Calcutta High Court
Century Plyboards (India) Ltd. vs Assam Wood And Allied Products on 20 April, 2005
Equivalent citations: 2005(2)CHN655, 2005(30)PTC604(CAL)
Author: Bhaskar Bhattacharya
Bench: Bhaskar Bhattacharya
JUDGMENT Bhaskar Bhattacharya, J.
1. This first miscellaneous appeal is at the instance of a plaintiff in a suit for declaration and injunction alleging violation of registered trade mark and complaining "passing off" and is directed against Order No. 17 dated January 10, 2005 passed by the learned Judge, 7th Bench, City Civil Court at Calcutta in Title Suit No. 258 of 2004 thereby rejecting an application under Order 39 Rules 1 and 2 of the Code of Civil Procedure filed by the appellant for restraining the respondents from committing breach of trade mark and passing off its goods as that of appellant.
2. The appellant filed the aforesaid suit in the City Civil Court at Calcutta thereby praying for the following relief:
"(i) Declaration that the plaintiff alone is entitled to use the trade mark/word CENTURY in its business of plywood, block board and allied products; Declaration that the defendant shall have no right to use the word CENTURY and/or the word/name CENTURIAN being a derivative and deceptively similar word/mark with CENTURY, in any manner and form whatsoever in relation to plywood, block boards and/or allied products in the course of business, in infringement of the plaintiffs registered trade mark;
(ii) Decree of perpetual injunction restraining the defendant by their proprietor, partners, officers, servants, agents, dealers, stockists, vendors, assigns and each of them from in any way infringing the plaintiffs registered trade mark CENTURY and/or any deceptively similar mark, visually or phonetically or any colorable imitation thereof, in any manner whatsoever by using, advertising, selling, offering for sale, exhibiting for sale plywood, block boards, and/or any goods allied thereto;
(iii) Decree for perpetual injunction restraining the defendant by their proprietor, partners, officers, servants, agents, dealers, stockists, vendors, assigns and each of them from using the word CENTURIAN, and/or logo CENTURIAN, as represented in Annexure 'F' hereto, and/or any deceptively similar mark or any colorable imitation thereof, in any manner whatsoever by affixing, labelling, packaging such mark or marks in respect of plywood, block boards and/or any goods allied thereto with any such mark or marks and taking undue and unfair advantage of the reputation of, or is detrimental to the plaintiffs registered trade mark CENTURY and its distinctive character;
(iv) Decree of perpetual injunction restraining the defendant by their proprietor, partners, officers, servants, agents, dealers, stockists, employees, vendors, assigns and each of them or otherwise howsoever from passing off or attempting to pass off or enabling others to pass off plywood, block boards or allied goods by the use of the mark, word CENTURIAN and/or the logo CENTURIAN or any name/mark/logo confusingly and/or deceptively similar to the mark/logo CENTURY;
(v) Decree of permanent injunction restraining the defendant by their proprietor, partners, officers, servants, agents, dealers, stockists, vendors, assigns and each of them from in any way infringing the plaintiffs copyright involving the logo/artistic work CENTURY mentioned in paragraph 10, and annexed as 'A' to the plaint;
(vi) Accounts of the profits made by the defendant by selling/distributing and/or otherwise dealing in plywood, block boards and allied goods bearing the impugned mark CENTURIAN by way of infringement/passing off;
(vii) Delivery up to the plaintiff by the defendant of affidavit of all goods bearing the impugned mark CENTURIAN in the possession and control of the defendant and all price-lists, copies of invoices and other incriminating documents and advertisements, blocks, dies, stencils, cartons, containers of the impugned goods in possession and control of the defendant and in the possession and control of each of their partner, proprietor, person-in-charge, officers, agents, servants, employees, for destruction;
(viii) Leave under Order 2 Rule 2 of the Code of Civil Procedure;
(ix) An enquiry into damages suffered by the plaintiff and a decree in favour of the plaintiff for such sum as may be found due upon such enquiry;
(x) Such other injunction as would afford adequate relief to the plaintiff;
(xi) Receiver;
(xii) Attachment;
(xiii) Costs;
(xiv) Further or other reliefs."
