Sanjay Kishan Kaul, J.
1. The plaintiff is an existing Public Limited Company within the meaning of Companies Act, 1956 and has instituted the present suit for permanent injunction restraining infringement of trademark, passing off, delivery up and rendition of accounts etc. against the sole defendant.
2. The plaintiff claims to be a reputed and established company inter alia engaged in the manufacture of pressure cookers and parts thereof under the trademark HAWKINS for the last 30 years. The name of the plaintiff company was changed from M/s Pressure Cookers and Appliances Limited to the present name of M/s Hawkins Cookers Limited in the year 1986. The plaintiff is the registered proprietor of the trademark HAWKINS from 06.05.1957 in Class 21 under the Trade and Merchandise Marks Act, 1958 in respect of pressure cookers and parts thereof. The trademark registration No. 179714 is for HAWKINS UNIVERSAL but the mark registered is HAWKINS and the word UNIVERSAL is subject to disclaimer. The registrations are stated to be valid and subsisting. The plaintiff claims that the trademark HAWKINS forms a predominant feature of the corporate name and trading style of the plaintiff and the plaintiff is also referred in the abbreviated form of ‘Hawkins’.
3. The trademark HAWKINS is inter alia used for parts of the pressure cookers known as gaskets. The gaskets of the pressure cookers are sold as independent items and are purchased as such by the housewives and servants whenever the old pieces are worn out or need replacement. The gaskets are one of the most crucial and intergral part of a pressure cooker which prevents the steam from leaking out of the cooker. It is the steam pressure inside the cooker which cooks the food quickly. Thus, gaskets of poor quality or defective gaskets can lead to bursting of cooker and consequential burn injuries. It is in view thereof that the plaintiff has a quality control department to ensure that its pressure cookers and various parts thereof are of the required quality and standard. The plaintiff claims that since these gaskets are sold all over the country including rural as well as urban areas, the uneducated intending purchasers of below average intelligence, being illiterate and having imperfect recollection, identify such gaskets by their features and get-up of their packing as well as the trademark HAWKINS. It is in order to promote the pressure cookers and parts thereof manufactured by the plaintiff that the plaintiff has spent a sum of Rs. 111 crore between October, 1986 and March, 2005 towards advertisements and promotions.
4. The plaintiff in January, 2000 came to know that the defendant was using the trademark HAWKINS/Hawkins in respect of parts of pressure cooker and thus served a Cease and Desist Notice on the defendant vide its letter dated 03.01.2000. The claim of the plaintiff was disputed by the defendant on the ground that the gaskets were being sold under their own trademark and the use of the word ‘Hawkins’ by the defendant on their products/gaskets was to inform the purchasers that the gaskets being manufactured by the defendant were suitable for Hawkins pressure cookers. The plaintiff claims that they did not see the product subsequently in the market till October, 2004 when the plaintiff again noticed the defendant’s gaskets being sold in the market and thus again a Cease and Desist Notice dated 08.11.2004 was issued, which was disputed by the defendant vide its letter dated 17.11.2004
5. The principal defense of the defendant is that they have adopted the trademark MAYUR and only state on their product/gasket that the same is suitable was Hawkins Pressure Cookers. Thus there is no chance of deception or infringement of the trademark of the plaintiff since the trademark of the defendant MAYUR has been used prominently on the packing of their product/gasket.
6. On the other hand, the case of the plaintiff is that the unauthorized use of the trademark Hawkins by the defendant on the packaging of their product/gasket is likely to cause confusion or deception about a nexus, trade connection or association between the goods and business of the defendant with that of the plaintiff. This is more so since the purchasers of the plaintiff’s products are not so wary customers. The plaintiff claims that the use of the trademark ‘Hawkins’ by the defendant is detrimental to the plaintiff’s reputation since the plaintiff has no control or supervision over the quality of spare parts manufactured by the defendant. The use of the trademark ‘Hawkins’ by the defendant is alleged to be motivated only with the intent of the defendant to trade upon the goodwill and reputation enjoyed by the trademark HAWKINS of the plaintiff in the market and amongst the customers. The trademark HAWKINS of the plaintiff is also used in the price list of the defendant as MAYUR-HAWKINS. It is in view thereof that the present suit has been filed by the plaintiff.
7. The suit is resisted by the defendant. The defendant claims that the plaintiff wants to monopolize the sale of gaskets which are used in pressure cookers in the market. The defendant manufactures gaskets which can be used for different types of pressure cookers including the pressure cookers manufactured by the plaintiff. The defendant claims that it is a common knowledge that there is always a second line of manufacturers of spare parts, accessories and replacement items of machines, articles of everyday use, domestic appliances and even for automobiles for every description, which is known as ancillary industry. It is the well known custom of usage of the trade of the second line manufacturers to specifically indicate the compatibility of the various accessories, appliances and spares to the main item for which they supply the ancillary product. This is stated to be essential information to the customers so that they can select articles of a particular specification for the main items used by them. The defendant thus states that the use of a trademark of one person as a referral cannot be termed as infringement of trademark and such user is not prohibited by any law much less by the Trade and Merchandise Act, 1958 or the Trade Marks Act, 1999 (‘the said Act’ for short). The object is only to inform the public that MAYUR gaskets can be used for HAWKINS pressure cookers and it is only this much information which is set out on the packaging of the defendant. The defendant claims to be manufacturing MAYUR gaskets continuously and openly from the year 1994 onwards. The defendant claims to have adopted the trademark MAYUR and device of PEACOCK from 1994. The trademark of the defendant is stated to have been registered with the Registrar of Trademarks. It is thus claimed that the defendant’s trademark as also the device of peacock have acquired good reputation in the market and the sales of the defendant’s product/gasket is only in Tamil Nadu. The defendant has also raised a plea of acquiescence on account of the fact that after giving the initial Cease and Desist Notice as far back as January, 2000, the plaintiff kept silent for a period of four years thereafter. Even on merits, it is stated that there can be no question of passing off the goods by the defendant as the gaskets manufactured by the defendant come in different colours with a different packaging as compared to the gaskets supplied by the plaintiff which come in black colour.
