IN THE HIGH COURT OF JUDICATURE AT MADRAS THE HON'BLE MR.JUSTICE G.RAJASURIA OA.Nos.126 and 127 of 2010 in C.S.No.114 of 2010 ORDER :
The facts giving rise to the filing of the suit and the applications would run thus:
(a) The plaintiff filed the suit seeking the following reliefs:
“a. To grant permanent injunction restraining the defendant, by himself, or any one claiming through them from in any manner committing acts of copyright infringement by using MINISTER COTTON label which is a substantial reproduction of plaintiff’s MINISTER WHITE label in get up and layout or in any other manner whatsoever;
b) to grant permanent injunction restraining the defendant, by himself, his men, servants, agents, distributors, stockists, representatives or any one claiming through him from in any manner passing off and/or enabling others to pass off the defendants’ readymade garments as and for the plaintiff’ readymade garments by manufacturing, selling, or offering to sell, distributing, displaying, printing, stocking or in any manner using the trademark MINISTER COTTON or any other mark deceptively similar to the plaintiff’s trademark MINISTER WHITE or in any other manner whatsoever;
(c) to direct the defendant to surrender to plaintiff for destruction of all readymade garments, labels, dyes, blocks, moulds, screen prints, packing materials and other materials bearing the trademark and artistic work MINISTER COTTON labels or any mark deceptively similar to plaintiff’s trademark and artistic work MINISTER WHITE labels.
(d) to grant preliminary decree in favour of the plaintiff direct the defendant to render account of profit made by use of trademark and copyright in the artistic work MINISTER COTTON and a final decree be passed in favour of the plaintiff for the amount of profits thus found to have been made by the defendant after the latter have rendered accounts, or
(e) The defendant be ordered and decreed to pay to the plaintiff a sum of Rs.10,05,000/- as damages for acts infringement of copyright and passing off committed by the defendant by manufacturing and sale of readymade garments bearing the trademark and artistic work MINISTER COTTON labels.”
(extracted as such)
(b) The same plaintiff filed these applications with the following prayer:
“O.A.No.126 of 2010: to grant ad-interim injunction restraining the respondent, by himself, his men, servants, agents, distributors, stockiest, representatives or any one claiming through them from in any manner committing acts of copyright infringement by using MINISTER COTTON label which is a substantial reproduction of applicant’ MINISTER WHITE label in get up and layout or in any other manner whatsoever pending disposal of the suit.?
O.A.No.127 of 2010: to grant ad-interim injunction restraining the respondent, by himself, his men, servants, agents, distributors, stockists, representatives or any one claiming through him from in any manner passing off and/or enabling others to pass off the respondents’ readymade garments as and for the applicant’ readymade garments by manufacturing, selling, or offering to sell, distributing, displaying, printing, stocking or in any manner using the trademark MINISTER COTTON or any other mark deceptively similar to the applicant’ trademark MINISTER WHITE or in any other manner whatsoever pending disposal of the suit.”
(extracted as such)
(c) Common counter has been filed in both the applications, denying and refuting, challenging and impugning the averments/allegations in the affidavits accompanying the applications.
2. For convenience sake the parties are referred to here under according to their litigative status in the suit.
3. Heard the learned counsel for both sides.
4. The points for consideration are as under:
(i) Whether the plaintiff is entitled to get ad-interim injunction, so as to restrain the defendant from in any manner committing the acts of copyright infringement by using MINISTER COTTON label, which is a substantial reproduction of the plaintiff’s MINISTER WHITE label, in get up and layout or in any other manner whatsoever, pending disposal of the suit.?
(ii) Whether the plaintiff is entitled to get ad-interim injunction, so as to restrain the defendant from in any manner passing off and/or enabling others to pass off the defendant’s readymade garments as and for the plaintiff’s readymade garments by manufacturing, selling, or offering to sell, distributing, displaying, printing, stocking or in any manner using the trademark MINISTER COTTON or any other mark deceptively similar to the plaintiff’s trademark MINISTER WHITE or in any other manner whatsoever, pending disposal of the suit.”