3. The case made out by the plaintiff is as follows:
(a) The plaintiff is a company incorporated under the Companies Act, 1956 and carrying on business of manufacturing and trading plywood and block boards, particle boards, decorative plywood, decorative laminates, laminates of various kinds and boards, plywood products of different natures in the name of CENTURY which has been derived from the initial of the plaintiffs corporate name and is exclusively associated with the plaintiff company.
(b) The plaintiff in order to identify and distinguish its products from the similar products of other manufacturers and traders, in the course of business, conceived of, originated and got designed a unique mark, to wit, the word 'CENTURY' written horizontally inside two concentric circles in a particular novel artistic manner and has been using the same mark, as a logo/ house mark on every products of the plaintiffs manufacture and marketing since 1993.
(c) By reason of aggressive marketing strategy, making excellent quality of the products through continuous research to upgrade the nature of goods, the plaintiff has been able to create a lasting impression for the principal mark/house mark/trade mark CENTURY in the minds of consumers, in the last 11 years and the name CENTURY has been considered as most prominent and leading mark in India by plywood and allied industries.
(d) By virtue of very extensive use, the same name/mark/logo CENTURY has become denotative and connotative of the plaintiffs business and a precious property of the plaintiff. The plaintiff has also made extensive advertisements and spent several millions of rupees in sales promotion and/or popularizing the trade mark CENTURY in the Indian markets. Reputed personalities like Nawab of Pataudi and others have been employed for sales promotion.
(e) By reason of vast and voluminous use of the word/name/mark CENTURY for over 11 years, uninterruptedly in relation to plywood, block boards products, boards of various kinds, veneers coupled with widespread publicities given to make known and popularise the said mark and logo, and its products thereunder amongst the trade and the public, a common law right has been created in favour of the plaintiff. The plaintiff is, thus, the proprietor of the said trade mark CENTURY and the logo/monogram and is entitled to prevent any person or persons from subsequently using the same and/or any deceptively similar trade mark having close nexus with the plaintiffs well known mark CENTURY and/or logo in respect of same and/or similar description of goods and also from selling or offering for sale such kind of nexus having well known mark CENTURY.
(f) To get statutory protection of the mark and/or logo CENTURY, the plaintiff duly applied for various registrations and has obtained the registration certificates from the Trade Marks Authority, Government of India, after complying with all necessary formalities under the Trade Marks Act, 1999 and the Rules thereunder.
(g) The plaintiff is, thus, vested with the statutory right conferred upon them under Section 28 of the Trade Marks Act, 1999 and entitled to the relief as provided in Section 135 of the said Act, in case of any infringement of their statutory right and/or for passing off of their trade mark/logo CENTURY.
(h) The tremendous goodwill and reputation of the business of the plaintiff earned by using the said mark/logo CENTURY in relation to its plywood products, block boards, Veneer etc. ever since the year 1993 is evident. Prom the fact that in the last 10 years the sales effected by the plaintiffs plywood/block boards products and laminates with the mark CENTURY has gone up to the tune of Rs. 630 crore while the publicity expenses incurred to the extent of Rs. 23 crore is indicative of the popularity and the acceptability of the plaintiffs registered and established trade mark/logo CENTURY in the Indian markets.
(i) The plaintiff recently received complaints from the markets, consumers, traders that inferior quality of plywood and block board products, very similar with the mark/logo CENTURY are being sold in the market and as a result, there is large scale confusion among the consumers and traders had arisen.
(j) On enquiry the plaintiff came to know on 13th November, 2003 that the respondent through their various dealers, stockist had been pushing plywood and block boards product in the market, marked with the name/brand CENTURIAN in identical form, get up and design in different outlets of various parts of the country including those in Calcutta, Delhi and adjoining areas.
