Delhi High Court
Kishore Zarda Factory (P) Ltd. And Ors. vs J.P. Tobacco House And Ors. on 9 October, 1998
Equivalent citations: AIR1999DELHI172, AIR 1999 DELHI 172, (1998) 2 ARBILR 567
Author: D.K. Jain
Bench: D.K. Jain
ORDER P.K. Jain, J.
1. In a suit for permanent injunction, restraining infringement of trade mark, copyright, passing off, damages etc., in respect of the trade mark "SHIVDATA" in relation to chewing tobacco, the plaintiffs have primarily prayed for permanent injunction, restraining the defendants, its servants, agents etc., from manufacturing, exporting, selling, offering for sale, directly or indirectly, its product under the trade name "SHOVA" with identical colour scheme of pink and grey on the tin, brown and pink on the cartons, same lettering, get up, placement, similar picture of lord Shiva in oval shape in the background of mountains and blue sky on tins cartons which are substantial reproduction or colourable imitation of the plaintiff's tin/carton and from doing any other thing which is likely to lead to confusion or deception, resulting in passing off the defendants' goods as those of the plaintiffs. Along with the suit they have filed the present application (IA No. 7081/95) under Order 39, Rules 1 and 2 r/w Section 151, C.P.C. seeking temporary injunction to the same effect till the disposal of the suit.
2. While issuing summons/notice to the defendants, ad interim injunction, as prayed, was not granted at that stage. On being served with summons/notice, the suit was contested by defendants Nos. 1 and 2 by filing written statements. The case was, however, adjourned from time to time as it was stated by counsel for the parties that the subject disputes were likely to be settled out of Court. But this was not to be and, therefore, the application for interim injunction has been taken up for consideration and disposal.
3. Although, the plaintiffs are three independent entities, but they seem to be under a common management of one Naval Kishore, being one of the Directors of the plaintiff No. 1 company, partner of plaintiff No. 2 firm and sole proprietor of plaintiff No. 3 concern. Defendant No. 1 is a concern trading in chewing tobacco, defendant No. 2 is a manufacturer of chewing tobacco and defendant No. 3 is an independent concern selling tobacco products.
4. The case of the plaintiffs, insofar as it is relevant for the purpose of appreciating the controversy involved, is that plaintiff No. 2 is registered owner of trade mark "SHIVDATA" in respect of chewing tobacco, with copyright in title "Shivdata Zafrani Patti No. 65 & 32" (Labels). Due to extensive sales of chewing tobacco under the said trade name since the year 1969, the said trade name was become popular throughout the country; it devised a special colour scheme of grey and pink for the cylindrical box with painting depicting lord Shiva in an oval shape with colour of blue and white as the dominant colours and with white mountains and blue sky in the background; it also devised a specific colour scheme for its carton of brown and pink colour and lord Shiva is also depicted on the carton. It is stated that the registration of the trade mark "SHIVDATA" and various copyright registrations in labels were initially in the name of plaintiff No. 2 and by an agreement between plaintiff No. 1 and plaintiff No. 2, in 1983, plaintiff No. 1 was allowed to use the trade mark "SHIVDATA" by means of a deed of assignment of trade names and copyright and thus from 19 March, 1990, plaintiff No. 1 is the exclusive proprietor of the trade mark "SHIVDATA" and various labels registered under the provisions of the Copyright Act, 1957. It is further stated that since 1984, plaintiff No. 1 has done extensive sale of chewing tobacco under the said trade name. Its sale figures since 1984 have been in the range of over Rs. 1 crore per year. It is claimed that on account of vast sales, people associates the trade name "SHIVDATA" for chewing tobacco and the particular scheme of grey and pink on tins and brown and pink for the cartons, as the colour scheme of the products of plaintiff No. 1 and as the chewing tobacco is consumed also by illiterate and semiliterate persons, the particular colour schemes, get up have become distinguishable feature of the tins and cartons of plaintiff No. 1.
5. It is alleged that defendant No. 1 has been purchasing the chewing tobacco under the said trade name from plaintiff No. 2 till 1983 and from plaintiff No. 1 till 1994 and it was one of the main retail outlets/distributor for the products of plaintiff No. 2 under the said trade mark and was thus fully aware of the reputation and good will of the trade mark "SHIVDATA" and colour scheme adopted by the plaintiffs on the tins and cartons; defendant No. 1 suddenly stopped making purchases from plaintiff No. 1 and instead in connivance with defendant No. 2 launched the same product in April, 1995 under the trade mark "SHOVA" written in identical style as that of "SHIVDATA" with identical colour scheme of the tins and cartons; defendant No. 1 has adopted the same lettering style, inasmuch as even letters "S" and "V" of "SHIVDATA" and of "SHOVA" are written in identical manner in both the trade names; the writing style of "SHOVA" is entirely copied from the writing style adopted by plaintiff No. 1 for "SHIVDATA"; instead of picture of Shiva, the defendants have placed an oval painting of "shivling" in the same setting of white mountains and blue sky in the background, thus creating an impression that the goods of defendants Nos. 1 and 2 emanate from the plaintiffs.