8. The defendant naturally claims that the product manufactured by it is of high value and there is no question of the product of the defendant being inferior to that of the plaintiff.
9. The gasket is used in the pressure cooker more as a sealing mechanism to prevent leakage of steam, which seals the upper and lower portion of the cooker but it does not lock the metal portion of the cooker. Thus there is no question of the role of any defective gasket in bursting of a pressure cooker. The defendant claims that it commenced business from 1991 and the quality standards of the gaskets manufactured by the defendant are approved by the Bureau of Indian Standards. However, the trademark MAYUR and the device of PEACOCK were adopted in the year 1994.
10. On the pleadings of the parties, the following issues were framed:
i) Whether this Court has no territorial jurisdiction to try and adjudicate the present suit? OPD
ii) Whether the defendant is using ‘Hawkins’ as a trademark? OPP
iii) If issue No. 2 is answered in favor of the plaintiff : Whether the defendant is infringing the trademark ‘Hawkins’ of the plaintiff? OPP
iv) If issue No. 2 is answered in favor of the plaintiff : Whether the defendant is passing of its goods as that of the plaintiff? OPP
v) Whether the plaintiff is entitled to damages/rendition of accounts? If so, the extent and period thereof? OPP
11. The parties subsequently agreed on 21.05.2007 that really there was no cross examination required and that the parties would file their affidavits of examination in chief. The parties have thereafter led their evidence.
12. The plaintiff has examined Sh. K.Sundararaghavan as PW1 being the Executive Director (Finance and Administration) of the plaintiff-company, who has proved the Power of Attorney executed in his favor as ExPW1/1. A certified copy of the Certificate of Incorporation pursuant to the change of name of the plaintiff has been proved as ExPW1/2. Certified copies of certificate of registration have been proved as ExPW1/3 and ExPW1/4. The booklet containing the information about the names and addresses of all the authorized dealers and service centres of the plaintiff has been proved as ExPW1/6. The notice dated 03.01.2000 has been proved as Ex P-1 and the reply of the defendant dated 10.01.2000 has been proved as ExP-2. The exchange of correspondence between the parties in November, 2004 has been proved as ExP-3 and ExP-4. The other communications have also been proved, but it is not necessary to go into details in that behalf. The packaging of the defendant has been proved as ExP-10. The witness has affirmed to what is stated in the plaint.
13. PW1 has also gone on to state that there are two types of pressure cookers with following particulars:
(1) Pressure Cookers with outside fitting lid; and
(2) Pressure Cookers with inside fitting lid.
14. The pressure cookers being manufactured by the plaintiff are stated to fall in the second category. The dimensions of all the pressure cookers with inside fitting lid and the size of the corresponding gasket are stated to be generally identical to the various pressure cookers of the same variety and thus the gaskets of all inside fitting lid pressure cookers are generally interchangeable. It is in view thereof that the plaintiff claims that the defendant cannot use the trademark HAWKINS or the endorsement i.e. the gasket manufactured by the defendant is suitable for Hawkins pressure cookers.
15. In order to prove that the product of the defendant was inferior, a report dated 18.01.2007 has been proved as ExPW1/10 given by Indian Rubber Manufacturers Research Association affiliated to Ministry of Commerce and Industry, Government of India for the purpose of evaluation of quality of the gaskets on various parameters prescribed for the gaskets. The report shows that the defendant’s gasket failed the test in vital parameters of i)Tensile Strength, ii) Change in hardness and iii) Compression.
16. Mr. Hansraj Karsan Satra has appeared as PW2 who runs a shop by the name of Mahavir at Naupada, Thane (W) since the year 1979 and claims to be selling HAWKINS pressure cookers and parts thereof. The witness has also stated that there are two kinds of pressure cookers as mentioned aforesaid and that the dimensions of all the lids which are inward opening are the same. Thus the gaskets for inward opening lid of various brands of pressure cookers can be interchangeably used. The importance of gasket in the performance of the pressure cookers has been emphasized by this witness and various gaskets being sold in the market under different trade names have been annexed to the affidavit.
17. The defendant has led evidence of Mr. V.K.Radhakrishnan, partner of the defendant-firm. This witness has proved the Certificate of Registration of the trademark MAYUR and the device of PEACOCK as ExDW1/1. The Certificate of Bureau of Indian Standards to the defendant-firm has been proved as ExDW1/2 and the Registration Certificate dated 07.05.2004 issued to the defendant-firm by the Director General of Quality Assurance, Ministry of defense has been proved as ExDW1/3 to show the distinction between the packaging of the plaintiff’s product and the defendant’s product. The witness stated that the indication as to the compatibility of the various accessories, appliances and spares to the main item for which they supply the ancillary product is essential to the customers so that they can select articles of a particular specification for the main items used by them.
