Brihan Karan Sugar vs Lokranjan Breweries Pvt. Ltd on 2 September, 2014

[Cites 24, Cited by 4]

Bombay High Court

Brihan Karan Sugar vs Lokranjan Breweries Pvt. Ltd on 2 September, 2014

1. The Plaintiff and the Defendant both manufacture and sell country liquor. The suit is an action in trade mark infringement combined with a cause of action in passing off. A petition for leave under Clause XIV of the Letters Patent is pending. The present application is restricted to interim reliefs in infringement.

2. The Plaintiff claims to have a registered trade mark "TANGO PUNCH" under registration no.1051107 in Class 33, of which the word TANGO is said to be an essential, leading and memorable feature. This word is used by the Plaintiff with or without a device of a raised palm with the first three fingers held upright. This mark TANGO and the three-finger device are embossed on the Plaintiff's glass bottles. The Notice of Motion seeks interim injunctive relief for, according to the Plaintiff, the Defendant has been found to be vending its own distillations in the Plaintiff's embossed bottles. Therefore, the Plaintiff says, the Defendant must be restrained from using bottles with the trade mark TANGO or any other mark with the mark TANGO in respect of country liquor. The claim is based on the registration of TANGO PUNCH, of which TANGO is said to be an essential feature.

2 of 22 ::: Downloaded on - 02/09/2014 23:48:43 ::: NM1027-14-S-559-14-F.DOC

3. The Defendant opposes the application. It says that the Plaintiff's registered trade mark is a composite label mark, not a word mark and that the Plaintiff has no monopoly in the word TANGO; that word is not a registered trade mark at all. In any case, the Plaintiff is itself guilty of piracy and can therefore claim no proprietary rights or infringement. Independently of that, the word TANGO is descriptive, not distinctive. The Defendant's rival mark, TANGO CHARLIE, is distinguishable and is, in fact, distinguished by consumers. The word TANGO is very common to this trade, and the consumer's eye falls to the following word PUNCH or CHARLIE as the case may be; and, consequently, it follows that there can be no infringement.

4. I have heard Dr. Tulzapurkar and Mr. Kadam, learned Senior Counsel for the appearing parties at some length. On a careful consideration of their submissions and the material on record that I have gone through with their assistance, I am unconvinced of the defences raised or that the balance of convenience can be said to favour the Defendant. I have, therefore, granted the injunction sought.

5. The Plaintiff claims that in 2001, its predecessor, Brihan- Maharashtra Sugar Syndicate Ltd. ("BMSSL"), adopted a composite trade mark label 'TANGO PUNCH', in devnagari script, in respect of its orange- or lime-flavoured country liquor, with a view to distinguish its goods from those of others in the market. TANGO is claimed to have been a leading, essential and memorable feature of this trade mark label. BMSSL obtained registration for TANGO PUNCH under registration number 3 of 22 ::: Downloaded on - 02/09/2014 23:48:43 ::: NM1027-14-S-559-14-F.DOC 1051107 in Class 33 on 10th October 2001. By a deed of assignment dated 9th June 2008, BMSSL assigned this trade mark and its associated goodwill to the Plaintiff. On 4th December 2008, the Registrar of Trade marks accepted the Plaintiff's application to have its name entered on the register of trade marks as the proprietor. The relevant documents are annexed to the plaint. The use of the trade mark (by the Plaintiff and, before the assignment, by BMSSL) is open, extensive and continuous. The Plaintiff has popularised its products and spent considerable amounts promoting them. Sales and expenses figures certified by a Chartered Accountant are annexed to the plaint. For the year 2013-14 alone, the Plaintiff's sales are nearly Rs.300 crores, and its expenses about Rs.2.5 crores.