6. It is pleaded that having learnt that the defendants were deceptively using plaintiffs' trade mark and colour scheme and they were trying to create an impression amongst the customers that they were in some manner or the other connected with the plaintiffs, a legal notice was served on defendants Nos. 1 and 2 calling upon them to desist from such user but with no result and hence the present suit.
7. The suit; as well as the application are resisted by contesting defendants Nos. 1 and 2 on the pleas : (i) absence of sale figures for the years 1969 to 1983 show nonuser of the said trade mark during the said period and, therefore, the said trade mark has been abandoned by the plaintiffs; (ii) the label used on tins by defendant No. 1 is not deceptively similar to the trade name registered in the Trade Names Registry or to the labels registered in the Copyright Office by the plaintiffs; (iii) on the tins of the contesting defendants, the essential features of the competing labels are not similar; and (iv) the writing and style of the impugned trade name, colour scheme of the label, arrangement of the features, position and use of numerals are used by many manufacturers and hence these features are common to the trade and, therefore, the plaintiffs cannot claim exclusive rights in respect thereof.
8. I have heard learned Counsel for the parties, who have taken me through the documents filed in respect of their respective cases. I have also tried to compare the two tins and packing cartons in question.
9. It is submitted by Mr. Pravin Anand, learned Counsel for the plaintiffs, that not only the overall colour scheme and get up of the two tins, being identical, the cumulative effect of the visual similarity between the picture of lord Shiva and Shivling and the phonetic similarity between "shiva" and "shova" is likely to cause confusion and/or deception amongst the traders and purchasing public, particularly when the goods of the plaintiffs and the defendants are of the same class and description, sold through the same trade channels/shops, across the same counters and to the same class of consumers. It is pleaded that not only Section 28 of the Trade and Merchandise Marks Act, 1958 confers an exclusive right in favour of the plaintiffs to use the registered trade mark, the plaintiffs being an established prior user of the trade mark, the defendants cannot be permitted to pass off their product as that of the plaintiffs. It is asserted that the adoption and user of the mark "SHOVA" by the defendants is actuated by mala fide intention to trade upon and benefit from the reputation and goodwill associated with the plaintiffs' trade name "SHIVDATA". In support, reliance is placed on Century Traders v. Roshal Lal Duggar & Co., and Bhatia Plastics v. Peacock Industries Ltd., 1995 PTC 1500.
10. Mr. Bhalerao, learned Counsel for defendants Nos. 1 and 2, while asserting that the idea conveyed by the defendants' trade mark "SHOVA", is different from the plaintiffs' trade mark, "SHIVDATA" has urged that insofar as the arrangement of various features and colour scheme on tins and cartons is concerned, the same being common to the trade, the plaintiffs cannot have monopoly in respect thereof. It is contended that there is no likelihood of any deception or confusion in the minds of the public purchasing chewing tobacco. He has also placed reliance on J.R. Kapoor v. Micronix India, 1994 (2) Arbi LR 274 (SC); Roshan Lal Oil Mills Ltd. v. Assam Company Ltd., 1996 (16) PTC 699, wherein it was respectively held that if the goods are not similar and the trade names, logo and colour scheme of the cartons are not likely to cause confusion in the minds of the customers, no injunction to restrain the use of the trade name can be granted because there cannot be any monopoly in the use of the trade name in respect of the goods falling in different classes and on Amrit Benaspati Co. Ltd. v. Suraj Industries Ltd., 1996 (16) PTC 462 and Sunstar Lubricants Ltd. v. Federal Chemical Industries, 1997 (17) PTC 62, wherein injunction was refused on the ground that trade names "ANGAN" and "GAGAN" and "SUN CRUISER 2001" and "GOLDEN CRUISER 1200" were not deceptively similar.
11. For the purpose of this application, I do not consider it necessary to dwell upon the issue of abandonment of the registered trade mark "SHIVDATA" by the plaintiffs, raised by the defendants, because insofar as action for passing off is concerned, the registration of a trade name or a similar mark is irrelevant. In such an action, the priority in adoption and use of trade mark is superior io priority in registration (see Century Traders v. Roshan Lal Duggar and Co., ) (supra).
12. Therefore, the moot question for consideration is whether the use of the mark "SHOVA" with the colour scheme and get up and a picture of shivling on its pack is likely to mislead a purchaser into believing that the defendants' goods are those of the plaintiffs.