18. Learned Counsel for the parties were heard at length and the findings on the issues are as under:
Whether this Court has no territorial jurisdiction to try and adjudicate the present suit? OPD
19. Learned Counsel for the plaintiff drew the attention of this Court to para 32 of the plaint whereby jurisdiction is claimed of this Court under Section 134 of the said Act since the plaintiff carries on business at Delhi. It is further claimed that the goods of the defendant are being sold and are being offered for sale at Delhi. Section 134 of the said Act reads as under:
134. Suit for infringement, etc., to be instituted before district Court.-
(1) No suit –
(a) for the infringement of a registered trade mark, or
(b) relating to any right in a registered trade mark, or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff’s trade mark, whether registered or unregistered. Shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
(2) For the purpose of Clauses (a) and (b) of Sub-section (1), a “District Court having jurisdiction’` shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or where there are more than one such person any of them, actually and voluntarily resides or carries on business or personally works for gain.
Explanation.- For the purpose of Sub-section (2), “person’` includes the registered proprietor and the registered user.
20. The aforesaid provision is a digression from the general norm as contained in the Code of Civil Procedure, 1908 (‘the said Code’ for short) inasmuch as it gives the jurisdiction to a Court where the plaintiff resides or carries on business or works for gain.
21. It is the case of the plaintiff that it is carrying on business at Delhi. Learned Counsel for the plaintiff has drawn the attention of this Court in Intas Pharmaceuticals Limited v. Allergan Inc.; 2006 (32) PTC 272. A reference has also been made to two other judgments of the learned single Judge of this Court. In Pfizer Products Inc. v. Rajesh Chopra and Ors. the learned single Judge of this Court has rejected the argument of the defendant since the defendant had not sold any goods in Delhi, no cause of action arose in Delhi. In LG Corporation and Anr. v. Intermarket Electroplasters (P) Ltd. and Anr. 2006 (32) PTC 429, it was held that the fact of sale of infringing goods in Delhi has the nexus and relevance with the lis that is involved in the case.
22. On the other hand, the plea of learned Counsel for the defendant is that the Cease and Desist notices were sent from Bombay and thus this Court would have no territorial jurisdiction to try and determine the present suit.
23. In my considered view such a plea on the part of the defendant cannot be accepted for the reason that it is the case of the plaintiff that it is carrying on business at Delhi and the same is confirmed in the affidavits of evidence to which there is really no denial on the part of the defendant. I am of the view that this Court would have the territorial jurisdiction to try and determine the present suit.
24. The issue is answered accordingly.
Issue No. 2
Whether the defendant is using ‘Hawkins’ as a trademark? OPP
25. The crucial issue which arises for consideration in the present case is the aforesaid issue which hinges on the aspect as to whether the defendant is at all using the trademark HAWKINS of the plaintiff.
26. In order to appreciate the said plea, it would be necessary to re-produce some of the provisions of the said Act.
2. Definitions and interpretation.-(1) In this Act , unless the context otherwise requires, –
(m) “mark’` includes a device, brand, heading, lable, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.
(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 choose 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 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 to 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.
29. Infringement of registered trade marks.-
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-
(a) its identify with the registered trade mark and the similarly of the goods or services covered by such registered trade mark or,
(b) its similarly to the registered trade mark and the identity or similarly of the goods or services covered by such registered trade mark, or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under Clause (c) of Sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.
27. The plea of the learned Counsel for the plaintiff is that in terms of Section 29(2) of the said Act, a registered trademark is infringed if during the course of trade, the mark has been used (even if it is not a trademark) because of its identity with the registered trademark resulting in possibility of confusion on the part of the public or having an association with the trademark. Thus it was pleaded that once there is an infringement which falls within the meaning of Section 29(2)(c) of the said Act, the presumption under Section 29(3) of the said Act would come into play that it is likely to cause confusion on the part of the public.
28. Learned Counsel for the plaintiff also drew the attention of this Court to the provisions of Section 9(1)(b) of the said Act which reads as under:
9. Absolute grounds for refusal of registration.-
(1) The trade marks –
(b) Which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production f the goods or rendering of the service or other characteristics of the goods or service.
shall not be registered:
Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.
29. Learned Counsel for the plaintiff emphasized that the plaintiff did not dispute that the defendant can use the trade name to indicate that the spare part is fit for use in a particular machinery but for the same it should be accompanied with a disclaimer that the spare part is not manufactured by the original manufacturer. The object should be to ensure that the public knows whether the product purchased emanates from the plaintiff or somewhere else. This plea is based on the limits of effect of the registration of trademark as contained in Section 30(2)(d) of the said Act which is follows:
30. Limits of effect of registered trade mark.-
(2) A registered trade mark is not infringed where-
(d) the use of a trade mark by a person in relation to goods adapted to form part of, or to be accessory to, other goods or services in relation to which the trade mark has been used without infringement of the right given by registration under this Act or might for the time being be so used, if the goods or services are so adapted, and neither the purpose nor the effect of the use of the trade mark is to indicate, otherwise than in accordance with the fact, a connection in the course of trade between any person and the goods or services, as the case may be.
30. Learned Counsel for the plaintiff thus contended that the defendant’s gasket may mention that it can be used for different brands of pressure cookers and specify the number of such brands including ‘Hawkins’ but the defendant cannot single out ‘Hawkins’ because that would amount to trying to take advantage of the reputation of the plaintiff’s trademark.
31. The second limb of the argument of learned Counsel for the plaintiff is based on the reading of the provisions of Section 30(2)(d) of the said Act which provides for protection for the defendant : i) if the use of the trademark is reasonably necessary; and ii) neither the purpose nor the effect of the use of the trade mark is to indicate a connection. Thus it should be an honest practice which is necessary to describe the use.
