ORDER
J.D. Kapoor. J.
1. Plaintiff-Playboy Enterprises Inc. is a publisher of widely known magazine PLAYBOY which is pre-eminently sex oriented and male entertainment magazine though it is also interspersed with information on current affairs, issues of international interest, interviews of celebrities, articles on health, games & sports, comedy, cooking recipes etc. The popularity of the magazine is so wide spread that the plaintiff is known mainly through this magazine, though it has vast business empire which has diversified into manufacture, licensing, franchise and sale of a variety of products ranging from cosmetics, toilet preparations, watches, travel and office desk clocks, stationery goods and coordinated desk accessories, candy and confectioneries, costume jewellery, keyrings, coordinated bath robes and towels, decorative cushions, luggage, small leather goods, shoes, sunglasses and ophthalmic frames, pipes and cigarette lighters, sportswear, beach bags and towels, household linens, kitchen textiles, headwear and coverups, women’s underwear and sleepwear, automotive accessories, seat covers and cushions, air fresheners and aerosol sprays etc. It is the registered proprietor of the mark PLAYBOY in India with several other countries all over the world, namely, Algeria, Argentina, Australia, Austria, Bangladesh, Benelux, Bermuda, Bolivia, Botswana, Brazil, Brunei, Canada, Chile, Columbia, Costa Rica, Cyprus, Czechoslovakia, Denmark, Dominion Republic, Ecuador, Egypt, Eire (Ireland), El Salvador, England, Finland, France, Germany, Greece, Guatemala, Guyana, Holland, Hongkong, Hungary, Iceland, Indonesia, Iran, Italy, Jamaica, etc.
2. The registrations are more than seven years old and are, therefore,e conclusively valid under the provisions of Section 32 of the Trade & Merchandise Marks Act, 1958 (hereinafter referred to as ‘TMM Act’), which is as under :
“32. Registration to be conclusive as to validity after seven years. – Subject to the provisions of section 35 and section 46, in all legal proceedings relating to a trade mark registered in Part A of the register (including applications under section 56) the original registration of the trade mark shall, after the expiration of seven years from the date of such registration, be taken to be valid in all respects unless it is proved –
(a) that the original registration was obtained by fraud; or
(b) that the trade mark was registered in contravention of the provisions of section 11 or offends against the provisions of that section on the date of commencement of the proceedings; or
(c) that the trade mark was not, at the commencement of the proceedings, distinctive of the goods of the registered proprietor.”
3. It is averred that being one of the largest business houses of the world the mark PLAYBOY has become a household name in the relevant circles on account of extensive sales and advertisement in the international media as to its products though initially it was adopted for the entertainment magazines. The first issue of PLAYBOY was introduced in December 1953 in the USA and since then it has attained popularity by leaps and bounds. In other words we may say that it had played with the word ‘PLAY’ so much that one is bound to entertain confusion with the plaintiff’s product the moment any other person tries to play or exploit the word ‘PLAY’ for the title of the magazine or periodical.
4. One such effort was made by Chuckleberry Publishing Inc. which began publishing in Italy a magazine with sophisticated title ‘PLAYMEN’. Though the title was in English but it was written entirely in italian. Apprehending that distribution of the PLAYMEN magazine would infringe their popularity rights in the PLAYBOY market the plaintiff moved for injunction. The argument of the plaintiff that the title PLAYMEN was likely to cause confusion amongst the consumers – firstly because it was similar in form and content and secondly both the magazines aimed to attract the same market of consumers, to wit, heterosexual adult males and thirdly that PLAYMEN would result in an amorphous type of confusion and likeness to PLAYBOY and could be circulated successfully to distributors for a fraction of the advertising costs typically required to start a new magazine and lastly for the exploitative nature of purpose in using the word ‘PLAY’. Eventually the plaintiff succeeded in injuncting the Chuckleberry Publishing Inc. from publishing its magazine ‘PLAYMEN’.
5. Now it is the turn of Indian magazine named PLAYWAY published by the defendant. The plaintiff has through this suit sought permanent injunction against the defendant No.2, a publishing company of the magazine of which defendant No.1 is editor, owner, printer and publisher. It is averred that comparisons of both the magazines show that they are predominantly sex oriented and male entertainment magazines and the infringer magazine ‘Playway’ is also interspersed with information on current affairs, issues of national interests and interviews of celebrities, comedy and pictures of semi-nude models etc. The grievance of the plaintiff is that the adoption of the word ‘PLAY’ from the mark PLAYBOY is ill motivated, illegal and deceptively and even phonetically similar to the mark PLAYBOY and as such there is a clear infringement of the registered trade mark of the plaintiff with dubious intention to pass off.
6. Further that the adoption of the impugned mark is merely with a view to gain and exploit from the well known reputation of the plaintiff’s magazine in India and attracts the same market of consumers and at the same time dilutes the well established trade reputation and trade mark of the plaintiff which even otherwise enjoys high reputation and goodwill apart from confusion as to its source. The plaintiff has been so vigilant and conscious of its rights that it has taken action whenever any person uses its mark PLAYBOY or PLAYMATE and the RABBIT HEAD logo and one such suit was filed in 1988 in this Court and has always opposed registration of deceptively similar marks on various occasions. That the use of near identical trade mark PLAYWAY in relation to identical article, namely, magazine amounts to misrepresentation made by the defendants in the course of trade to customers that their magazine flows from the same source i.e. the plaintiff and such a misrepresentation is bound to cause confusion amongst public and lead to passing off the defendant’s magazine as that of the plaintiff’s and further the defendants are selling sub-standard magazine that would further cause an irreparable loss and injury to the reputation of the plaintiff and these acts of the defendant need to be curbed with order of injunction.