5. The gist and kernal, the pith and marrow of the arguments as put forth and set forth on the side of the plaintiff would run thus:
(i) The plaintiff is the prior user of the trade mark, namely, ‘Minister White’ for the purpose of selling his readymade white shirts. In fact, the term ‘Minister White’ is found depicted in its trade mark in italicized version and that is having peculiarity of its own.
(ii) The plaintiff also applied to the Trade Mark Registry concerned for getting the said trade mark registered and it is pending.
(iii) Ignoring the fact of the plaintiff having been using the trade mark ever since 2006 for selling his white shirts under the said trade mark, the defendant started using deceptively the plaintiff’s trade mark ‘Minister White’ as ‘Minister Cotton’ in attempting to sell its shirts.
(iv)In fact, the defendant is not the prior user and there is nothing to indicate that the defendant at least commenced selling such shirts as on the date of this suit. But the defendant expressed its desire to use the said trade mark ‘Minister Cotton’, which is deceptively similar to that of the plaintiff’s for the purpose of selling its product, in the application in getting it registered with the Registrar of trade marks, whereupon alone the plaintiff has been constrained to file the suit and also the applications for the above said interim reliefs.
(v) Simply because the defendant’s trade description refers to ‘Minister Khadi’ and ‘Minister Cotton’ in respect of the cloths manufactured by the defendant’s mills, that it does not mean that it is empowered to use the trade mark ‘Minister Cotton’ in selling its readymade white shirts, which it never commenced manufacturing and selling till 2009.
(vi) Whereas the plaintiff, being a tailor originally, by his own innovation brought about the trade mark “Minister White’ in italicized version and using it, and day by day it gained popularity and now the sale turn over of the plaintiff is more than 1= crores per year and as such, if the defendant being a big manufacture of textile goods, is allowed to deceptively emulate and simulate the trade mark of the plaintiff then certainly, the plaintiff would be driven out of his business.
(vii) Mere minor modifications in the defendant’s Trademark, as suggested by the defendant during the pendency of the suit, in no way would enable the common man to distinguish and differentiate the plaintiff’s trademark with that of the defendant’s.
Accordingly, the learned counsel for the plaintiff seek for injunctions as prayed in the applications.
6. By way of torpedoing and pulverising the arguments as put forth on the side of the plaintiff, the learned counsel for the defendant would advance and set forth his arguments, the warp and woof of them would run thus:
(a) Ever since 1993, the defendant started using the word ‘Minister’ as its trade mark with various suffixes. As such, it is the plaintiff, who is passing off the trade mark of the defendant and not the defendant.
(b) The defendant also thought fit to withdraw the very same application, which it filed for getting the trade mark registered as ‘Minister Cotton’ in respect of its readymade shirts and that it intends to file a fresh application for getting its trade mark registered as ‘RAMRAJ Minister Cotton White Shirts’ and in such a case, the cause of action for filing of the suit itself as alleged in the plaint, as of now, is not in existence.
(c) The modified version of the defendant’s trade mark as suggested during the course of argument on defendant’s side would clearly exemplify and evince no much of a muchness which could be noticed by this Court or by a common man. There are no similarities at all between the trade mark of the plaintiff and the suggested modified version of the defendant’s trade mark.
(d) The defendant cannot be prevented from extending its business in selling of readymade shirts by using its trade mark in whatever manner.
(e) The plaintiff, who is the subsequent user of the trade mark cannot seek for injunction.
Accordingly, the learned counsel for the defendant prays for the dismissal of the applications.
7. Indubitably and indisputably, unarguably and unassailably the facts would run thus:
The plaintiff has been using its trade mark ‘Minister White’ in selling his readymade shirts to the public ever since 2006 and he has also applied to the trade mark registry concerned for getting the said trade mark registered and it is pending. While so, the defendant has intended to sell its readymade white shirts under the trade mark ‘Minister Cotton’.
8. The question arises as to whether the defendant is copying or deceptively emulating or simulating the very trade mark of the plaintiff?