32. The plaintiff pleaded that it has come in the testimony of PW2 that the dimensions of all pressure cookers are same and the annexures filed with the testimony of PW2 would also show that the trade practice is not to use the brand but to go by the nature of pressure cookers and thus it was not necessary to state that the gasket was meant for Hawkins pressure cooker. There was neither any necessity for the same nor it was an honest practice which was a pre-requisite under Section 30(2)(d) of the said Act. The reputation of a pressure cooker manufacturer could also be affected in case of lack of proper quality of gasket as stated in the affidavit of PW1. The plaintiff also drew strength from the manner of published price list. Learned Counsel for the plaintiff fairly conceded that there was apparently no judgment of any Indian Court on this aspect and sought to rely upon the case of Gillette Co. v. LA- Laboratories Ltd. 2005 FSR (Vol.37) 808 which is a judgment rendered by Court of Justice of the European Communities (Third Chamber). In order to appreciate the aforesaid judgment which has formed the basis of submission of both the learned Counsel for the parties, it would be necessary to examine the factual matrix in which the said judgment was delivered.
33. The Gillette Group of Companies being registered proprietor of GILLETTE and SENSOR were arrayed as the plaintiff No. 1 while the second plaintiff was their exclusive licensee. The defendant was selling similar razors and blades as being manufactured by the plaintiff under the mark PARASON FLEXOR in packaging which had affixed to it a sticker bearing the words: ‘All Parason Flexor and Gillette Sensor handles are compatible with this blade’. The proceedings were brought for infringement of trademark on the ground that the defendant’s packaging was such as to create a link in the mind of the consumers between the defendant’s product and those of the plaintiffs or at least to give an impression that the defendant was authorised by virtue of a license or for some other reason to use the GILLETTE and SENSOR marks. It was held that using the plaintiff’s marks in an eye-catching manner on its packaging by the defendant amounted to an infringement of trade mark of the plaintiff by the defendant. It was further held that both the blade and the handle were essential parts of the razor and not spare parts or accessories and thus the ‘spare part’ exception to infringement provided by Article 4 (2) of the Finnish Law on Trade Marks would not apply.
34. On an appeal, the Court of Appeal held that where a razor comprised a handle and a blade and the consumer could replace the blade by a new one sold separately, the blade could be regarded as a spare part. The information given about the compatibility of the blades with both the defendant’s and the claimants handles was held to be useful to the consumers and thus the defendant was held entitled to be able to demonstrate the need to mention the GILLETTE and SENSOR marks in small standard lettering on the stickers of a relatively modest size and it was held that it could not in any way give the impression that there was a commercial connection between the claimants and the defendant. It is against the said judgment that a further appeal was preferred and various questions were referred to the European Court. In substance, the questions referred to were:
(1) What are the criteria for deciding whether a product is a spare part or accessory;
(2) The permissibility of the use of a third party’s trade mark to be assessed differently, depending on whether the product is like a spare part or accessory;
(3) The parameters to determine the requirement that the use must be ‘necessary’ to indicate the intended purpose of a product and the difficulty for a consumer to understand if there is no express reference to the third party’s trade mark.
(4) The factors to be taken into account while determining an honest commercial practice and whether the mention of a third party’s trademark in connection with marketing of one’s own product would constitute a reference to the fact that the own product corresponds in quality and technicality or as regards its other properties to the product designed by the third party’s trade mark.
(5) Whether the permissibility of user of a third party’s trademark would be affected on the ground that the economic operator who refers to the third party’s trademark also markets in addition to a spare part or accessory a product of his own with which the spare part or accessory is intended to be used with.
35. The European Court gave its findings and some of the findings are material for the present case which are as under:
(1) Use of the trademark by a third party who was not its owner was necessary in order to indicate the intended purpose of a product marketed by that third party where such use in practice constituted the only means of providing the public with comprehensible and complete information on that intended purpose in order to preserve the undistorted system of competition in the market for that product. Thus the lawfulness or otherwise of the use of the trademark depended on the necessity of the use to indicate the intended purpose of a product.
(2) The condition of ‘honest use’ constituted in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner. The use of the trademark would not be in accordance with honest practices in industrial and commercial matters if for example it was done in such a manner as to give the impression that there was a commercial connection between the third party and the trademark owner or it affected the value of the trade mark by taking unfair advantage of its distinctive character or repute.
(3) The mere fact that third party used a trade mark of which it was not the owner in order to indicate the intended purpose of the product which it marketed did not necessarily mean that it was presenting it as being of the same quality as or having equivalent properties to those of the product bearing the trade mark. The relevant Article 6 is as under:
Limitation of the effects of a trade mark:
1. The trademark shall not entitle the proprietor to prohibit a third party from using, in the course of trade,….
c) the trade mark where it is necessary to indicate the intended purpose of a product or service in particular as accessories or spare parts:
provided he uses them in accordance with honest practices in industrial or commercial matters….
36. The condition of honest use within the meaning of the aforesaid Article 6 (1) (c) of the Directive 89/104 was held to be in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner. The use of the trademark was held not to be in accordance with honest practices in industrial and commercial matters inter alia the following situations:
i) It is done in such a manner as to give the impression that there is a commercial connection between the third party and the trade mark owner;
ii) It affects the value of the trade mark by taking unfair advantage of its distinctive character or repute;
iii) It entails the discrediting or denigration of that mark.