7. Though the defendant initially contested the claim of the plaintiff hotly by way of filing the detailed written statement but left in the midstream. In spite of defendant’s failure to pursue its claim to the title ‘PLAYWAY’ the plaintiff still continued pursuing the plaint with vigour. This projects sincere and bona fide efforts on the part of the plaintiff not to take the intrusion into its domain lightly. Still the defenses and pleas raised by the defendants need to be discussed and dealt with as the controversy has mixed question of facts and law.
8. The defendants have claimed their right to publish the magazine on the strength of the clearance of the name by the Registrar of Newspapers of India Under the Press & Registration of Books Act, 1867 (hereinafter referred as PRB Act) and by the Ministry of Information and Broadcasting vide letter dated 4th October, 1993 before whom three names were offered, namely, “Playway”, “Naughty boy” and “Play Man”.
9. According to the defendants they have spent huge money, labour and skill in publication of their magazine “PLAYWAY” and while popularizing the magazine in India, they have circulated as many as 3000 copies whereas the plaintiff’s magazine is neither registered under the PRB Act nor is even in circulation in the Indian market. Mere obtaining the trade mark right the plaintiff does not make it entitled to question the legitimately registered name under the PRB Act amounting to an infringement of trademark because the PRB Act being a special Act has precedence over the provisions of the TMM Act. The PRB Act is an Act for regulation of printing press and newspapers for preservation of copies of books and newspapers.
10. It is averred that the plaintiff has no right to publish the newspaper in India and their registered title under the trademark is nothing else than the title-block tactic, since the same cannot be approved and registered under the PRB Act. The PRB Act not only provides for printing and publishing of newspapers in India, but it also safeguards the title of a newspaper contained in the declaration, if such title is not used by any newspaper registered earlier. Thus without registration under the PRB Act there is no right vested in the plaintiff to publish a newspaper in India.
11. For instance the Financial Times Limited in London has got registered Financial Times under the TMM Act whereas the Times Publishing House Limited has been publishing the newspaper under the title Financial Times registered under the PRB Act. The Financial Times Limited initially obtained an ex parte stay against the Times Publishing House Limited from the City Civil Court, Bangalore but in appeal the High Court of Karnataka set aside the orders of the Civil City Court. The defendant has not only disputed the reputation of the PLAYBOY magazine but denied that the PLAYBOY magazine spans across the continents; that the said magazine has gained tremendous popularity amongst young and old alike and that the magazine has gained extensive reputation in India through various channels like tourists, travellers, embassies and consulates etc.
12. While challenging the word PLAYBOY being the property of the plaintiff the defendant has stated that this word was first oriented by J.M. SYNGE (1871-1909) in the preface of his famous book “The PLAYBOY of the Western World” “they are cheering a young lad, the champion PLAYBOY of the Western World”. Similarly, the word PLAYMATE is also not the baby of the plaintiff as it was first discovered by Charles Lamb (1775-1834) in his famous book “The Old Familiar Faces” wherein it has been written “I have had PLAYMATES, I have had companions in my days of childhood in my joyful schooldays, All, all are gone, the old familiar faces”. It is further averred that mark PLAYWAY is neither deceptively similar to the plaintiff’s mark PLAYBOY nor the similarity is of such a high degree that customers who are aware of the reputation of PLAYBOY are bound to be confused into thinking that the impugned magazine is being published with plaintiff’s consent or is a license/franchise of the plaintiff or has some nexus with the plaintiff company.
13. Further that there is no similarity regarding its contents, getup, colour scheme, display, price, pages, market, customers, area of circulation etc. as the title of the plaintiff’s magazine is in capital English letters whereas the defendant’s magazine is published in small English letters. Again, that on the one hand plaintiff’s magazine contains fully nude pictures of foreign models whereas the defendant’s magazine contains only the topless Indian models and there is no such likelihood of any confusion, deception or similarity between the two magazines. In spite of admitting that the magazine PLAYBOY deals with sexual aspect and object of articles is that of male entertainment still the defendant has averred that it has no element of deception as the plaintiff’s magazine has no circulation in India and that there is no violation of anybody’s right unless the same are copied.
14. While countering the pleas of the defendant the plaintiff has averred that the very adoption of the word PLAY in two of the names of the magazines submitted before the DCP (Licensing) speaks volumes for the dishonest motives of the defendants as they clearly illustrate that defendants had the idea of the plaintiff’s magazine’s title the ‘PLAYBOY’ in their mind as combination of the two words ‘PLAY’ and ‘BOY’ which was imaginatively coined by the plaintiff and had acquired a valuable and indelible trade mark significance on account of its long, continuous and extensive use and, therefore, the preference of the word PLAY in the magazine PLAYWAY was clever and dishonest device to exploit the trade mark of the plaintiff. It is further averred that though the said magazine may not be wide in circulation at certain point of time due to import restrictions but the substantial reputation for it has to be protected in the country as the magazine is well-known and the reading public is, in general, aware of the trade name PLAYBOY as large volume of these magazines come into circulation in India on account of tourists travel and since it has been published since 1953 and has attained highest of success in its acceptability and circulation it was irrelevant whether defendant has ever seen the magazine or not and has coined the word of its own. The protection to the well known trade marks has crossed barriers of every nation and whether the aggrieved party has any direct circulation in any country or not is immaterial as no party can be allowed to misappropriate or misuse the trade mark of another party.