6. The Plaintiff claims that in 2011 it decided to emboss its trade mark containing the word TANGO on glass bottles either on its own or in conjunction with the palm-and-three-finger device so as to distinguish its products from those of others. This embossing was on the front and rear of the Plaintiff's glass bottles. Since that time, the Plaintiff has sold its products in such bottles. The trade mark registration and the considerable reputation and goodwill have resulted in the Plaintiff acquiring statutory and common law rights to the exclusive use of the trade mark label and the word mark TANGO, said to be an essential, leading and memorable feature or part of its registered trade mark. The Plaintiff claims it diligently safeguarded its rights and initiated legal action where necessary.

7. This is not the first time these parties have crossed swords. In 2005, the Defendant applied to the State Excise authority for approval of a trade mark label TANGO CHARLIE. The Plaintiff 4 of 22 ::: Downloaded on - 02/09/2014 23:48:43 ::: NM1027-14-S-559-14-F.DOC filed an objection. The objection was rejected by an order dated 23rd September 2005. Later, the Plaintiff found some country liquor manufacturers using second hand bottles embossed or etched with the Plaintiff's trade mark TANGO. To pre-empt any such use by the Defendant, the Plaintiff sent a notice to the Defendant on 11th June 2012. At that time, in 2012, there was no claim of use by the Defendant. In August 2013, the Plaintiff learned that the Defendant had applied for the registration of a trade mark label TANGO CHARLIE (in Devanagari script) under Application No. 2539955 in Class 33. The Plaintiff issued a Cease and Desist Notice to the Defendant. Not seeing a product with TANGO CHARLIE in the market, the Plaintiff took no further action. However, the Defendant's refutation by its advocate's letter of 10th October 2013 of the Plaintiff's cease and desist notice led the Plaintiff to believe, it claims, that the Defendant would soon start using the impugned trade mark TANGO CHARLIE. These apprehensions, the Plaintiff claims, were borne out in May 2014 when it found the Defendant's country liquor being sold in the Plaintiff's glass bottles embossed or etched with the mark TANGO in devnagari script, but with the Defendant's labels DESHI DARU CRYSTAL BLUE LIMBA or DESHI DARU SIMLA SANTRA. The Plaintiff brought suit.

8. The Plaintiff claims that its long, open and continuous use of the mark TANGO has made it synonymous with the Plaintiff's goods. The word has acquired a secondary meaning and further distinctiveness, and is now exclusively associated with the Plaintiff and its products. Therefore, any product with the same or a deceptively similar mark is certain to confuse and deceive consumers as to the manufacturing origin. According to the 5 of 22 ::: Downloaded on - 02/09/2014 23:48:43 ::: NM1027-14-S-559-14-F.DOC Plaintiff, the Defendant procured the Plaintiff's embossed bottles from secondary markets. This, the Plaintiff says, is detrimental to the distinctive character and reputation of the Plaintiff's trade mark.

The Defendant could not have been unaware of the Plaintiff's products or reputation: the Plaintiff's products are sold across Maharashtra. The Plaintiff's claim in suit is based on the registration of its trade mark, of which TANGO is an essential, leading and memorable feature. Any such unauthorised use of an essential feature constitutes infringement.

9. The Plaintiff's trade mark registration is annexed to the plaint. The registration certificate shows a condition and limitation clause:

"Registration of this Trade Mark shall give no right to the exclusive use of the device of orange and all other descriptive matters appearing on the label."