37. Learned Counsel for the parties have also referred to another judgment of the Chancery Division in Aktiebolaget Volvo and Anr. v. Heritage (Leicester)Limited; Fleet Street Reports (2000). In the said case, the plaintiff owned various registered trademarks including the word VOLVO. The defendant-company had been an authorized Volvo dealer and thus licensed to use the Volvo mark. The authorised dealership was revoked, but the defendant continued to use the word Volvo in a similar (but not identical) style to the registered mark, accompanied by the words ‘independent’ and ‘specialist’ appearing in much smaller lettering so that the signs read ‘Independent Volvo Specialist’. The defendant used this wording on signs outside its garage, on an entrance sign, and on its letterhead. The defendant was also alleged to have used the word Volvo on a loyalty card and in the text of various letters sent by the defendant to its customers. The defense was that by virtue of its use of the words ‘independent’ and ‘specialist’ in its mark, the trademark was not identical. Alternatively, the plea advanced by the defendant was that it was the using the plaintiff’s mark to indicate the kind of vehicle dealt with or the intended purpose of its services and thus ought to be exempted.
38. The para materia provisions under which such protection was sought under the Indian Act would be Sections 30(1)(b) and 30(2)(d) of the said Act. It was held that association of the words ‘independent’ and ‘specialist’ with the word Volvo did not render the defendant’s mark non identical to the registered mark.
39. The aforesaid judgment was relied by the learned Counsel for the plaintiff to advance the plea that the same principle would apply to indication given by the defendant on its product ‘Suitable for: Hawkins pressure cookers’ as in the present case while learned Counsel for the defendant emphasized the factual matrix of that case whereby the defendant had past association with the plaintiff being the authorized dealer and was using the two words in very small alphabets with the emphasis being on the trademark VOLVO. In the present case, it was emphasized that the trademark of the defendant was being used prominently and the indication given was for the benefit of the customer.
40. Learned Counsel for the defendant thus drew the attention of this Court including the use of the stationery in the business of the defendant in Aktiebolaget Volvo and Anr. v. Heritage (Leicester)Limited’s case (supra). The new letterhead mentioned other brands of the car. The lettering was in such a manner that above the word ‘Volvo’ in very small capital letters, the word ‘Independent’ was used and below the word ‘Volvo’ in slightly larger capital letters, but still much smaller than the letters used for the word Volvo, the word ‘specialist’ was used.
41. It has been held that the well settled principle is that the test of honesty for the purposes of proviso is the one that has to be judged by an objective standard and the appropriate question to be asked in relation to that test in the present case is whether a reasonable motor service provider would think the use complained of in the present case to be honest, or, rather in accordance with honest practices in that business.
42. Learned Counsel for the plaintiff sought to derive strength from these observations to contend that the defendant had to establish that the use of the word ‘Hawkins’ in such a manner was part of the trade practice which the defendant had failed to so establish.
43. In the facts of the case Rattee, J found that in order to constitute infringement what is necessary is the use of identical word in the course of trade as a distinctive word, whether with or without other words or material added to it. The test is of honest use in the commercial activity in which such trader is involved and thus all circumstances surrounding the use complained of and the context in which the use was made would be material.
44. The important facts taken note of by the learned Judge are as under:
In my judgment the relevant context in the present case includes the following. The defendant had been an authorized Volvo dealer for a long time. Customers knew it as such and dealt with it as such. On the signs and the letter head complained of by the claimants the word Volvo appears in a colour very similar to that used by Volvo for its own logo. The word appears in letters using a very similar font, though without the serifs, as I have mentioned. The word appears on the signs and the letter head complained of immediately alongside or underneath the names of other makes of cars for which the defendant is and holds itself out as, an authorized dealer. The word Volvo appears in lettering of similar size to that used in the name of both other makes of car concerned. The word ‘independent’ and ‘specialist’ are printed in much smaller and less obvious form than the word Volvo so that on looking at the sign or the letter head the immediate impression is of the word Volvo although if one looks more closely certainly one can see the words ‘Independent’ and ‘Specialist’ above and below it.
Certain letters have been written in the past to customers of the defendant by the defendant to which I should refer as forming part of the relevant context in which I have to consider the honesty of the use complained of. The first of those letters was written before the defendant ceased to be an authorized Volvo dealer. It was dated November 27, 1996 and apparently is a circular letter sent out widely by the defendant to its customers. It includes the following. It is headed ‘Exciting News’ and then says:
As a valued customer I am writing to inform you of two exciting developments at Heritage Leicester (that is the name of the defendant).
First I am proud to announce that the Heritage Leicester team has recently achieved accreditation for ISO9002 (BS5750). This reflects our commitment always to offer you a level of service second to none by continually improving the standards by which we operate our business on a day to day basis.
Secondly, at the end of this year we will become an Independent Volvo Specialist, a member of the new ‘Association of Independent Volvo Specialists’, a national organization of more than 30 members all of whom have spent many years within the Volvo franchise.
As an Independent Volvo Specialist we will be able to provide you with an unrivalled service by offering you the full range of Volvo services from our fully trained Volvo staff utilizing our Volvo specialist equipment.
Furthermore we will be free to purchase on more competitive terms a wider range of Volvo cars and original equipment parts therefore providing you with greater choice and more competitive prices, making Volvo motoring more affordable.
We will continue to offer for sale a wide range of new and used vehicles; all our used vehicles will continue to have comprehensive Mechanical Breakdown Insurance. Our After Sales Department will continue to sell genuine Volvo parts and accessories and to service, repair and MOT your car to main dealer standards. Our comprehensively equipped Body and Paint Centre will also remain available enabling us to meet all of your Volvo motoring needs.