9. It is quite obvious and axiomatic that the word ‘Minister’ is found used in both the trade marks of the plaintiff and the defendant. However, the suffix in the plaintiff’s trade mark would refer to ‘White’, whereas the suffix in the defendant’s trade mark would refer to the word ‘Cotton’. In my opinion the words ‘Minister’, ‘White’ and ‘Cotton’ are all common words and they are in the realm public juris.
10. The question might arise in such a case as to whether one could get injunction as against the other.
11. At this juncture I could recollect and call up the trite proposition of law that even in respect of the words in the realm of public juris, if a trader is using certain words in peculiar combination with each other, then certainly he could claim right over it as his exclusive trade mark.
12. Here, the attempt on the part of the plaintiff to claim that the trade mark ‘Minister White’ as his exclusive trade mark has to be taken with a pinch of salt for the reason that the first part of the term ‘Minister White’ would refer to the word ‘Minister’, which has been under the use of the defendant ever since 1993, as evidenced by the various documents/invoices enclosed in the defendant’s typed set of papers and there could be no quarrel over such a factual position.
13. There of the question arises as to whether the suffix ‘White’ used by the plaintiff could be used by the defendant. It is at once clear that the defendant is not using the word ‘White’ at all. Consequently the question arises as to why then the plaintiff should raise his accusative finger as against the defendant for using the defendant’s own trade mark as ‘Minister Cotton’.
14. There is a vast difference between the term ‘Minister White’ and ‘Minister Cotton’ and on that I am having no hesitation in holding that both the terms cannot simply be treated as phonetically or visually similar.
15. The learned counsel for the plaintiff would advance his submissions that the trade mark ‘Minister White’ is found depicted in italicized version and that too with certain peculiarities. According to him that attracted the attention of his customers to identify the goods of the plaintiff and in such a case if the same italicized version is used by the defendant in depicting his trade mark ‘Minister Cotton’ certainly a common man would be carried away by the similarities between the two trade marks.
16. I would like to point out that when this Court, at the initial stage of the hearing raised the query by pointing out that the italicized version in the trade mark of the defendant might at times bamboozle and beguile an unwary purchaser, the learned counsel for the defendant has come forward with the modified version of the defendant’s trade mark and it is found filed in the additional typed set of papers, a copy of which also has been given to the learned counsel for the plaintiff.
17. On a mere comparing of the plaintiff’s trade mark with that of the modified version of the defendant’s, I could see that there is a chasm between the two and by no stretch of imagination or by no phantasmagorically views it could be stated that both are one and the same, even though the term ‘Minister Cotton’ in the middle of the defendant’s trade mark is in the italicized version.
18. The modified version of the defendant’s trade mark is in elongated rectangular shape with the word ‘RAMRAJ’ depicted in capital letters in the inner rectangle and beneath that the italicized version of the term ‘Minister Cotton’ depicted on a zigzag line and beneath that in ordinary bold letters the term ‘White Shirts’ also is found projected.
19. However, the plaintiff’s version of its trade mark is in a comparatively truncated rectangule and the size of both the rectangles differ from each other significantly. The itslicized version of the term ‘Minister White’ is not same as that of the italicized version of the term ‘Minister Cotton’ used by the defendant in its modified form. The term ‘Minister Cotton’ as found used in the defendant’s modified version is found depicted on a zigzag line, whereas, in the plaintiff’s trade mark, the word ‘Minister’ is found depicted at the top and beneath that, the word ‘White’ is found printed and still beneath that in small letters the words ‘Premium Shirts’ are found printed. As such, no one who could see and view side by side the modified version of the defendant’s trade mark and the plaintiff’s trade mark, would ever get bamboozled or beguiled, mislead or confused, perplexed or flummoxed.
20. At this juncture, I would like to point out also that nowadays consumarism is at its hight and it cannot be taken that the consumers are so gullible in mistaking one for another unless there are certain glaring similarities between the two trade marks.