(k) It is apparent that the respondent mischievously copied the plaintiffs well known and registered trade mark CENTURY in every details, including the style of presentation in the logo, in order to come close to the plaintiffs reputed trade mark/logo and has been trying to cash in the enviable reputation in the fields of plywood and block boards products. In view of such fact, the plaintiff served a notice upon the respondent by letter dated 14th November, 2003 through its Trade Mark Attorneys asking them to forthwith cease and desist from selling, exposing for sale, possessing for sale, exhibiting for sale, enabling others for sale the plywood, block board products with the logo/name/ mark CENTURIAN in falsification, infringement of the plaintiffs original trade mark CENTURY.
(1) In reply to the said registered notice, the respondent through its partner sent a reply on 25th November, 2003 denying all averments and contentions of the plaintiffs letter. In the said letter respondent admitted that they were using the word CENTURIAN as a trade mark, but refused to comply with the requisitions asked for by the plaintiff. Hence the suit.
4. On the basis of the aforesaid allegations, the appellant filed an application under Order 39 Rules 1 and 2 of the Code of Civil Procedure thereby praying for temporary injunction in terms of the prayer made in the suit.
5. The aforesaid application was contested by the respondents by filing written objection against the prayer of injunction and the objections of the respondent may be summarised thus:
(i) The respondent is a partnership firm having its place of business at village Mukarabpur, Post Udhamgarh, Jagadhri and has been engaged in the business of manufacturing and marketing and selling of wood products such as plywood including decorative, laminated, commercial, waterproof, block boards, flush doors and the like other wood products of all kinds.
(ii) The respondent, amongst others, is continuously using the trade mark CENTURIAN since July, 2002 having a special and distinctive artistic work in respect of above goods. On 28th August, 2002 the respondent filed an application at the Trade Mark Registry Delhi for registering the trade mark CENTURIAN which was pending.
(iii) The respondent along with the use of the said trade mark CENTURIAN is also advertising the aforesaid trade mark through trade business magazines, openly, continuously and extensively since its adoption and due to the original artistic work and distinctive features, the trade mark CENTURIAN as a whole and the products sold by the respondent under such trade mark CENTURIAN is regarded in the market and in the eyes of public at large as a product of high quality and the same is solely associated with the goods of the respondent.
(iv) The said trade mark CENTURIAN is phonetically, structurally and visually distinctively associated exclusively with the respondents and none other since its bona fide adoption by the respondent.
(v) The word "CENTURY" is common to the trade and is also used by others and the trade mark "CENTURIAN" is adopted and used by the respondent. The respondent adopted the trade mark CENTURIAN honestly and bona fide without any intention to take the benefit of reputation or goodwill of other persons in the trade and had been continuously using the same since July, 2002 and the same is phonetically, structurally and visually different from the artistic mark used by the plaintiff as their logo and as such, there is no chance of any confusion among the people of the business world or public and consequently, the allegation of passing off is beyond any question.
(vi) The respondent have been successful in showing that the plaintiff having complete knowledge about the use by the respondent of the trade mark CENTURIAN has suppressed material facts before the Court for the purpose of getting order of injunction.
6. The learned Trial Judge, as indicated earlier, by the order impugned herein, has rejected the application for temporary injunction filed by the plaintiff. While dismissing of such application, the learned Trial Judge came to the conclusion that the word CENTURY has nothing to do with plywood trade. It is the innovative idea of the plaintiff associating the word CENTURY with its trading in plywood along with qualifying adjectives prefixed. According to the learned Trial Judge, after examining the photocopies of the trade mark of both the parties he found that the trading features of both items are distinct and different. He found out several discrepancies in the marks, styles and the colour and according to him, there was no visual or phonetic similarity between the plaintiffs mark and the defendant's mark. The learned Trial Judge further found that the average or ordinary purchasers would be able to know the difference between the two when he would go to the market to buy the said product. It cannot be said, the learned Judge proceeded, that the said two marks have a striking phonetic similarity so as to cause close resemblance. The learned Trial Judge ultimately concluded that there was no reason for coming to the conclusion that there would be confusion in the words, since the words are not similar and are pronounced differently and consequently, rejected the application.