10. Dr. Tulzapurkar's submission is that the condition does not disclaim the word TANGO. When permitting the registration of a mark, the Registrar exercises a statutory discretion. A Court must be slow in interfering with that exercise of discretion unless it is shown that the Registrar was clearly wrong or patently in error. In deciding whether or not a particular trade mark is likely to deceive or confuse, a Court must determine for itself what the distinguishing or essential feature of an already registered trade mark is, and what might be the main feature or idea underlying that mark. If the rival mark contains the same distinguishing or essential feature, a competing registration must be refused; and an illicit use of such a rival mark would be an infringement. The test, as always, 6 of 22 ::: Downloaded on - 02/09/2014 23:48:43 ::: NM1027-14-S-559-14-F.DOC is that of the common man. He is hardly likely to take in every single feature. What would he ordinarily remember or recall when looking at it? What salient feature might, in future, lead him to associate that particular product with that trade mark?1 Where a specific matter has been disclaimed, no proprietary rights can be claimed in it. Where it is not, a plaintiff who is a registered proprietor has a statutory right to prevent a defendant from using a deceptively similar mark.2 I do not believe there can be any disputing these propositions; and Mr. Kadam's submission that the latter case, Shaw Wallace, is distinguishable on facts is not one that commends itself. In that case too, submissions very close to those of the Defendant in the present case were advanced: that there is a disclaimer; that the matter or feature in question is in use by others;

and that the use of that feature is common to the trade.

11. In a separate judgment also concerning the Plaintiff and relating to use by another party of the Plaintiff's embossed bottles, I said, also referring to Shaw Wallace:3

13. What is disclaimed is the device of the orange slice, not the word TANGO. It is hard to see how that word, undoubtedly an inseverable part of the Plaintiff's registered mark, one without which the integrity of the Plaintiff's mark would be lost, can be said to have been 1 James Chadwick & Bros. Ltd. v The National Sewing Thread Co. Ltd., AIR 1951 Bom 147; upheld in appeal to the Supreme Court, National Sewing Thread Co. Ltd v James Chadwick & Bros. Ltd., AIR 1953 SC 357 2 Shaw Wallace & Company Ltd. v Mohan Rocky Spring Water Breweries Ltd., 2006 (4) Mh. L. J. 396, paras 10, 13, 14.

Brihan Karan Sugar Syndicate Pvt. Ltd. v South Konkan Distilleries, Notice of Motion (L) No.1123 of 2014 in Suit No. 463 of 2014, judgment dated 2nd September 2014.

7 of 22 ::: Downloaded on - 02/09/2014 23:48:43 ::: NM1027-14-S-559-14-F.DOC disclaimed or to have been 'descriptive'. If it is to be argued that the word TANGO is descriptive of the Plaintiff's products' lime or orange flavour, then I believe that to be too far extended. A tango is, in common usage, the Latin American ballroom dance in 2/4 or 4/4 time. The word 'tang' connotes piquancy in flavour or taste, a distinctively sharp flavour, taste or odour, frequently used in conjunction with citrus fruits. But in assessing the use of these words, we must be mindful of the consumers for whom these products are intended. It seems to me highly unlikely that the parties' consumer base would ever make the somewhat nuanced or refined linguistic associations in English of this disassembled word tang. That word's etymology is from Middle English, derived from a Scandinavian root. To extrapolate such an association to what is nothing but a distinctive localisation in Maharashtra is I think entirely incorrect. Once some particular material has been disclaimed or has a condition attached to it in the registration, the other parts must be taken to be without such limitation. The word TANGO is, thus, not a descriptive part of the trade mark TANGO PUNCH, or of such a non-distinctive character as to fall within Section 17(2)(b) of the Act.