21. In view of the ratiocination adhered to by me above what I could see is that glaring similarities could not be seen between the two trade marks and in such a case, the plaintiff cannot claim that its copy right has been infringed by using an italicized version of the word ‘Minister Cotton’ by the defendant in its trade mark. Even though an italicized version of the term ‘Minister Cotton’ is used in the defendant’s trade mark, the style of it greatly differs from the style of the plaintiff’s which is in artistic italic letters.
22. I am also of the view that the word ‘Minister Cotton’ got subsumed or fell into less prominence in view of the prominent printing of the words ‘RAMRAJ’ with colour background and the words ‘While Shirts’ in bright colour. As such, the term ‘Minister Cotton’ is sandwiched by the terms ‘RAMRAJ’ and ‘White shirts’ prominently and wherefore I am of the view that blanket injunction cannot be granted as prayed for by the plaintiff on the ground that the defendant infringed the copy right of the plaintiff and that he is also trying to pass off the goods of the plaintiff.
23. I would like to refer to the decisions cited on both sides in seriatim.
The learned counsel for the plaintiff cited the following decisions:
(i) (2004)6 SUPREME COURT CASES 145 SATYAM INFOWAY LTD., SIFFYNET SOLUTIONS (P) LTD., certain excerpts from it would run thus:
“13. The next question is, would the principles of trade mark law and in particular those relating to passing off apply? An action for passing off, as the phrase passing off itself suggests, is to restrain the defendant from passing off its goods or services to the public as that of the plaintiffs. It is an action not only to preserve the reputation of the plaintiff but also to safeguard the public. The defendant must have sold its goods or offered its services in a manner which has deceived or would be likely to deceive the public into thinking that the defendants goods or services are the plaintiffs. The action is normally available to the owner of a distinctive trade mark and the person who, if the word or name is an invented one, invents and uses it. If two trade rivals claim to have individually invented the same mark, then the trader who is able to establish prior user will succeed. The question is, as has been aptly put, who gets these first? It is not essential for the plaintiff to prove long user to establish reputation in a passing-off action. It would depend upon the volume of sales and extent of advertisement.
14. The second element that must be established by a plaintiff in a passing-off action is misrepresentation by the defendant to the public. The word misrepresentation does not mean that the plaintiff has to prove any mala fide intention on the part of the defendant. Of course, if the misrepresentation is intentional, it might lead to an inference that the reputation of the plaintiff is such that it is worth the defendants while to cash in on it. An innocent misrepresentation would be relevant only on the question of the ultimate relief which would be granted to the plaintiff3. What has to be established is the likelihood of confusion in the minds of the public (the word public being understood to mean actual or potential customers or users) that the goods or services offered by the defendant are the goods or the services of the plaintiff. In assessing the likelihood of such confusion the courts must allow for the imperfect recollection of a person of ordinary memory.
15. The third element of a passing-off action is loss or the likelihood of it.”
(ii) AIR 1961 MADRAS 111 YULU AND OTHERS VS. BALRAJ AND CO., certain excerpts from it would run thus:
“5. . . . It is well established that; in order to obtain copyright production for literary, domestic, musical and artistic works, the subject dealt with need not be original, or the ideas expressed be something novel. What is required is the expenditure of original skill or labour in execution and not originality of thought.
. . . .
(7) . . . .
“Mr.Gopalaswami Aiyangar for the appellants contended that the learned Judge had approached the case from the standpoint of a passing-off action and employed the test whether any person looking at the respondent’s picture ‘Bala Murugan” would mistake it for the appellants’ picture “Mayura Priya’. We agree that this could not be the sold test, though, incidentally, the points of resemblance and dissimilarity assume some importance in the case in finding out whether, taken as a whole, the respondents’ picture produces the impression in the mind of any observer, which amounts to a suggestion of the appellants’ picture.
. . .
Indeed, every intelligent copying must introduce a few changes, and we evidence of such intelligent copying in the few changes introduced in the shape of the trident, in the posture of the arms, in the position occupied by the ‘face of the peacock and the cobra and the cobra and in the pictorial representation of the building in the background. These do not constitute, in our opinion, the criteria of an independent work by the artist employed by the respondents.”