7. Being dissatisfied, the plaintiff has come up with the present appeal.
8. Mr. Bachwat the learned Advocate appearing on behalf of the appellant has contended before this Court that the learned Trial Judge while dismissing the application for temporary injunction did not follow the well-accepted principles which are required to be followed while disposing of this type of an application. Mr. Bachwat contends that the learned Trial Judge totally overlooked the fact that in the suit the plaintiff has made allegation of the violation of both the registered trade mark and passing off. According to Mr. Bachwat once it is established that the plaintiff has been using the registered trade mark from 1993 and the defendant started using the same in the month of July, 2002 and the defendant has not obtained any registration of the mark CENTURIAN, the learned Trial Judge ought to have restrained the defendant from using the said mark simply on the ground that defendant substantially adopted the essential features of the registered mark of the plaintiff. Mr. Bachwat contends that once it is proved that the defendant has adopted the essential features of the plaintiffs mark in its trade mark, the said conduct amounts to infringement of the trade mark. In such a case, Mr. Bachwat continues, the grant of injunction is a matter of course. Mr. Bachwat further submits that it is not disputed by the defendant that plaintiff has huge sale in the market of the same kind of product which the defendant has started manufacturing in the year 2002 and the defendant has also accepted the position that in comparison to the amount of sale of the products of the plaintiff, the defendant has practically not yet been established in the business. In such circumstances, Mr. Bachwat contends, the learned Trial Judge ought to have allowed the application for temporary injunction.
9. The aforesaid contentions of Mr. Bachwat are disputed by Mr. Saha appearing on behalf of the respondent. Mr. Saha contends that it would appear from the visual appearance of the two trade marks that those are different from each other and as such, there was no scope of confusion among the purchasers. Mr. Saha further contends that his client started giving advertisement of their trade mark in the month of January, 2003 in the trade mark magazines and the plaintiff in spite of knowledge of such advertisements, did not take any action till November, 2003 and as such, even if, there is any violation of the alleged trade mark, no injunction should be granted as plaintiff has permitted the defendant to build up his business on the basis of its trade mark. Mr. Saha further contends that the word CENTURY is used by so many industries of the market as would appear from any telephone directory and thus, his client should not be restrained from using the word CENTURIAN which has nothing to do with the word CENTURY. Mr. Saha contends that even the meaning of the word CENTURIAN is different from that of CENTURY. Lastly, Mr. Saha contends that the learned Trial Judge on appreciation of the entire materials on record having refused to grant injunction, this Court in this first miscellaneous appeal should not interfere with such discretion simply because from the self-same materials another view is possible. He, thus, prays for dismissal of the appeal. In support of the aforesaid contentions Mr. Saha places strong reliance upon the following decisions:--
1. In the case of Punjab State Co-operative Supply & Marketing Federation Ltd. v. Sona Spices Pvt. Ltd. reported in 1987 PTC 294.
2. In the case of Kewal Krishan Kumar v. Kaushal Roller Flour Mills Pvt. Ltd., reported in PTC (Suppl) (1)217 (Del).
3. In the case of S.M. Chopra & Sons. v. Rajendra Prosad Srivastava, reported in 1988 PTC 258.
4. Kewal Krishan Kumar v. Rudi Roller Flour Mills (P) Ltd. and Anr., reported in 2003(26) PTC 175 (Del).
5. In the case of Ayushakti Ayurved Pvt. Ltd. and Ors. v. Hindustan Lever Limited, reported in 2004(28) PTC 59 (Bom).
6. In the case of Three-N-Products Pvt. Ltd. v. Amrutha Trading Corporation and Ors., reported in 2003(27) PTC 213 (DB) (Ker).
7. In the case of S. M. D. Chem Ltd. v. Cadbury (India) Ltd., reported in 2000 PTC 397 (SC).
8. In the case of F. Hoffimann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd., reported in AIR 1970 SC 2062.
10. Before considering the respective submissions made by the learned Counsel for the parties, we must, at the very outset, point out that the scope of investigation in an action for infringement of registered trade mark is different from that in case of complaint of passing off. As pointed out by a Bench consisting of three Judges of Apex Court in the case of Durga Dutta Sharma v. N.P. Laboratories, reported in AIR 1965 SC 980, in the former type of cases, once it is established that the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may evade liability if he can show that the "added matters" are sufficient to distinguish his goods from those of the plaintiff.