This is equally true of the present case. What lends the

12. Plaintiff's mark punch is the word TANGO. It seems to me most unlikely that the word PUNCH on its own, divorced from TANGO, could be said to have sufficient distinctiveness. Now once a particular feature of a trade mark is found to be distinctive and essential, and once that essential feature is used without permission, there is, inevitably, infringement. Reckitt & Coleman of India Ltd v Wockhardt Ltd.4 is a decision that related to the use of a device mark 4 Appeal No. 1180 of 1991 in Notice of Motion No. 2141 of 1991 in Suit No. 2970 of 1991; per Pendse and Vyas, JJ, relying inter alia on Saville 8 of 22 ::: Downloaded on - 02/09/2014 23:48:43 ::: NM1027-14-S-559-14-F.DOC consisting of a device of a sword. It was argued that this device was part of a mark and hence does not amount to infringement. Where a striking and unique feature is used illicitly, it must be held that there is infringement. The Division Bench cited the Privy Council decision in De Cordova v Vick Chemical Coy5 to hold that where one or more essential features of a mark are used, and even if the whole of the mark is not so used, the rival use is an infringement. The identification of an essential feature depends in part on the Court's own judgment and partly on the evidence before it. The ascertainment of an essential feature is not merely a visual test. Mr. Kadam's attempt to distinguish this decision by saying that the device of a sword was itself registered makes no difference. He submits that the Plaintiff has registration only of a composite label mark, not a word mark, and hence enjoys no monopoly in the word TANGO. That word is not a registered trade mark at all. I believe this submission to be inaccurate. The pronouncement of law in Reckitt & Coleman is clear, unambiguous and binding. I see no reason to hold, as the logical sequitur of Mr. Kadam's argument would have me do, that every constituent part of a trade mark must also be registered, and that it is only in those cases that there can be said to be infringement. Indeed, this was the very argument that the Division Bench rejected.

13. In SABMiller India Ltd. v Jagpin Breweries Ltd.,6 Mr. Justice Kathawalla (also considering the mark HAYWARDS 5000, the subject matter of Shaw Wallace, a decision that he followed), said Perfumery Ltd. v June Perfect Ltd, LVIII RPC 147.

LXVIII RPC 103 6 Notice of Motion No. 92 of 2012 in Suit No.56 of 2012, unreported judgment dated 6th February 2014 9 of 22 ::: Downloaded on - 02/09/2014 23:48:43 ::: NM1027-14-S-559-14-F.DOC that a disclaimer is the antithesis of an essential particular of a trade mark. Where a disclaimer is intended to apply to a particular part of a mark sought to be registered, the disclaimer specifically says so. In this case, it is the orange slice that has been disclaimed, not the word TANGO. Had that word been descriptive, undoubtedly it would have been disclaimed as well.

14. Dr. Tulzapurkar then submits that no defendant can be heard to complain if he is sued for his use of a mark if he does so without making himself aware whether that mark is registered to someone else. It is for the rival user to take elementary precautions: to look at the public records and see whether the mark belongs to another. If, on the other hand, he has taken a search, found the mark to be the property of another party, and yet persists in using the mark, he risks a challenge to his use by the registered proprietor. In such a case there can also be no question of delay.7

15. Mr. Kadam's answer is, first, to contend that the Plaintiff itself is a trade mark pirate. There are, he says, prior marks with the word TANGO: a number of applications and at least two previous registrations, as set out in Exhibit "9" to the affidavit in reply:

CAREW'S BLUE RIBAND GIN TANGO N ORANGE registered on 1st March 1993 to Carew Phipson Ltd; TANGO registered on 15th October 1999 to United Spirits Ltd; and DESHI DARU SANTRA TANGO registered on 19th October 1994 to one KEM Foods Pvt. Ltd., KEM Distilleries Division. Mr. Kadam's 7 Bal Pharma Ltd v Centaur Laboratories Pvt. Ltd., 2002 (24) PTC (Bom) (DB).

10 of 22 ::: Downloaded on - 02/09/2014 23:48:43 ::: NM1027-14-S-559-14-F.DOC submission is that if the Plaintiff is itself a pirate, it cannot claim any proprietary rights or complain of infringement.