15. It is further averred that mere circumstance of approval of name under the PRB Act does not have any relevance or effect on the existence of the trade mark of the plaintiff which is in vogue for the last more than 40/50 years and, therefore, it cannot take precedence over the prior existing valid statutory rights and that the PRB Act cannot sub silentio defeat the provisions of the TMM Act as this Act affords protection to the market of the plaintiff. Again that the fundamental right of freedom of speech granted to the defendant by the Constitution does not grant him the freedom to infringe the provisions of the TMM and can also not jeopardize civil remedy available to the party for the infringement of the trade mark and passing off.
16. The plaintiff by way of evidence has filed the affidavit to prove the following facts:
(i) That the plaintiff company was founded and originally incorporated as HMH Publishing Company, Inc. on 9th October 1953 and merged with HMH Corporation in August 1964. Its name was again changed on 11th February 1971 to Playboy Enterprises, Inc. On 15th March 1999 this company also merged with the company known as Playboy Enterprises International, Inc., (the plaintiff herein) by way Certificate, Ex. P-1.
(ii) That the registered proprietor of the magazine Playboy secured registration No.219948 in class 16 in India vide Registration Certificate, Ex. P-7, for use in legal proceedings.
(iii) The magazine Playboy comes in the category of class 16. It has gained recognition through worldwide circulation being published in as many as 16 countries apart from its origin United States.
(iv) It has spent millions of dollars on publicity and promotion of its mark including Playboy magazine and thus has acquired an unsurpassed and enviable reputation connoting and denoting the magazine which had become synonymous with the plaintiff company.
17. At the outset, relevant provisions of TMM Act need to be referred in brief.
18. Section 27 of the TMM Act provides –
“27. No action for infringement of unregistered trade mark –
(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.”
19. As is apparent an action for passing off against a registered user of a trade mark is available on account of a prior use of the same trade mark irrespective of the fact whether it is the same, similar or identical. For an action of passing off a trade mark need not be a registered trade mark whereas for infringement of trade mark the registration of the trade mark-is a condition precedent.
20. Section 28 of the Act bestows upon the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief against infringement of the trade mark.
21. Section 29 provides as to the remedy if the registered trade mark is infringed by a person who not begin the registered proprietor of the trade mark or a registered user hereof using by way of a permitted use and uses in the course of a trade mark which is identical with or deceptively similar to the trade mark in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. If such an infringement takes place the infringer can be injuncted upon, unless the infringer establishes to the satisfaction of the Court that the use of the mark of which the plaintiff complains is not likely to deceive or cause confusion or to be taken as an indicating action in the course of trade between the goods in respect of which the trade mark is registered and some person having the right, either as registered proprietor or as registered user, to use the trade mark, the infringer can be injuncted to use the said trade mark.
22. Thus in order to succeed in an action for infringement of trade mark the plaintiff has to establish the following essentials:-
i) The trade mark should be registered in part A/B of the register as provided under Section 28 of the TMM Act.
ii) The person infringing the trade mark should not be a registered proprietor of the trade mark or a registered user thereof using the same by way of permitted use.
iii) The person infringing the trade mark should use a trade mark which is identical with or deceptively similar to the registered trade mark of the plaintiff in relation to any goods in respect of which the trade mark is registered.
23. To escape an action for infringement the defendant has to prove the following:
1) That the use of the mark of which the plaintiff complains is not likely to deceive.
2) That it does not cause confusion.
3) That it cannot be taken as indicating a connection in the course of trade between the goods in respect of which the trade mark is registered and some persons having a right either as registered proprietor or as registered user to use the trade mark.
24. So far as action for passing off is concerned it has been defined by Salmond in his Law of torts (17th Edition) as follows:-
“The gist of the conception of passing off is that the goods are in effect telling a falsehood about themselves, are saying something about themselves which is calculated to mislead. The law on this matter is designed to protect traders against that form of unfair competition which consists in acquiring for oneself, by means of false or misleading devices, the benefit of the reputation already achieved by rival traders”.
25. Clerk and Lindsell (torts, 15th Edition), defines the passing off as an actionable wrong as under-
“It is an actionable wrong for a trader so to conduct his business as to lead to the belief that his goods or business are the goods or business of another. This wrong is known as “passing off”. It is immaterial whether the false representation, as to goods or business, involved in passing off, is made expressly by words, or impliedly, by the use or imitation of a mark, trade name or get-up with which the goods of another are associated in the minds of the public. But although this is the most common form of passing off it is only a special instance of a more general rule that any misrepresentation calculated to give one trader the benefit of another’s goodwill is actionable.”
26. In Kaviraj Pandit Durgadutt Sharma Vs. Navratna Pharmaceutical Laboratories AIR 1965 SC 989 the Hon’ble Supreme Court distinguished the action for infringement from the action for passing off like this:-
“While an action for passing off ins a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of “the exclusive right to the use of the trade mark in relation to those goods”. (Vide Section 21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases”.