11. In the case before us filed by the plaintiff, it has alleged both infringement of registered trade mark and passing off and therefore, keeping in view the aforesaid principles laid down in the case of Durga Dutta Sharma (supra), we now propose to consider the present case.
12. The plaintiff has obtained registered trade mark "CENTURY" and there is no dispute that plaintiff has been using such trade mark from 1993 and has sold goods to the tune of Rs. 630 crore and such fact has not been disputed by defendant. The defendant has started selling their products in the name CENTURIAN by which the six syllables, of the word "CENTURY" consisting of seven, had been adopted and in addition to that, three new letters "IAN" have been added as suffix. Phonetically, there is very small difference between the pronunciations of the said two words. At this stage, it will be profitable to refer to the observations of the Supreme Court in the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., reported in 2001 PTC 300 (SC), where the Supreme Court held that in a country like India where there is no single common language, a large percentages of population are illiterate and a small fraction know English, in dealing with a case of this nature, the Court should not lose sight of the fact that the purchasers may have absolutely no knowledge of English language or of the language in which the trademark is written and to whom different words with slight difference in spelling may sound phonetically the same.
13. At this juncture, we may also refer to the decision of the Supreme Court in the case of Corn Product Refining Co. v. Sangrila Food Product Ltd. reported in AIR 1960 SC 142, where the Apex Court while considering the question of deception regarding the words "gluvita" and "glucovita", observed that the question whether two marks are likely to give rise to confusion or not, is a question of first impression. According to the said decision, it cannot be overlooked that if the word is an English word, which to the mass of Indian people is a foreign word, in deciding the question of similarity between two such marks, those are to be considered as a whole and applying that principle to the fact of that case, the Supreme Court held that apart from the syllable "co" in the appellant's mark, the two marks were identical and that syllable was, in the opinion of the Supreme Court, not such as would enable the buyers in our country to distinguish the one mark from the other. The Supreme Court further observed that in deciding such question, the Court should approach it from the point of view of a man of average intelligence and imperfect recollection.
14. If "glucovita" is held to be deceptively similar to qualify "gluvita", we do not find any reason why CENTURIAN should not be held to be deceptively similar to CENTURY. Applying the aforesaid principle laid down by the Supreme Court, we are of the opinion that the additional three syllables "IAN" at the suffix added by the respondent after deleting last syllable "Y" of the word CENTURY, amounts to adoption of the essential features of the trade mark of the plaintiff and thus, a strong prima facie case has been made out when we take into consideration the fact that both are dealing in the same material, viz. plywood and the plaintiff has sold the said goods to the tune more than Rs. 600 crore in the last ten years.
15. Once it is established that a strong prima facie case has been made out in this type of a case, the balance of convenience and inconvenience must be held to be in favour of grant of injunction and it should be presumed that plaintiff will suffer irreparable loss and injury if no injunction is granted.
16. We are not convinced by the submission of Mr. Saha that because the defendant gave advertisement of their trade mark CENTURIAN in the Journals of trade marks in the month of January, 2003 and that the plaintiff did not raise objection till November, 2003, for that reason, we should refuse the prayer for injunction. In the case of Power Control Appliances and Ors. v. Sumeet Machines Pvt. Ltd. reported in 1994(2) SCC 448, the Supreme Court held that acquiescence is sitting by, when another is invading right and spending money on it. It implies positive act; not merely silence or inaction as is involved in laches. The Supreme Court further held that acquiescence must be such as to lead to the inference of a licence sufficient to create a new right in favour of a defendant. If we apply aforesaid principles laid down by the Supreme Court in the case of Power Control Appliances and Ors. (supra) to the fact of this case, we have no hesitation in concluding that the defendant failed to prove any material before this Court to show that there was any positive act on the part of the plaintiff which would amount to licence in favour of defendants to go on with the business by taking the name of CENTURIAN.