13. The principles governing the law of passing off are now well settled. In a passing off action, the plaintiff has to prove not only the similarity in the trade names but also that the defendant is deceptively passing off its goods as that of the plaintiff s or that there is bound to be confusion in the minds of the customers. But it is equally well settled that the plaintiff is not required to establish fraud nor that any one was actually deceived or that he actually suffered damage. What he is required to prove is that defendant's goods are so marked, made up or described by them, as to be calculated to mislead ordinary purchasers and to lead them to mistake the defendant's goods for those of the plaintiff's. (See Ellora Industries, Delhi v. Banarsi Dass Goeal, ). The test to be applied in such matters is as to whether a man of average intelligence and of imperfect recollection would be confused. Deception can be caused by user of one or more essential features of a mark and degree of resemblance necessary to deceive or cause confusion cannot be defined and the question to be asked by the Court to itself is as to whether the customers of average intelligence and imperfect recollection are likely to be confused on the first impression (See Corn Products Refining Co. v. Shangrila Food Products, and Amritdhara Pharmacy v. Satya Deo Gupta, ).
14. In passing off cases, the main consideration, therefore, is the likelihood of confusion and consequential injury to the plaintiff and the need to protest the public from deception, deliberate or otherwise. Where such confusion or deception is, prima facie, shown to exist, protection needs to be given to the name or good will of the plaintiff.
15. At this stage, a conclusive finding in regard to the trade marks is not be recorded. What is to be seen is whether prima facie there is scope for confusion in the minds of the customers with regard to the two marks. Applying the above principles, I am of the view that the plaintiffs have been able to make out a good case for interim injunction in their favour. Bearing in mind the class of purchasers of chewing tobacco, majority of them may be illiterate, the striking similarities, namely, the identical styling of the letters of "S" and "V"; colour of pink and grey on the tins grey white middle and pink border and colour combination of the lid are likely to mislead them to mistake the defendants' goods for those of the plaintiffs.
16. I am of the view that the distinguishing features in the two marks pointed out by learned counsel for the defendants, namely, the photograph of shivling instead of lord Shiva and the three numericals on the tin, do not bring out any material or significant change in distinguishing the two cans because what is prominent and of importance therein is the colour scheme and setting of letters and other motifs. The two marks have to be compared as wholes, greater regard has to be paid to the features which are common and the probability of confusion with a person of average intelligence and imperfect recollection because an unwary purchaser is not expected to keep the two cans side by side to decide which product is intends to buy.
17. Examined from another angle one fails to understand as to what is so sacrosanct about the colour scheme adopted by the plaintiffs on their packing. The defendants claim that it is common to the trade. It is true that when the similarities in the get up of the two labels are common to the trade, but respective distinguishing features are wholly different, injunction may be refused but where, like in the present case, the marks appear to be more similar in combination with other elements, these are likely to deceive and cause confusion, injunction should be granted. As noticed above, in the present case not only the colour scheme, even the writing style of the letters and the selection of numericals and their setting is similar. It prima facie appears that defendants Nos. 1 and 2 have adopted the mark "SHOVA" with plaintiffs' colour scheme and style with an intention to trade upon the reputation of the plaintiffs' trade mark "SHIVDATA" and to pass off their goods as that of the plaintiffs.
18. I am, therefore, of the view that the defendants' trade name "SHOVA", in the setting it is placed, is likely to mislead the unwary purchasers of chewing tobacco to mistake the defendants' goods for those of the plaintiffs, entitling the plaintiffs to the relief of injunction against the defendants.
19. The decisions relied upon by learned Counsel for the defendants, which are otherwise distinguishable on facts, do not advance the defendants case. In J.R. Kapoor, 1994 (2) Arbi LR 274 and Roshan Lal Oil Mills Ltd., 1996 (16) PTC 699 (supra), the Court was dealing with the goods which were not similar to nature and in Amrit Banaspati Company. 1996 (16) PTC 462 and Sunstar Lubricants, 1997 (17) PTC 64 (supra), after examining the two trade names in question, the Court recorded a categorical finding that these were neither identical nor deceptively similar to each other and thus, there was no question of any reasonable person being confused or deceived into believing that one mark is the same as the other.
20. For the foregoing reasons, I am of the view that the plaintiffs have made out a prima facie case for grant of ad interim injunction in their favour. The balance of convenience is also in favour of the plaintiffs. On their own showing, defendants Nos. 1 and 2 have launched their product only in the year 1994, whereas the plaintiffs are in business at least since 1984 (On the basis of sale figures given in the plaint) and as such no irreparable injury is likely to be caused to them, if temporary injunction, as prayed, is granted. The likely confusion that may be caused if the defendants arc allowed to use the mark "Shova" in the setting and the colour scheme it is placed will cause irreparable injury to the plaintiffs.
21. Consequently, the defendants or any one acting on their behalf are restrained from manufacturing, selling or offering for sale, directly or indirectly, chewing tobacco under the present lettering style of trade name "SHOVA, in the colour scheme it is placed or any other mark which is identical or deceptively similar to the plaintiffs' trade mark "SHIVDATA" till the final disposal of the suit.
22. Any observations made above, is a prima facie view of the matter for the limited purpose of disposal of the present application and shall not be construed as an expression of opinion on the merits of the case.
23. The application stands disposed of in the above terms.