27. Thus, an action for infringement of a trademark is a statutory remedy whereas action for passing off is a common law remedy and its foundation is based upon element of deceit. Though there is no need to establish the actual deception but if there is a scope for apprehending deception the action for passing off is maintainable.
28. Let us first deal with the distinctive features of PRB and TMM Act.
29. The registration of name of magazine, calendar or any printed publication under the provisions of PRB Act is an independent action and has no relevance or effect either over-riding or over-stepping the provisions of TMM Act. The preamble of the PRB Act itself demonstrates that this Act was not made for the purpose of governing disputes relating to names, titles and trade marks. Trade mark or mark registered under the TMM Act or its prior, long and known existence particularly the mark of arbitrary nature makes it so strong, the infringement of which entitles the user to obtain injunction against the infringer.
30. The nature of enquiry under the PRB Act is for the purpose of approval of the name of a magazine or publication and as such it cannot have precedence over the provisions of the TMM Act which is a special enactment and was made for the purpose of governing disputes relating to names, titles or trade marks. This conclusion emanates from the comparison of the object of the aforesaid two Acts. The preamble of PRB Act shows that it was made for regulating printing presses and newspapers, for preservation of copies of every book and registration of such books and newspapers. Thus the main concern of the Legislature was to enact a law which would help in preservation of the copies of the books and newspapers.
31. The TMM Act was enacted to provide for the registration and better protection of trade marks and for the prevention of the use of fraudulent marks on merchandise. The Fourth Schedule of the TMM Act has adopted the international classification of goods including the kinds of the goods in question. Magazines, periodicals are included in Class 16. Had the PRB Act which too is a special Act a precedence over the TMM Act, the inclusion of magazines, periodicals and other literature in Class 16 would have been omitted as the registration of the name of the periodicals and printed publication is compulsorily registrable under the PRB Act. Thus the two Legislations should not be confounded and confused. So far as the valuation or infringement of the trademark or mark is concerned this is to be regulated by the provisions of TMM Act and provisions of the PRB Act are of no relevance.
32. Without traversing further on this aspect, the pith and substance of the dispute that calls for determination in these proceedings is whether the mark PLAYBOY irrespective of its assumed non-registration in this country and also irrespective of import restrictions and legal ban on its circulation stands eclipsed by the word “PLAY” used in the defendant’s magazine PLAYWAY.
33. In the present day world even goods of unregistered mark and banned items like the one in question get more in circulation partly out of curiosity and mainly if they capture the imagination of its consumers and thereby gain wide-spread reputation and goodwill as tourists, travellers, embassies and even smugglers are their active channels.
34. Name of a magazine having unique distinctiveness attains publicity and acquire unbelievable reputation because of its identity, quality, title, the cover, its contents, theme, sophistication, ideas, spectrum of issues it raises and deals with, the articles or the information either as to entertainment or information or intellectual aspect. Use of the same name or uniquely distinctive prefix or suffix of the name is always with a motive to exploit the goodwill and reputation by taking illegitimate advantage of its publicity involving huge cost. It is bound to create confusion as to its being an off-shot or sister publication of the infringed magazine because of broad akinness as to its features viz title, get-up, colour scheme, display, market, customers and area of circulation.
35. Again, the title of one is in capital letters and the other is in small letters is not a determining distinction. Predominant prefix or suffix of the title or mark or phonetic similarity as to the name are few other factors that go to decide the piracy of and assault on the name or trade mark. Comparison should show that they are indeed one in heart, mind and purpose. And if it happens to be cheap imitation it is bound to play havoc with the hard-earned reputation of the assaulted publication.
36. The plea that the word PLAYBOY is not the property of the plaintiff as this word was first oriented by J.M. SYNGE (1871-1909) in the preface of his famous book ” The PLAYBOY of the Western World” and similarly the mark PLAYMATE is also not the creation of the plaintiff as it was first discovered by OBCharles Lamb (1775-1834) in his famous book “The Old Familiar Faces” wherein it was mentioned “I had PLAYMATES, I have had companions in my days of childhood in my joyful schooldays, All, all are gone, the old familiar faces”, is to belie the ground reality and shirk the factual position.
37. Mere use of any particular word or terminology by any literature or even its coinage does not become his property unless it happens to be the title of his work. Any future book by any other literature or writer may contain the same words while expressing certain situation but once such a word is chosen as a title of a particular publication or magazine or periodical and registered as a trade mark, its prior, long and continuous use vests legal right as to its monopoly. And if it succeeds in attaining global or wide publicity, acceptance or reputation, it all the more becomes the property of the manufacturer or publisher and it is then immaterial whether the goods or the articles are sold in a particular country or not or there are trade restrictions or legal ban on their import. The protection os such a trademark is transnational including titles of magazines, books, periodicals as these are also qualified to be the valid trade marks. These marks bestow literary and artistic rights.
38. In his commentary on the Trademark Law, J. Thomas McCarthy in Trademarks and Unfair Competition, 4th Edition, Volume 2 has observed that “Titles of a series of books, periodicals or newspapers do function as a trade mark to indicate that each edition comes from the same source as the others and therefore such titles are registrable as trademarks. For magazine, newspaper, encyclopedia, dictionary, radio and television series, the title of the series functions in an analogous way to the trademark of a product: indicating the source of items. Such series, titles enjoy the same protection as usual trademarks”. For instance a title of magazine or a newspaper picked up from some work of a great literature which obviously excludes if it happens to be the title of the book, it can be registered as a trade mark and has the same protection as usual trademarks have.