16. In the companion South Konkan Distilleries case a similar argument was taken. At least as regards United Spirits, it was found that the registration had lapsed. Exhibit "9" to the affidavit in reply does not show user by Carew Phipson; and the KEM mark is said to be only proposed to be used. Mr. Kadam relies on the decision of Mr. Justice Bobde in Ayushakti Ayurved Pvt. Ltd. & Ors. v Hindustan Lever Ltd.8 in support of this submission, as also of a Division Bench of this Court in J.K. Sons, Mumbai v Parksons Games & Sports & Anr.9 Now Ayushakti was a case in passing off, in which different considerations obtain. Parksons is indeed an authority for the proposition that if a defendant prima facie shows that the plaintiff's mark is itself an infringing mark, or an imitation of the mark of a third party, then relief may be refused on the ground that it has approached the court with unclean hands. That was indeed a peculiar case. The plaintiff was found not to be the proprietor of the mark in question. Its marks were a slavish imitation of the globally renowned cigarette brand State Express 555 depicted in a stylized manner. Being themselves infringers, the plaintiffs could not maintain an action in infringement. Parksons does not consider Section 28(3) of the Trade Marks Act, 1999 ("the 1999 Act"), a contest between rival registrants:

Sn. 28.--Rights conferred by registration 8 2004 (28) PTC 59 (Bom) 9 2011 113 (2) Bom. L.R. 1150 11 of 22 ::: Downloaded on - 02/09/2014 23:48:43 ::: NM1027-14-S-559-14-F.DOC (1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.

(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.

(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.

(Emphasis supplied)

17. What Mr. Kadam is suggesting is that because some third party supposedly has a rival registration, it matters not that it has not come to court against the Plaintiff. The Plaintiff must be deemed to be a pirate and cannot shelter behind Section 28(3). He is, therefore, not entitled to an injunction even against a third party 12 of 22 ::: Downloaded on - 02/09/2014 23:48:43 ::: NM1027-14-S-559-14-F.DOC infringer who does not have a registration. In view of the plain language of the section, I find it impossible to accept this submission. Two parties may both have contesting or competing registrations. They acquire no rights vis-à-vis each other, but each has every proprietary right against a third party infringer. Even assuming there are other valid registrations, as between the Plaintiff and those parties no action in infringement would lie. But the Plaintiff and each of those other registrants would be entitled to proceed against the Defendant.

18. In view of this, Mr. Kadam's reliance on the decision of Mr. Justice Bobde in Sun Pharmaceutical Industries Ltd. v Cipla Ltd. 10 is misplaced. The defendant in that case was also a registered proprietor of a trade mark. The plaintiff, whose use was later in time, sought to restrain the defendant. Mr. Justice Bobde examined the circumstances in which the plaintiff claimed to have adopted its mark and found that the plaintiff had, or must have had, knowledge of the defendant's prior registration. It was in those circumstances that injunction was refused. I do not see how this assists Mr. Kadam. Indeed, the finding in Sun Pharmaceuticals that a party is entitled to an injunction only where it establishes that it began using the mark innocently and unknowingly and unaware of the mark used by the defendant is one that immediately marks it, on facts, well apart from the case at hand. The present case is not one where the Plaintiff has moved against any of the prior registrants or users, assuming there are any such prior registrants or users. It seeks relief against one who, the Plaintiff claims, has illicitly adopted a prominent feature of the Plaintiff's mark well after the Plaintiff 10 2007 (34) PATC 481 (Bom) 13 of 22 ::: Downloaded on - 02/09/2014 23:48:43 ::: NM1027-14-S-559-14-F.DOC began using it and well after the Plaintiff's registration of the mark of which it is an integral and essential component.