(iii) (2005) 3 SUPREME COURT CASES 63-DHARIWAL INDUSTRIES LTD., AND ANOTHER VS. M.S.S.FOOD PRODUCTS, certain excerpts from it would run thus:
“4. It is seen that at the relevant time, neither party had a registered trade mark for the respective marks claimed by them, though it appears that both of them have subsequently applied in that behalf and their applications are pending.
7. Section 27 of the Trade Marks Act, 1999 provides that nothing in that Act shall be deemed to affect the right of action against any person for passing off goods or services as the goods of another person or as services by another person or the remedies in respect thereof. Therefore, the fact that neither party has a registered trade mark as on the date of the suit cannot stand in the way of entertaining the claim of the plaintiff and granting the plaintiff an injunction in case the plaintiff is in a position to show prima facie that it was the prior user of its mark, that it had a prima facie case and that the balance of convenience was in favour of the grant of an interim injunction. It is provided in Section 39 of the Act that an unregistered trade mark may be assigned or transmitted with or without goodwill of the business concerned. It is, therefore, possible for a plaintiff or a defendant to show that an unregistered trade mark that was being used by another person earlier had been assigned to it and that it can tack on the prior user of its predecessor.”
(iv) AIR 1960 SUPRE COURT 142 CORN PRODUCTS REFINING CO., VS. SHANGRILA FOOD PRODUCTS LTD, certain excerpts from it would run thus:
“15. The series of marks containing the common element or elements therefore only assist the applicant when those marks are in extensive use in the market. The onus of proving such user is of course on the applicant, who wants to rely on those marks. Now in the present case the applicant, the respondent before us, led no evidence as to the user of marks with the common element. What had happened was that the Deputy Registrar looked into his register and found there a large number of marks which had either Gluco or Vita as prefix or suffix in it. Now of course the presence of a mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the marks on the register. If any authority on this question is considered necessary, reference may be made to Kerly p. 507 and Willesden Varnish Co. Ltd. v. Young & Marten Ltd. 4 It also appears that the appellant itself stated in one of the affidavits used on its behalf that there were biscuits in the market bearing the marks Glucose Biscuits, Gluco biscuits and Glucoa Lactine biscuits. But these marks do not help the respondent in the present case. They are ordinary dictionary words in which no one has any right. They are really not marks with a common element or elements. We, therefore, think that the learned appellate Judges were in error in deciding in favour of the respondent basing themselves on the series marks, having Gluco or Vita as a prefix or a suffix.
20. It was then said that the goods were not of the same description and that therefore in spite of the similarity of the two marks there would be no risk of confusion or deception. We are unable to accept this contention. It is true that we have to proceed on the basis that the goods are not of the same description for the purposes of Section 10(1) of the Act. But there is evidence that glucose is used in the manufacture of biscuits. That would establish a trade connection between the two commodities, namely, glucose manufactured by the appellant and the biscuits produced by the respondent. An average purchaser would therefore be likely to think that the respondents Gluvita biscuits were made with the appellants Glucovita glucose. This was the kind of trade connection between different goods which in the Black Magic case (In re: an application by Edward Hack) was taken into consideration in arriving at the conclusion that there was likelihood of confusion or deception. The goods in this case were chocolates and laxatives and it was proved that laxatives were often made with chocolate coatings. We may also refer to the Panda case (In re: an application by Ladislas Jellinek). The goods there concerned were shoes and shoe polishes. It was observed that shoe polishes being used for shoes, there was trade connection between them and that this might lead to confusion or deception though the goods were different. The application for registration was however refused under that section of the English Act which corresponds to Section 8 of our Act on the ground that the opponents, the manufacturers of shoes, had not established a reputation for their trademark among the public.”
24. The aforesaid decisions cited on the side of the plaintiff are all on the proposition that deceptively similar trade marks should not be used by the defendant, so as to affect the right of the plaintiff.
25. Absolutely there could be no quarrel over such a proposition. However, in view of the ratiocination adhered to by me above in pointing out that much of a muchness could not be seen between the trade marks of the plaintiff and the modified version of the defendant’s, I would like to hold that those decisions are not applicable to the facts of this case.