Within the next few weeks you will be receiving your personal Heritage Leicester Loyalty Card which will entitle you to discounts on our full range of Volvo services. In addition we will be offering monthly ‘Special Offers’ to all Loyalty Card Holders.
I would like to take this opportunity to thank you for your past custom and look forward to your continued support in the future.
Be assured that our commitment to you, our valued Volvo customer, will be even stronger than ever.
45. The learned Judge recorded his conclusion as under:
In my judgment the defendant’s use of the word Volvo, comprising the registered trade mark of the claimants, in the context of its having previously for so long been an authorized dealer of Volvos, was calculated to cause at least confusion in the minds of customers, and probably, indeed, also the belief that there was still, to put it at its lowest, some trading connection between the defendant and Volvo. As I have said, I entirely reject the submission that the letter which I have read, which was written to customers in November 1996 could properly be said to have been calculated to convey the impending change of status to the recipient. Using the word Volvo in the manner and in the context which I have described in my judgment was so obviously likely to cause at least confusion in the minds of the customers of the defendant that no reasonable motor trader would say that such use constituted honest use in the course of the motor trading and servicing business. I do not overlook the fact that there is evidence that Volvo itself took steps in December 1996 to notify such Volvo owning customers of the defendant as the plaintiffs had records of the change of the defendant’s status, but, in my judgment, that is quite immaterial in considering the honesty from the objective point of view of the defendant’s conduct, not least when the letter which I have described, which was written in November 1996, was written before the defendant had any reason to believe that its customers would be more frankly and clearly notified of the impending change of status of Volvo itself.
The conclusion which I have just expressed in my judgment is in no way inconsistent with the judgment of the European Court on which the defendant placed reliance, that is to say the judgment of the case of BMW v. Deenik Case C-63/97 in which the judgment of the European Court of Justice was given on February 23 of this year. The reference which I have to it is as having been reported in (1999) All E.R. (D.) 183. The situation before the Court in that case was in some ways not dissimilar from that in the present case, although in other ways very dissimilar, but it also concerned the question of whether a trader, not being an authorized dealer, in that case, in BMW motor cars was entitled to use the name BMW being a registered trade mark of the BMW manufacturing company in the context of holding itself out as having specialist expertise in servicing BMW cars. In its conclusion, paragraph 3, the Court said this: ‘Articles 5 to 7 of First Directive 89/104…, and those, as I understand it, are Articles which were incorporated into the English 1994 Act in Sections 6, 10 and 11,
… do not entitle the proprietor of a trade mark to prohibit a third party from using the mark for the purpose of informing the public that he carries out the repair and maintenance of goods covered by that trade mark and put on the market under that mark by the proprietor or with his consent, or that he has specialized or is a specialist in the sale or the repair and maintenance of such goods….
and then come the important words for present purposes:
…unless the mark is used in a way that may create the impression that there is a commercial connection between the other undertaking and the trade mark proprietor, and in particular that the reseller’s business is affiliated to the trade mark proprietor’s distribution network or that there is a special relationship between the two undertakings.
In my judgment the proviso expressed in that paragraph of the European Court of Justice’s judgment in the BMW case reflects the honest proviso as I may call it, to Section 11(2) of the Trade Marks Act, 1994, in the context of a case such as that which was before the European Court and that which is before me.
46. The learned Judge thus found that the use was not in accordance with the honest practices in industrial or commercial matters.
47. Learned Counsel for the plaintiff also referred to the judgment of the Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories 1965 SCR 737 where in para 28 it was observed 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, 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. Expressed in another way, if the essential features of the trademark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods form those of the plaintiff.
When once the use by the defendant of the mark which is claimed to infringe the plaintiff’s mark is shown to be ‘in the course of trade’, the question whether there has been an infringement is to be decided by the comparison of the two mark.
48. A careful consideration of the aforesaid judgments and the pleas advanced by learned Counsel for the parties shows that the complete emphasis of the plaintiff is on the fact that it owns the registered trademark HAWKINS and thus has a statutory right to exclusive use in relation to its pressure cookers and spare parts including gaskets. Thus the use of any identical or deceptively similar trademark by any unauthorized person in relation to goods including gaskets amounts to an infringement under Section 29 of the said Act irrespective of any addition either preceding or succeeding it. Thus the added matter to the trademark by the defendant is pleaded to be irrelevant for the purposes of infringement. It is, however, not disputed that there is an exception to the same as envisaged under Section 30 of the said Act but the onus is on the defendant to prove that it falls within the exception so envisaged.
49. It is thus the plea of the plaintiff that in order for the defendant to seek protection under Section 30 of the said Act, it must be proved that a)Use of the trademark Hawkins by the defendant is reasonably necessary to indicate that the gaskets are so adapted; b) Neither the purpose nor the effect of such indication is to show a connection in the course of trade between the goods of the defendant and those of the plaintiff, c) Use of the trademark by the defendant is in accordance with an honest practice in industrial or commercial matters and d) it is not an endeavor on the part of the defendant to take unfair advantage of the mark of the plaintiff or is detrimental to the repute of the mark of the plaintiff.
50. Learned Counsel for the plaintiff thus contended that the only honest use of the trademark is in respect of distinction between pressure cookers with outside fitting lid and pressure cookers with inside fitting lid and a number of pressure cookers under different trademarks are sold which are all similar to the lid of Hawkins pressure cookers. Thus the user of only name of ‘Hawkins’ to show suitability of the product is stated to be not an honest business practice but an endeavor to encash on the goodwill and reputation of the brand of HAWKINS.