19. In Lupin Ltd. v Johnson & Johnson,11 Mr. Justice Gavai considered the correctness of the view that at the stage of an interlocutory order it is impermissible for a court to examine the validity of a mark, the general view of this Court being that so long as the mark is on the register, even wrongly, the proprietor is entitled to an injunction. The Delhi High Court has taken the opposite view. Considering several judgments of this Court, the Delhi High Court, and the Supreme Court, Mr. Justice Gavai concluded that there was a likely anomaly if the view of several benches of this Court (that a prima facie examination of validity of registration was impermissible) was followed. A party could, on the basis of prior use, get an injunction against a registered proprietor in a passing off action. At the same time, the registered proprietor was also entitled to an injunction against a prior user. Mr. Justice Gavai was of the view that the Division Bench judgment in Maxheal Pharmaceuticals v Shalina Laboratories Pvt. Ltd.12 (that such an examination is impermissible at the interlocutory stage) required reconsideration by a larger Bench. On this basis, Mr. Kadam submits that the Plaintiff cannot sue unless his mark is valid; the issue stands concluded by Parksons, a decision noted by Mr. Justice Gavai in Lupin. After all, Section 28(1) of the 1999 Act uses the words "if valid". That, Mr. Kadam says, demands an enquiry into the validity of the registration, and when is that enquiry to be made 11 Unreported decision dated 13th August 2012 in Notice of Motion (L) No. 2178 of 2012 in Suit (L) No. 1842 of 2012.

Appeal No. 88 of 2005 in Notice of Motion No.2638 of 2004 in Suit No. 2663 of 2004; judgment dated 16th February 2005.

14 of 22 ::: Downloaded on - 02/09/2014 23:48:43 ::: NM1027-14-S-559-14-F.DOC if not now? I do not think it is possible to accept this submission in the context of this case. Parksons, as I have noted, was a case where Section 28(3) of the 1999 Act was not considered. Lupin squarely addresses it, but in a wholly different context, viz., that of the defendant being the registered proprietor of a rival mark much prior to that of the plaintiff. Again, that is not even remotely close to the case at hand.

20. Mr. Kadam then says that TANGO is not essential, distinctive or unique. Other registrations contain the word. At best it is descriptive. The statutory duty of the court under Section 17(1) is to take the label as a whole and the court must find the component sought to be enforced distinctive.

Sn.17 -- Effect of registration of parts of a mark (1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole.

(2) Notwithstanding anything contained in sub-section (1), when a trade mark --

(a) contains any part--

                    (i)    which is not the subject of a separate
                           application     by    the   proprietor for





                           registration as a trade mark; or

(ii) which is not separately registered by the proprietor as a trade mark; or

(b) contains any matter which is common to the trade or is otherwise of a non-distinctive 15 of 22 ::: Downloaded on - 02/09/2014 23:48:43 ::: NM1027-14-S-559-14-F.DOC character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered .

(Emphasis supplied)

21. Where Mr. Kadam sees a conflict (between seeing the mark as an inseverable whole and enforcing a monopoly on the use of a particular, essential element of it), I see none. Of course the statute provides that where a mark has multiple elements, its registration gives exclusivity in the use of the entirety of the mark. But this cannot mean that where the mark has a unique, distinctive, memorable, leading and essential feature, albeit not one separately registered, that that feature can be used willy-nilly by all and sundry without fear of repercussion. In the context of trade mark law, a leading or essential feature is akin to a synecdoche, a figure of speech where a part is uniquely representative of the whole (and sometimes vice-versa): "sails" for boats, or "willow" for a cricket bat for instance. I believe there is a valid analogy to be drawn with trade mark law, for it often happens that a singular feature of a trade mark is so utterly unique and distinctive that it at once connotes the whole of the mark. In Mr. Kadam's formulation, were these components not separately registered, it would be open hunting season on them all and anyone could use them even in conjunction with rival products. That seems to me to be a concept that entirely undermines the fundamentals of trade mark protection law.

16 of 22 ::: Downloaded on - 02/09/2014 23:48:43 ::: NM1027-14-S-559-14-F.DOC

22. In any case, this point has been concluded by Mr. Justice Kathawalla in Ultra Tech Cement Limited v. Alaknanda Cement Pvt. Ltd. & Anr.,13 where he held that:

29. From the language used in Section 17 it is clear that when a trade mark consists of several marks the registration confers upon the proprietor exclusive rights to the use of trade mark taken as a whole. As held in the aforestated decisions while comparing the marks, the Court has to consider and compare the essential features of both the marks. If the essential features are similar, then confusion and deception can be said to arise. As submitted by the Plaintiff, all that Section 17 lays down is that the registration of a trade mark shall not confer any exclusive rights in the matter forming only a part of the whole of trade mark so registered unless the part is the subject matter of a separate application for registration or is separately registered or is distinctive. The provisions of Section 17 contained in Sub-

Section 2(a)(i) and 2(a) (ii) and Sub-section (b) show that the three things mentioned therein are disjunctive and not cumulative.