26. Whereas, the learned counsel for the defendant would cite the following decisions:
(i) (2009) 1 MLJ 679 T.K.KRISHNAMACHARI & CO., VS. GODREJ AGROVET LIMITED, certain excerpts from it would run thus:
“7. The word Yummy as per the WEBSTER’S DICTIONARY means “delicious, luscious, pleasant-tasting; extremely pleasant to the sense of taste”. As per the OXFORD DICTIONARY, it carries the meaning “delicious”. In CAMBRIDGE DICTIONARY, the word Yummy means ‘tasting extremely good”. The very fact that the applicants have chosen to disclaim the word Yummies would go to show prima facie that the said word is not distinctive. No one would like to give up their claim for monopoly of their trade mark registered unless the trade mark falls shot of distinctiveness. The disclaimer is an antithesis of distinctiveness. If a trade mark registered has been derived from the dictionary or a common language which is in vogue in the society, it loses its distinctiveness as the primary meaning of the word is only descriptive. Unless the word acquires a secondary meaning indicating the products of a particular trader, a person who has registered such a trade mark cannot seek for passing off action. That is to say a distinctiveness attached to the dictionary word or a word in common usage can be acquired only through the long usage. The consumer should come to identify such a trade mark with that of the It requires lot of advertisements in the multimedia.
8. The mere use of the mark or increased use of the mark does not prove that the mark is distinctive. The use and increased use of the mark must be in distinctive sense so as to identify the product of the claimant with that of the mark. The laudatory or descriptive epithet found common in use should lose its primary meaning and acquire a new dimension of distinctive meaning on account of the use of the product with the mark concerned.
10. Firstly, it is found that the mark Yummy is not the innovative mark of the applicants. The search report filed by the respondent would, prima facie, show that the same mark had been used previously and subsequently by some other companies. The word Yummy, which carried the meaning of ‘delicious and pleasant tasting stuff’, is only descriptive or laudatory, epithet of the word Yummies. Therefore, the plaintiff has to necessarily establish that the mark Yummies has acquired secondary meaning.
11. The sales turnover of the entire food products of domestic variety of the applicants for the year 1999-2000 has been arrived at Rs.10,37,683.52 and for the year 2000-2001 at Rs.15,25,407.10. It is to be noted that no separate volume of business of the product Yummies was produced by the applicants. The sales turnover for the year 2002-2007 is found to be very very negligible. A stray instance of advertisement made in the year 2007 just before laying of the suit has been produced to show that the product of the applicants Yummies was promoted, but no substantial material was produced to establish that the product was promoted prior thereto engaging multimedia on spending huge amount towards advertisement. . . . .”
(ii) 2009(40 PTC 922(BOM) ATUL PRODUCTS LIMITED VS. V.P.MEHTA, certain excerpts from it would run thus:
“Section 27 Trade mark ‘Atul” Word ‘Atul’, being the name of a person and commonly used as such a generic term trade name ‘Atul Chemicals’ Defendant used it differently Absence of any confusion shown by the plaintiff to have been caused by the defendant For want of any confusion caused by the defendant or any lack of bona fides in the use of the name, the defendants cannot be injuncted from using the word ‘Atu;’ as the defendants’ trade name or style Suit, dismissed.”
(iii) 2008(37) PTC 569 (DEL) BDA PRIVATE LIMITED VS. PAUL P.JOHN AND ANOTHER, certain excerpts from it would run thus:
“Order 39 Rule 1 and 2 Passing off Plaintiff’s trademark ‘OFFICER’S CHOICE’ and defendant’s mark ‘ORIGINAL CHOICE’ used for same produce i.e. Whisky Courts have always frowned upon plaintiffs who have instituted actions without disclosing the full facts The plaintiff ought to have disclosed the fact that it was aware of the defendants’ activities from the very inception i.e from 1995-1996 Suppression of facts Plaintiff not entitled to any interim injunction Delay and acquiescence would be material considerations for the grant of an interlocutory order Prayer for interim injunction declined.”