39. The trademarks are mainly of four varieties. The name of the trademark may be ‘generic’ which means that it may refer to the genus of which the particular product may be species. It may be ‘descriptive’ which means that it may describe the nature or type of goods to which they are applied. It may be ‘suggestive’ which involves imagination, thought and perception to reach a conclusion to the nature of the goods. It may be ‘arbitrary’ or fanciful which goes not have any connection to the nature or type of the goods.
40. The trademark PLAYBOY falls in the last category and thus its close imitation or deceptive similarity by using any part of the word either as prefix or suffix is likely to create confusion in the minds of the customers as to its source. It also bares dubious design and ill-motive to exploit and thrive upon the profound publicity and mighty magnitude of its circulation projecting popularity and the degree of distinction, quality and sophistication.
41. The defense that there is no similarity regarding the get-up, contents, theme, price, market, customers, area of circulation etc. including the title, which in case of the magazine in question is capital whereas the title of infringer magazine is in small letters holds water like a sieve. Not only the theme is the same but its colour scheme, get-up, display and the area of the circulation and the kind of customers i.e. adults male are prominently the same. Both the magazines have semi-nude pictures of models, foreign as well as natives and both are sex oriented magazines and cater mainly to the heterosexual adult males. Rather the defendant’s magazine is crude imitation and is likely to deliver a heavy blow upon the established name and business of the plaintiff.
42. As referred above the Court of Appeals of England in Playboy Enterprises Inc. vs. Chuckleberry Publishing Inc. (215 USPQ 662) had the occasion to deal with a near similar case instituted by this very plaintiff against a foreign magazine titled as PLAYMEN and the question arose whether the title ‘Playmen’ was likely to cause confusion amongst the consumers’ whether it was deceptively similar; whether the name was chosen with exploitative purpose because of its likeness of PLAYBOY and whether it can be circulated to its distributors to start a new magazine. The plaintiff produced in support of its contention, an expert on the subject Ronald Scot. According to him in the purchase of magazines four-step process is involved. Firstly the consumer views the product on the newsstand where often only the left hand portion of covers are exposed; second, the consumer picks up the cover and scans the entire cover; thirdly, the consumer opens the magazine to examine the contents; and fourthly in the case of sex oriented magazine the consumer flips to the centre-fold of the magazine, if one exists. This process takes only a few seconds and the ultimate decision to buy is typically impulsive. On viewing in the context of these four fold analysis the magazine PLAYBOY of the plaintiff which was distinctive and had wide reputation and had attained a great market value because of its long standing success he opined that the plaintiff was entitled to protection.
43. A sample copy of the first issue of the ‘Playmen’ was compared and several features were found to be near similar. Both the magazines appealed to the same consumer group i.e. sexual adult males. Both the magazines were found to utilise the same cover, layout consisting of the magazine, title, a picture of young woman and the titles of article appearing along with the sides and inside both the magazines contained semi clad women and similarly a three-page central-fold of a female model as appearing in magazine PLAYBOY were found to figure in the magazine Playmen. Both the magazines were found to contain shortstories, salacious cartoons, interviews of celebrities and other like features. Apart from this both the titles had the same prefix “Play”. Like the word PLAYBOY the word PLAYMEN was also not found in the dictionary. But both these words referred to heterosexual persons: in the former case a boy and in the latter a grown up person.
44. It was held that in view of the strength of mark PLAYBOY the degree of similarity between the two marks, degree of similarity between products, purpose of the respondent in adopting its mark and resulting confusion amongst the consumers which is likely to be caused lead to the inference that the mark PLAYBOY which was suggestive rather than descriptive stood infringed by the use of the mark PLAYMEN as to its being deceptively similar and creating confusion as to its source.
45. Co-incidentally the defendant magazine has also the similar features. It is interspersed with semi-nude pictures of Indian & Foreign models and three page centrefold, salacious cartoons, articles, interviews with celebrities. Of course imitation is cheap; quality is crude and similarity is deceptive.
46. In Marquis Who’s Who, Inc. vs. North American Advertising Associates, Inc, et all, 194 USPQ 441, certain criterian were laid for inferring infringement of the trade marks and names. Certificates of registration is prima facie evidence of validity of registration, of registrant’s ownership of mark, and of registrant’s exclusive right to use mark in commerce; mere suggestive connotation does not prevent term form being valid trade mark entitled to protection. The determining criteria is that trade marks and goods to which they are applied should be so interrelated that there would be reasonably foreseeable likelihood of confusion as to source or origin and the issue regarding existence of confusing similarity can be decided through even court’s analysis by way of comparison and judgment. Marquis publication ‘Who’s Who in the United States’, being the trade name of Who’s Who Honorary Society of America which was for national biographical dictionaries was held to have infringed by the publication under the name and title ‘Who’s Who in America’ as this publication also related to national biographical dictionaries and was directed to the same market and marketed in the same manner.
47. Thus the element of fraud, deception in passing off was considered the basic criteria to saddle with the liability for infringement of the trade name or mark. The degree of similarly between competing marks in appearance and suggestion, intent of actor in adopting his designation, relation in use and manner of marketing between good marketed by parties involved, and degree of care likely to be exercised by purchasers are again some of the determining factors.
