what features in a trade mark are common to a trade, is a matter of evidence which can be gone into only at the trial of the suit.
27. It is also worthwhile to notice a judgment of a Division Bench of this Court, reported in 2006 (2) M.L.J. 834 (Devi Pesticides Pvt. Ltd. Vs. Shiv Agro Chemicals Industries), wherein, it was held as follows:
“It is well settled that any action for infringement and passing off where the similarity between the trade mark of the plaintiff and the defendant is so close either visually, phonetically or otherwise and the Courts reached the conclusion that there is imitation, no further evidence is required to establish that the plaintiffs’ rights are violated”.
28. In the present case, the plaintiff’s trade mark is “S.BEEDIES/S.MARK JADI BEEDIES”, whereas the defendant’s trade mark is “SRI RAGHAVENDERA SWAMY BEEDIES/R.S.JADI BEEDIES”. The trade marks of the plaintiff and the defendant, are phonetically different and there is no similarity while pronouncing the trade marks. In such circumstances, the plaintiff is not entitled to get an order of interim injunction.
29. In the case on hand, both the plaintiff and the defendant are registered trade mark holders and as per Section 28 of the Trade Marks Act, 1999, right to use the trade mark is conferred by registration and as per Section 31 of the Trade Marks Act, 1999, the registration is prima-facie evidence of validity.
30. Furthermore, even from 2001 itself, the defendant is doing business; but the plaintiff filed the present suit only in 2007 in C.S.No.845 of 2007. Even as per the documents filed by the plaintiff, the defendant’s trade mark registration was published in the Trade Marks Journal of 2005, but the plaintiff did not make any objection at that time.
31. As per the documents filed by both parties, it is to be noted that the trade mark of the defendant is “SRI RAGHAVENDERA SWAMY BEEDIES/R.S.JADI BEEDIES” and the trade mark of the plaintiff is “S.BEEDIES/S.MARK JADI BEEDIES”. In the above circumstances, I am of the view that since there is no evidence to show that only because of the defendant’s products being sold, the sale of the plaintiff’s products had been decreased and the plaintiff suffered loss and lost goodwill/reputation. Hence, it has to be held that the plaintiff is not entitled for an interim of injunction in respect of passing off the trade mark/copyright in question.
32. Furthermore, if, after full-fledged trial of the suit by letting in oral and documentary evidence, the Court comes to the conclusion that the defendant has infringed the trade mark of the plaintiff, then, the plaintiff is entitled to be compensated in respect of the damages/loss/reputation/goodwill, caused to him.
33. With the above observations, the vacate-injunction application is allowed and the interim order of injunction already granted, is hereby vacated. The injunction application is dismissed.
16.04.2010
Index: Yes
Internet: Yes
cs
R.MALA,J
Order in
A.No.2853 of 2008 & O.A.No.1095 of 2007
in C.S.No.845 of 2007
16.04.2010