(iv) 2008 (37) PTC 466 (DEL) KIRORIMAL KASHIRAM MKG. AND AGENCIES PVT.LTD VS. SHREE SITA CHAWAL UDYOG, an excerpt from it would run thus:
“Order 39 Rules 1 and 2 Suit filed by the plaintiff claimed to be the owner of trademark Double Dear Defendant adopted the trademark Golden Dear in relation to rice No similarity between the defendant’s label and that of plaintiff label No visual similarity between defendant’s name and the plaintiff’s name Even an illiterate person can see if there are two deer on the label or there is only one deer on the label Different areas of business Application dismissed.
(v) AIR 1965 MADRAS 250 T.M.ABDUL RAHIM AND CO., VS. AHMED BASHA, certain excerpts from it would run thus:
“The question whether there is no resemblance between two marks or get up of the goods depends upon the particular facts of every case. Two important things have to be satisfied by any trader who asserts that he is entitled to be protected with regard to his trade mark (1) that his trade mark or part of it is not likely to deceive or cause confusion and (2) that his mark is not identical with or closely similar to the trade mark belonging to a different proprietor in respect of the same goods. Where the marks are identical, the plaintiff has merely to show that the defendant is using the trade mark in relation to goods which are included in the plaintiff’s registration. Where the whole or any essential particular of the plaintiff’s mark forms an element of combination with other matter in the defendants label, the Court will grant an injunction, if it finds that the addition of the other matter in the label is in effect only a colourable introduction to disguise the real purpose of infringement.”
(vi) 2002(25) PTC 704 (Karn) BDA BREWERIES AND DISTILLERIES LTD VS. SHREE DURGA DISTILLERY, certain excerpts from it would run thus:
“Passing off action Permanent injunction Restraining the defendant from using the name “officers Favourite’ in relation to alcoholic beverages in any manner or any other name deceptively similar to the appellant’s trade mark ‘Officers Choice’ Respondent user of the product Whisky in the trade earlier in point of time No deceptive similarity either between the shape of the bottles or on the labels printed thereon so as to mislead the mind of a man of common intelligence to mistake the product of one person as the product of the other Trial court right in refusing injunction.”
(vii) (2009) 8 MLJ 1607 NUTRINE CONFECTIONERY CO. LTD., VS. ICON HOUSEHOLD PRODUCTS PVT.LTD., AND ANOTHER, an excerpt from it would run thus:
“Trade Mark Suit for permanent injunction restraining defendants from infringing appellants trademark “Lacto’ and passing off their goods as that of plaintiff Pending suit, application for temporary injunction and other reliefs dismissed Appeal Fast of infringement within its meaning against the infringer by usage of word “Lacto’ should be independently proved to the satisfaction of the Court Word “Lacto’ was not registered by appellant as an exclusive mark When the word ‘Lacto’ was not registered as an exclusive mark, using of word by respondents cannot be construed as infringement of appellants trade mark ‘Lacto’ ‘Lacto bon bon’ is a common generic expression used in relation to milk candies No prima facie case has been made out to grant an injunction in favour of appellants Balance of convenience is also not in favour of appellant Appeals dismissed.”
27. A mere poring over and perusal of the above excerpts, including the whole judgements, wold highlight that if the differences are significant and not minor and the similarities are lacking then no injunction could be granted.
28. To the risk of repetition and pleonasm but without being tautalogous, I would like to point out that here the modified version of the defendant’s trade mark certainly would not affect the right of the plaintiff in selling his product and accordingly, the the order is passed in both the applications as under:
If the defendant starts using the modified version of the trade mark as found in the additional typed set of papers, which has been filed on 20.4.2010 in this Court, then it will not amount to infringement of the copy right of the plaintiff or passing off the goods of the plaintiff and the defendant shall not use the original unmodified version of its trade mark.
With the above observation, both these applications are disposed of.
Msk 20.04.2010 Index:Yes Internet:Yes Note to Office: Issue order today(23.04.2010) G.RAJASURIA,J. OA.Nos.126 and 127 of 2010 in C.S.No.114 of 2010 20.4.2010