48. In another case Parle Products (P) Ltd. vs. J.P. & Co. , wherein M/s Parley Products were owners of certain registered trade mark one of which was Gluco used on their half pound biscuit packets and another registered trade mark was a wrapper with its colour scheme, general get up and entire collection of words and the wrapper was used in connection with sale or their biscuits “Parle’s Gluco Biscuits” printed on the wrapper and these products were being sold on extensive scale for many years. M/s J.P. & Co. Mysore, started manufacturing selling and using the wrappers in connection with the scale of their biscuits which was deceptively similar to Parle’s trade mark. Though it was pleaded that there was a good deal of differences in the design of two wrappers manufactured by the alleged infringer from that of the plaintiff’s wrapper in as much as that the infringer’s wrapper contained the picture of a girl supporting with one hand a bundle of hay on her head and carrying a sickle and a bundle of food in the others, the cows and hens being unlike those of the plaintiff’s wrappers, there was also said to be difference in the design of the buildings on the two wrappers and the words printed on the two wrappers were distinct and separate.
49. While referring to Karly’s Law of Trade Marks and Trade Names (9th Edition Paragraph 838, the Supreme Court held that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered and that they should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It was further held that it would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In the said case it was found that the packets which were practically of the same size, the colour scheme of the two wrappers was almost the same; the design on both though not identical bore such a close resemblance that one could easily be mistaken for the other; the essential features of both were that there was a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground and there was in the background a farm-house with a fence. The words “Gluco Biscuits” were printed in one while the words “Gluco Biscuits” were printed on the infringer’s packet.
50. According to Karly’s Law of Trade Marks and Trade Names two marks when places side by side , may exhibit many and various differences, yet the main idea left on the mind by both may be the same and thus a person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted.
51. There are two cases which on first impression appear to akin to the case in hand but the facts and the decisions of the Supreme Court would show that they are quite distinguishable. In J.R. Kapoor vs. Micronix India, 1994 Supp (3) SCC 215, trade name MICROTEL and MICRONIX were the subject matters. Both were used in respect of electrical and electronic apparatus.. Micro-chip technology was the base of many of the products. It was held that firstly there is no phonetic or visual resemblance between the words “tel” and “nix” so user of such types are not likely to be misguided or confused. As regards the prefix micro by the infringer it was held that the word “micro” is descriptive of the micro technology used for production of many electronic goods which daily come to the market and as such no one can claim monopoly over the use of such a word as micro-chip technology is the base of many of electrical and electronic apparatus. It was further held that anyone producing any product with the use of micro-chip technology would be justified in using the said word as a prefix to his trade name. Further observations of the Hon’ble Supreme Court were as under:
What is further, those who are familiar with the use of electronic goods know fully well and are not likely to be misguided or confused merely by, the prefix ‘micro’ in the trade name. Phonetically the words ‘tel’ and ‘nix’ being totally dissimilar are not going to create any such confusion in the mind of the users. Secondly, ever the visual impression of the said two trade names is different. In the first instance, the respondent’s trade name ‘MICRONIX’ is in black and white in slimmer letters and they are ensconced in designs of elongated triangles both above and below the said name. On the other hand, the appellant’s trade name ‘MICROTEL’ is in thick bold letters in red colour without any design around. There is not even the remotest chance of the buyers and users being misguided or confused by the two trade names and logos”.
52. In F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manner & Co (P) Ltd., , the question was whether the word ‘Dropovit’ is deceptively similar or confusing to the word ‘Protovit’. It was held that to arrive at the conclusion whether the phrase causes confusion or not the test of “Look” and “Sound” must be used. Since the pronunciation of D and P was wholly dissimilar to that of P and T, it was held that there is no reasonable probability of confusion from the visual or phonetic point of view. However, the sue of the word terminal syllable ‘VIT’ as suffix, it was held that the mark ‘VIT’ is both descriptive and common in trade. Even an average customer can know that in respect of vitamin preparation, the word ‘VIT’ occurs in a large number of trade marks and as such he can keep himself on guard against making any mistake. Thus there was no real tangible danger of confusion. The contention that the Dropovit is not a descriptive word was not accepted and it was held that “if it is not so then it must be held to be an invented word. It is carried out of two words, the resulting combination not reminding one of the original words unless he is told about it or he devotes some thought over it. It being an invented word was entitled to be registered as a trade mark.”
53. In the instant case trademark PLAYBOY is an arbitrary or fanciful mark and does not have any connection to the type or nature of the goods. Any prefix or suffix is bound to create not only confusion but also projects near similarities both phonetically and visual.
54. In Kaviraj Pandi Durga Dutt Sharma’s case (supra), the Supreme Court laid down the following tests for infringement:
” 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 trade mark of the plaintiff has been adopted by the defendant, the fact 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.”
55. Thus it is the overall and board similarity to the registered marks that is likely to mislead a person and not the complete or meticulous akinness which is to be sought for. Broadly same is the test passing off action.
56. The plea that there was a vast difference in price of the magazines and, therefore, there is no possibility of confusion and deception because the consumers are familiar with the current mark and realities is of no avail as on the sone hand impression goes around that the said magazine is being published under a contract or arrangement with the plaintiff and on the other hand imitation particularly of cheap and crude kind is bound to dwindle down the value attached to the infringed mark resulting in a serious set back to the global reputation of the plaintiff’s trade mark and to its goodwill earned over the years.