51. Learned Counsel for the defendant has, however, pleaded that the defendant is manufacturing the gasket under the registered trademark MAYUR with the device of PEACOCK and has large and extensive sale because of its product’s good quality, good market and sales promotion. Thus there was no occasion for the defendant to infringe the trademark of the plaintiff. The defendant’s line of business is one of ancillary nature and the indication given on the packaging is an essential information to the customers so that they can select an accessory of a particular specification which is suitable for the main article. The expression ‘ suitable for HAWKINS pressure cookers’ is thus said to fall within the exception of Section 30(2)(d) of the said Act. The indication is stated to be only to show compatibility of the product of the defendant with that of the plaintiff. The filing of the suit is alleged to be motivated by the oblique object of the plaintiff to have monopoly in the market of spare parts/accessories for its pressure cookers including gaskets and the garb of infringement of its trademark is being used for the said purpose.
52. In order to further substantiate its plea, learned Counsel for the defendant has referred to the judgment of the Circuit Court of Appeals, Second Circuit in the matter of The Electric Auto-Lite Company v. P and D Manufacturing Co. Inc. reported as (44 USPQ 377 (2nd Circuit 1940). The case related to alleged infringement of patent and it was held that replacement of new for worn out parts in devices sold by the plaintiff would not amount to infringement of the patent of the plaintiff although part replaced includes portion not worn out where it would cost more to replace the worn out part alone. The plaintiff with a third party and other manufacturers published a joint catalogue in which appeared side by side the service parts of both the companies. The sale of the parts by such third party jointly advertised in this way was held not to be infringement of the plaintiff’s patent of machine and that the defendant could not be contributory infringer by sale of parts by such third parties to the users.
53. Further in Taylor Instrument Companies v. Fawley-Brost Company 59 USPQ 384 (7th Circuit 1943) it was held that having the right to make and sell chart designed to fit plaintiff’s (Taylor)machine and the advertisement thereof does not support the conclusion of infringement of the trademark and the machine of the plaintiff. It was held that the defendant can advise public on price card ( carrying prominently defendant’s name) bearing ‘TAY’, that it has for sale ‘Chart to fit’ such machine sold under the trademark ‘Taylor’.
54. I have given deep thoughts to the submissions of learned Counsel for the parties conscious of the fact that insofar as the Indian Courts are concerned, it is an unchartered area. However, the observations and views expressed in Aktiebolaget Volvo and Anr. v. Heritage (Leicester)Limited’s Case (supra) and Gillette Co. v. LA-Laboratories Ltd’s Case (supra) have material bearing in view of the provisions of the said Act which are similar in nature and intent. (55)A reading of Section 29 of the said Act shows that the use of a registered trade mark by a third party in the course of trade or user of a deceptively or identical trademark is not permissible when it renders the use of the mark likely to be taken as being used as a trademark. The provision of the said Act would work in the following manner:
(1) The first party has to be owner of the registered trademark;
(2) The second party uses the mark in the course of trade which is identical with or deceptively similar to trademark in relation to goods and services in respect of which the trademark is registered;
(3) The use is in such a manner as to render the use of the trademark by the second party likely to be taken as being used as a trademark.
56. If the provision is read in the aforesaid manner, the interpretation put forth by the learned Counsel for the defendant has to be accepted that though the expression used is a mark insofar as the second party is concerned, in order to constitute an infringement the use of the said mark should be such as to lead to deception of it being taken to be used as a trademark.
57. The second aspect is the wording of Section 29 to the effect ‘use of the mark likely to be taken as being used as a trade mark’. Thus the deception should be such that the purchasing public would assume that the mark is indicative of the same being a trademark of the first party.
58. The exception to the aforesaid is provided in Section 30 of the said Act. Section 30(1) of the said Act stipulates that use of a registered trade mark is not prevented if the purpose is of identifying goods or services as that of the proprietor and such use should be: a) in accordance with honest practices in industrial or commercial matters and is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark. Section 30(2)(a) of the said Act provides an exception where the user is in relation to goods or services inter alia for its intended purpose. Another exception is Section 30(2)(d) of the said Act which permits the use of a trade mark where it is accessory to other goods or services to which the trademark has been used without infringement of the right given by registration if such use is reasonably necessary in order to indicate that the goods or services are so adapted and the purpose and the effect of the use should not be to indicate a connection in the course of trade between any person and the goods or services.
59. It is the aforesaid principles which have been kept in mind by the Chancery Division in Aktiebolaget Volvo and Anr. v. Heritage (Leicester) Limited’s case (supra) and the Court Justice of the European Communities (Third Chamber) in Gillette Co. v. LA-Laboratories Ltd’s case (supra).
60. It is trite to say that a judgment is as good as its facts. The facts of the Aktiebolaget Volvo and Anr. v. Heritage (Leicester)Limited’s case (supra) stare one in the face. There was a past association between the plaintiff and the defendant as the defendant was an authorized Volvo dealer. Such dealership was revoked. It is thereafter the defendant started to use the work VOLVO in a similar style to the registered trademark accompanied by the prefix ‘independent’ and the suffix ‘specialist’ but both in much smaller lettering. Not only that, past customers of Volvo were also said to be informed accordingly. The object and intent of the defendant was clear that it wanted to indicate a connection with VOLVO and such user could hardly be called as an honest practice in industrial and commercial use. It squarely fell within the parameters of the defendant trying to take unfair advantage of the distinctive character and repute of the trademark VOLVO. Thus the mere use of suffix or prefix would not make any difference. It is in view thereof that the learned Judge had observed that the test of honesty for the purposes of infringement has to be judged by an objective standard and in the given facts of the case, the test would be whether a reasonable motor service provider would think that the use complained of is honest or amounts to an honest practice.