In the present case the word ULTRATECH is distinctive. As submitted by the Plaintiff the fact that the Plaintiff's mark is registered without any disclaimers or limitations itself shows that the word ULTRATECH is a distinctive mark and the Plaintiff have satisfied the criteria laid down in Sections 9 and 11 of the Trade & Marks Act, 1999. Therefore in the present case though the word ULTRATECH is not separately registered nor is a subject of a separate application, the same being distinctive shall 13 2011 (5) Bom C R 588 17 of 22 ::: Downloaded on - 02/09/2014 23:48:43 ::: NM1027-14-S-559-14-F.DOC not be hit by Section 17(2) as submitted by the Defendants. Both the Ld. Advocates have relied on various paragraphs of the decision of the Calcutta High Court in the case of Three-N Products Private Ltd., v.

Emami Ltd. GA Nos. 2951 and 3976 of 2007 and CS No. 204 of 2007, Paragraph 35 of the said decision is relevant and is reproduced hereunder:

35. The words 'the registration thereof shall not confer any exclusive right"

towards the end of Section 17(2) have to be understood in the context. The import of such words is that the registration of the composite mark will not ipso facto confer any exclusive right as to the parts of the composite mark. But if the owner can establish exclusivity aliunde, the owner can assert the exclusivity. The registered owner is entitled to protection of its goodwill in such prominent feature as in an action for passing off unless the registered owner seeks to rely on Section 17(2)(b) of the Act in respect of a distinctive matter not common to the trade.

(Emphasis supplied)

23. Thus, on a finding that TANGO is not common to the trade and not non-distinctive, it is clearly outside the purview of Section 17(2)(b) and is, therefore, entitled to protection and enforcement.

24. Mr. Kadam's final submissions need not detain us for long. The Defendant's mark is, he submits, distinguishable and there is therefore no likelihood of confusion or deceptive similarity. Section 2(h) of the 1999 Act defines deceptive similarity to mean that one 18 of 22 ::: Downloaded on - 02/09/2014 23:48:43 ::: NM1027-14-S-559-14-F.DOC mark 'so nearly' resembles another as to be likely to deceive or cause confusion. The two labels being distinct, there is no such possibility and therefore no question of any infringement or of an injunction.

This is, in my view, far too disingenuous. The dispute here is about the Defendant's use of the word TANGO, an essential component and leading feature of the Plaintiff's mark, and of the Defendant affixing its labels on used bottles with an embossing of the Plaintiff's mark. It is not merely a question of comparing labels.

25. Mr. Kadam is correct in saying that the Plaintiff's registration gives it no exclusive right to the device of the orange since this is disclaimed. But I do not believe him to be correct in saing that TANGO is descriptive and lies outside the registration.

26. Mr. Kadam's final argument, as to an honest and bona fide trade or industrial practice in all manufacturers using each other's bottles, is one that I have considered in the South Konkan Distilleries case. There, I rejected the argument that there is any such bona fide or honest industrial practice. I also considered the two decisions in SABMiller India Ltd v. Som Distilleries & Breweries Ltd. 14 and the appeal from the learned single Judge.15

27. As to distinctiveness, Dr. Tulzapurkar submits that the Defendant is betrayed by its own actions. It has itself applied for registration of TANGO CHARLIE in May 2013. The Defendant cannot have it both ways. It cannot say that the word TANGO is 14 2013 (54) PTC 291 (Bom) 15 Som Distilleries & Breweries Ltd. v SABMiller India Ltd., 2013 (56) PTC 237 (Bom) (DB), per Dr. Chandrachud and Gupte, JJ.