57. This Court in William Grant & Sons Ltd. vs. McDowell & Co. Ltd. (1994 III Ad Delhi 65) had the occasion to opine on this proposition and dealt with the contention of the defendant that the defendant’s product was priced differently, by stating “if this be so anybody who takes the defendant’s whisky in India, or elsewhere from out of a bottle to which the label of the defendant, which is objected to by the plaintiff is affixed, would carry it in his mind and memory consciously or unconsciously and the inevitable result would be that the plaintiff’s reputation would be impaired, gradually debased an goodwill diluted and what is distinctive, shall be eroded.”
58. Lastly the plea that since plaintiff’s magazine has no circulation in India because of legal ban and import restrictions nor is India its country of origin the question of infringement of trade mark does not arise has no substance as now-a-days the reputation or the goodwill of the brand or tradename is not confined to national borders. Tradename or brand that acquires international reputation does not cofine in the four-walls of its house. It is immaterial if there is a legal ban or import restrictions of its sale or circulation in other countries. Temporary or even permanent legal interruption or suspension or cessation of business or sale or, circulation in one country or area does not confer a right upon any person to adopt the same tradename or invent deceptively similar name as substantial reputation of tradename or a brand earned over the years is not wiped out. One of the significant attributes of international tradename or brand is the influence over the mind of the people and their common belief as to its origin or source.
59. Similar was raised and repelled in Kamal Trading Co. Bombay and others vs. Gillette U.K. Limited, Middle Sex, England, 1988 PTC 1 (Vol.III) wherein the trademark 7 O’CLOCK of Gillette company was being used in connection with its goods, namely safety blades, safety razors, shaving brushes etc. since 1913 and the plaintiff company and its subsidiaries acquire world wide reputation under the said trade name. Because of import restrictions the goods with the trademark 7 O’CLOCK were not imported in India after the year 1958. However, in the year 1985 the defendant company started manufacturing tooth brushes under the trade mark 7 O’CLOCK. The trademark appeared with the letter “R” in a circle thereby indicating that the mark is a registered trademark. The mark used on the tooth brush as well as on the pouch was deceptively similar to the trademark 7 O’CLOCK. The plaintiff filed a suit in Bombay in the court of the Metropolitan Magistrate against an unknown person as the toot brush or the pouch did not state the name of the manufacturer. However, after the CID Bombay conducted the inquiry and seized the goods from the premises of the defendants, plaintiff sued the defendants.
60. While defending their action the defendants contended that the goodwill if any of the mark 7 O’CLOCK did not exist because the goods manufactured by the plaintiff were not available in India from 1958 due to import restrictions and, therefore, it was free to manufacture any goods under the tradename 7 O’CLOCK. The plea did not find favor for the reasons that the goodwill is not limited to a particular country because in the present days, the trade is spread all over the word and the goods are transported from one country to another very rapidly and on extensive scale. It was observed that even when the manufacturer suspends their business activities in a country for short duration due to legal ban or import restrictions it does not destroy the reputation or goodwill already acquired. Thus the conduct of the defendants in using the mark 7 O’CLOCK was held to be totally dishonest and fraudulent.
61. Plaintiff is also placed in similar situation. The defendant cannot be allowed to take refuge under the umbrella of legal band or import restrictions imposed upon the sale or circulation of the plaintiff’s magazine as it has already acquired would-wide reputation and goodwill and continuous to be in the same trade.
62. This Court had the occasion to deal with this proposition i extenso in Apple Computer Inc. vs. Apple Leasing & Industries, 1992 (1) ALR 93, wherein English and American case law was also discussed.
63. The English principle enunciated in Alain Bernardin et Cie vs. Pavilion Properties Ltd., 1967 RPC 581, A.G. Spalding & Bros. vs. A.W. Gamage Ltd., 1915 (32) RPC 272, particular in Gamage case was that the goodwill or reputation of a tradename or a brand is local in character and divisible i.e. if the business is carried on in several countries a separate goodwill attaches to it in each which in another words means that the goodwill in that country perishes with it although the business may continue to be carried on in other countries.
64. While disagreeing with this view the Supreme Court of Ireland in C & A Modes and another vs. C & A (Waterford) Ltd. and others, 1978 FSR 126, held that the English principle of the goodwill stopping at frontiers as laid down in Gamage’s case, is no more applicable as in these days of international trade, the goodwill could possibly stroll over the international boundaries but the necessary condition is that the tradename or business must have a goodwill. This view was fortified in Metric Resources Corporation vs. Leasemetrix Ltd. and another, 1979 FSR 571, wherein it was held that reputation is sufficient to warrant an injunction and no trading was required in a country of action before goodwill could be said to exist.
65. In Orkin Exterminating Co. Inc. vs. Pestco Co. of Canada Ltd. et al, 50 Ontario Reports 726, popularly known as Orkin’s case the Ontario Court of Appeal went further and held that reputation which is protectable may extend across international boundaries, as the public are entitled to be protected from deliberate deception of the reputation earned through hard labour and substantial expenses as now-a-days the reputation spreads fast is entitled to the protection of its name and trademark having monopoly and distinguished logo even though it may not be carrying on business in the country other than its origin.