61. If the aforesaid test is applied to the facts of the present case, it is found that the defendant has its own well established trademark MAYUR and the device of PEACOCK. The defendant has prominently displayed both the trademark and the device on the packaging. The trademark MAYUR has been put prominently in red on the green coloured packaging, both in the front and the back. At the back of the packaging of the defendant’s product, there is a sticker prominently displaying that the product is manufactured and marketed by Murugan Enterprises.
In the front of the packaging of the defendant’s product, in a small print, it is written ‘Suitable for: Hawkins Pressure Cookers’. The front and back of the packaging of the product of the defendant are being re-produced herein to fully appreciate the visual impact of the packaging.
62. The aforesaid in my considered view leaves no manner of doubt that no reasonable person or purchaser can ever assume a trade connection between MAYUR brand of gaskets and Hawkins. It is not a case where the defendant is seeking to take advantage of the trademark of the plaintiff or seeking to show any connection therewith. The approach which is apparent from the manner of use of this is only to show the suitability of the product as an ancillary one to be used in the Hawkins pressure cookers. Such a use thus would clearly fall within the exception carved out under Section 30 of the said Act. Further the evidence placed on record shows that the object of use of the trademark is reasonably necessary to indicate the fitness of gasket for the HAWKINS brand of pressure cookers.
63. The conclusion in Gillette Co. v. LA-Laboratories Ltd’s case (supra) is predicated on a packaging, which would create a link in the mind of the consumers between the defendant’s products and those of the plaintiff’s or at least to give an impression that the defendant was authorised by virtue of a license or for some other reason to use GILLETTE and SENSOR marks. As discussed above, this was not so in the present case. In fact, the trademark of the defendant is what is prominently displayed. The present case is, thus, one where the condition of ‘honest use’ is satisfied, since one cannot decipher a commercial connection between the plaintiff and the defendant by use of the word HAWKINS by the defendant. It is, thus, not a case where there is dilution of the value of the trademark of the plaintiff by unfair advantage being taken of its distinctive character or repute by the defendant. The use is more in the nature of the intending purpose of the product marketed by the defendant.
64. There is also force in the contention of the learned Counsel for the defendant that the concept of pressure cookers with inside fitting lid and pressure cookers with outside fitting lid and there being two kinds of gaskets was not even forming part of the pleadings and the case set up is thus clearly an afterthought when the affidavits of evidence were being filed. The affidavits of evidence in this behalf, in fact, for the first time, set out this plea of pressure cookers with an outside fitting lid and inside fitting lid seeking to categorize them as such. The plaintiff has no objection if the defendant indicates the fitness of the gasket for the complete line of pressure cookers with inside fitting lid categories like Hawkins but objects to the use of Hawkins alone. The defendant in the affidavit has emphasized that the gaskets manufactured by them are specifically made for them to be fitted in the Hawkins pressure cookers. The plaintiff also manufactures all kinds of ancillary products including gaskets. The object of filing of the suit thus appears to be to create a monopoly over such ancillary items so that no third party is able to sell the same in the market. This course of action is not permissible as it is really not in dispute that the defendant can carry out an ancillary industry of manufacturing such gaskets.
65. I am thus of the considered view that the issue has to be answered against the plaintiff as the defendant is not using the trademark Hawkins.
Issue No. 3:
If issue No. 2 is answered in favor of the plaintiff : Whether the defendant is infringing the trademark ‘Hawkins’ of the plaintiff? OPP (66)This issue is predicated on a finding to be arrived on the previous issue and only if the defendant is using the mark Hawkins as a trademark, the question would arise whether the defendant is infringing the trademark. Since the use of the defendant is only indicative of its purpose and is not being used as a trademark, there can be no question of the defendant infringing the trademark of the plaintiff. The issue is accordingly answered against the plaintiff.
Issue No. 4:
If issue No. 2 is answered in favor of the plaintiff : Whether the defendant is passing of its goods as that of the plaintiff? OPP
67. Once again the defendant passing off its goods as that of the plaintiff would not arise in the present case in view of the fact that the defendant is not using the trademark of the plaintiff nor is it infringing the trademark. The mode and manner of use shows only the purpose of user and there is no indication of any business connections between the two. The prominent display of the own trademark of the defendant along with prominent display of the address of its manufacturers as against the same is indication of the suitability of the gaskets for Hawkins pressure cookers and leaves no manner of doubt that the present case is not one of passing off by the defendant of its goods as that of the plaintiff.
68. The issue is answered against the plaintiff.
Issue No. 5:
Whether the plaintiff is entitled to damages/rendition of accounts? If so, the extent and period thereof? OPP
69. Learned Counsel for the plaintiff sought damages and in that behalf had referred to the judgments of this Court in Times Incorporated v. Lokesh Srivastava and Anr. 2005 (30) PTC 3 (Delhi) and Hero Honda Motors Ltd. v. Shree Assuramji Scooters 2006 (32) PTC 117 (Delhi). However, the question of damages would arise if there is any infringement by the defendant and thus it is not necessary to go into the aspect of quantification of damages since there is no infringement by the defendant. The evidence filed by the plaintiff also does not establish any case for any damages other than the plea of general damages which may be awarded in case of infringement of trademark of copyright.
70. Issue is answered against the plaintiff.
Issue No. 6:
71. In view of the findings arrived at, the suit of the plaintiff is without any merit and the same is dismissed with costs.
72. The decree sheet be drawn up accordingly.
73. Interim Orders stand vacated.