19 of 22 ::: Downloaded on - 02/09/2014 23:48:43 ::: NM1027-14-S-559-14-F.DOC descriptive and incapable of registration or enforcement and at the same time claim precisely those rights by applying for registration of a mark that contains that very word. The Defendant is estopped from then contending that the word is generic, descriptive or common to the trade.16

28. As to use by others, the Plaintiff has said it is taking steps against those as well. The Defendant's reliance on sales invoices to show use by others is of no avail. Indeed, one invoice is decidedly odd: it is supposedly dated 5th December 2002 but shows a central sales tax registration of 2006.

29. In Ultra Tech v Alaknanda, Mr. Justice Kathawalla relied on the decision of the Supreme Court in Gujarat Bottling Co. Ltd. v Coca Cola Co & Ors.17 on the question of balance of convenience. These are the tests mandated by the Supreme Court: does the Plaintiff have a prima facie case? Is the balance of convenience in its favour? Would it suffer irreparable injury if the reliefs it seeks are not granted? An interlocutory injunction protects a plaintiff against injury till all uncertainties are resolved at the trial of the suit. This protection has to be balanced against the need of the defendant to be guarded against injury by being prevented from exercising his lawful rights. The court must weigh one against the other; hence, "the balance of convenience". Now what right could the Defendant possibly claim in this case, in the view that I have taken? It cannot 16 Automatic Electric Limited v R.K. Dhavan & Anr., 1999 PTC (19) 81; Indian Hotels Company Ltd. & Anr. v Jiva Institute of Vedic Science and Culture, 2008 (37) PTC 468 (Del.) (DB); Ultra Tech Cement Limited v. Alaknanda Cement Pvt. Ltd. & Anr., 2011 (5) Bom C R 588.

(1995) 5 SCC 545 20 of 22 ::: Downloaded on - 02/09/2014 23:48:43 ::: NM1027-14-S-559-14-F.DOC claim a right to continue using a feature that I have found to be, though on a prima facie assessment, distinctive not descriptive, and a leading, essential and memorable feature of the Plaintiff's mark. It cannot invoke an honest trade practice for there is none. It must follow, therefore, that the Plaintiff has made out a more than adequate prima facie case. The balance of convenience is clearly in its favour and it would certainly suffer loss incapable of adequate compensation.

30. There will thus be an injunction in the following terms against the Defendant, viz., that pending the hearing and final disposal of the suit, the Defendant (by itself or through any of its agencies, proprietors, directors, partners, agents, stockists, distributors or dealers) is restrained by an order and temporary injunction from infringing the Plaintiff's registered trade mark under registration No.1051107 in Class 33 by using bottles embossed with the trade mark "TANGO" whether with or without a device of a raised palm with three upright fingers or by the use of the trade mark "TANGO" or any other trade mark deceptively similar to the Plaintiff's registered trade mark upon or in relation to country liquor or similar goods.

31. Liberty to the Plaintiffs to apply for further interim reliefs in relation to passing off after leave is obtained under Clause XIV of the Letters Patent.

32. No order as to costs.

21 of 22 ::: Downloaded on - 02/09/2014 23:48:43 ::: NM1027-14-S-559-14-F.DOC

33. At this stage, Mr. Kadam seeks a stay of the operation of this order for a period of two weeks. This application is opposed by Mr. Kane, learned Advocate for the Plaintiffs. Given the fact that this is a final order on the motion, at least as far as the relief relating to infringement is concerned, the operation of this order is stayed till 24th September 2014.

(G.S. PATEL, J.) 22 of 22 ::: Downloaded on - 02/09/2014 23:48:43 :::

Unlock Advanced Research with PRISMAI

Bombay High Court