66. Thus there is unvarying current of unanimous view that it is not necessary that there should be either a direct competition between the parties or that the passing off action should be in the country of origin of the infringed trademark or name. It is the goodwill and reputation of the band or tradename earned through considerable expenses and long and hard labour that provides protection from the onslaught of deliberate deception and fraudulent adoption of the confusingly similar name or trademark using near similar name or symbol or its any other distinctive feature and such an infringement knows no boundaries including even those frontiers where the manufacturer or trader has no business at all as it is the reputation or goodwill which is at stake and endangered.
67. Like families and dynasties trade names with widespread reputation and goodwill have the right of protection. In ‘Shakespeare’s Romeo & Juliet’ even the love could not change the highly reputed and well-known family name. There were two chief families in Verona known by the name of Capulets and the Montagues. There was old deadly enmity between these families which grew to such a height that it extended to the remotest relations and even to the servants. As luck would have it Romeo of Montagues was driven to the bewitching beauty of Juliet of Capulets during dancing feast thrown by capulets where Romeo had gone in the guise of a mask. When they were engaged in allusions and loving conceits Juliet was called away by her mother. On discovering that the lady whose beauty he was stung by was non else but young Juliet, a daughter and heir to Lord Capulet. Though initially the old enmity dissuaded Romeo from loving Juliet lest family instructions lead Juliet to hat him yet the love overpowered both of them.
68. It was midnight when Juliet though unconscious of being over-heard by Romeo called Romeo by name; “O Romeo, Romeo” wherefore art thou Romeo? Deny they father, and refuse thy name, for my sake; of if thou will not, but my sworn love and I no longer will be a Capulet. …It is but thy name that is my enemy; thou art thyself, though not a Montage. What is a Montague! It is not hand, nor foot nor any part belonging to man. Oh! Be some other name! What is in a name! That which we call a rose by any other name would smell as sweet. So Romeo would; were he not Romeo called. Retain thou dear perfection which he owes; Without that till Romeo, doff thy name. And for they name, which is no part of thee, take will myself.
69. Romeo: ….. By a name I know not how to tel thee; Who I am, My name, dear saint is faithful to myself; Because it is an enemy of thee; Had I it written, I would tear the word. … Juliet: My ears have yet not drunk a hundred words, of that tongue utterances, yet I know the sound; Are thou not Romeo, and a Montague!”
70. Such is the importance of a name. Name with a fame always refuses to be plundered. Adoption of a near identical or deceptively similar name by a stranger is cause for anguish. It is true in every walk of life – be politics, families, trade or commerce. In case of trade and commerce act of adopting a similar or near similar mark or name has devastating effect.
71. Undoubtedly, the plaintiff’s trade name PLAYBOY has all over the years become strong and powerful mark as it has gained tremendous popularity all over the world initially through the medium of magazine and subsequently through the medium of the entertainment channel. The ‘PLAYBOY’ magazine has a total monthly world-wide circulation of nearly 5 million copies. Millions of Dollars are spent every year on publicity of its mark. The name is registered in large number of countries. the trade mark ‘PLAYBOY’ has entered in the list of a major trade marks.
72. The contents of the defendant’s magazine are on the same lines as that of the plaintiff’s magazine in so far as concepts and ideas are concerned. Mere a glance reveals that it is slavish copy and cheap imitation. It is also aimed to target the same market of consumers with a likely effect to create confusion as to its source and conscious association with the plaintiff’s widely know name. There is not a scintilla of doubt that the defendants have adopted the word “PLAY” with sole object to exploit and trade on its goodwill and widespread reputation. There is no credible explanation as to why the word “PLAY” was chosen.
73. In nutshell the following conclusions emerge:
(1) Though the plaintiff has secured registration of the trademark Playboy in respect of the magazine and several other goods which is more than seven years old and has demonstrated it strength due to the degree of distinctiveness, fame and reputation of the trademark Playboy yet being a title of the magazine it qualifies to be a valid trademark even if it is not registered because of its long and continuous use.
(2) The trademark Playboy falls in the category or arbitrary or fanciful trademark as it does not bring to mind the product to which it is applied and as such deserves the highest degree of protection. The trademark Playboy has acquired its world-wide circulation and publication in as many as 16 foreign countries and huge amounts spent on its publicity and promotion of this mark project its widespread fame and reputation culminating in is synonymity with the plaintiff company.
(3) The defendant’s adoption of the trademark ‘Playway’ not only amounts to infringement of the plaintiff company’s statutory right because of its being deceptively similar as to its ideas, contents, themes, concepts an photographs resulting in confusion and deception as to its source but also amounts to passing off as it tends to thrive upon the strength of its reputation and goodwill.
(4) Temporary legal ban or import restrictions in a particular country particularly of an insertional trade name or brand do not confer right on any person to adopt either the same name or deceptively similar name or its distinctive features verging on passing off action as the goodwill or reputation has indelible influence over the mind of the people and is all-pervading.
(5) Ban may not totally wipe out the circulation as the tourists, travellers, embassies still remain the active channels.
74. Out of all this, what emanates is that the plaintiff has the right to protect its trade name PLAYBOY from infringement as well as from passing off.
75. As a consequence the suit is decreed and the defendants are permanently injuncted from printing, publishing, selling, offering for sale, advertising, directly or indirectly dealing in magazines, etc. under the mark PLAYWAY or any mark either identical or deceptively similar to the plaintiff’s trade mark PLAYBOY or from doing any other thing as is likely to lead to passing off the defendant’s magazines/business as those of the plaintiff’s.