17. We now propose to deal with the decisions cited by Mr. Saha.
18. In the case of Punjab State Co-operative Supply & Marketing Federation Ltd. (supra), the Court was considering the question of passing off, in a case, where the trade mark of plaintiff was "Sohna" whereas that of defendant was "Sona Spices". The Court came to the conclusion that those two marks were neither phonetically nor visually similar in their get up, design and colour screen and moreover, the plaintiff was not manufacturing or selling chilly powders for a number of years and thus, according to the learned Court, the plaintiff was not entitled to get an order of injunction. In the case, we are concerned with, not only the case of passing off but also the case of infringement of trade mark is involved where defendant's mark is phonetically similar to that of plaintiff.
We, therefore, find that the said decision cannot help the respondents in any way.
19. In the case of Kewal Krishan Kumar (supra), the Delhi High Court was while considering a case of passing off and infringement in respect of two trade marks "Shakti Bhog" and "Maha Shakti Brand" and according to that Court, there was no striking similarity either phonetical or visual. According to the said Court, there was no striking similarity either visual or phonetic and uncommon prefix denotes a natural mark of distinction and as such, there was no chance of confusion. In our case, the only variation of the defendant's mark is that of using "IAN" by dropping the last syllable "Y" of plaintiff. Therefore, the principle laid down in the said case cannot have any application to the present case.
20. In the case of S.M. Chopra & Sons (supra), a Division Bench of this Court was considering the two trade marks "Raja" and "Maharaja" and according to the Division Bench, those are not deceptively similar having regard to the nature of the products and nature of display of the marks and the fact that the products are not intended to be used by the general public with casual frequency. However, in spite of such finding, the Division Bench, ultimately directed the respondent to give advertisement that they had nothing to do with the product "Raja" and similarly the plaintiffs were also required to make it clear that they had nothing to do with "Maharaja". We, thus, find that the said decision cannot help the respondents in any way.
21. In the case of Kewal Krishan Kumar (supra), the Delhi High Court was considering the similarity of two trade marks "Shakti Bhog" used by the petitioner and "Shiv Shakti" with a Trisul and Damru mark written on it by the defendant. According to the Court, the customers who were using the goods of the parties would find the common word "Shakti" but "Shiv Shakti" along with the devices would certainly make a difference. Moreover, the word "Bhog" was not at all used in the later one. In our view, the said decision cannot applicable to a case where CENTURIAN is used by defendant whereas the plaintiffs registered trade mark is CENTURY.
22. In the case of Ayushakti Ayurved Pvt. Ltd. and Ors. (supra), the Bombay High Court was considering whether the plaintiffs trade mark AYUSH was deceptively similar to AYUSHAKTI and it was held that those were not. We are of the opinion that the difference between the CENTURY and CENTURIAN is very minor in comparison to AYUSH and AYUSHAKTI and as such, the said decision cannot be a guiding factor in deciding the case in hand.
23. In the case of Three-N-Products Pvt. Ltd. (supra), the Kerala High Court was considering the difference between the AYUR and AYUSHI and it was held that those are not phonetically, structurally or visually similar. We think that the said example cannot be set forth as a precedent while considering the case of words CENTURY and CENTURIAN.
24. In the case of F. Hoffimann-La Roche & Co. Ltd. (supra), the Supreme Court was considering whether PROTOVIT was deceptively similar to DROPOVIT and the answer was given in negative. In our view, the word DROPOVIT having commenced with a consonant "D" whereas the word PROTOVIT has started with consonant "P", those were phonetically different and the principles laid down therein cannot have any application to the case of CENTURY and CENTURIAN where the prefix of the two words up to six syllables is the same.
25. We, thus, find that the decisions cited by Mr. Saha cannot help his client in any way.
26. After taking into consideration of the aforesaid fact we are of the view that, the learned Trial Judge did not take into consideration the aforesaid salient features of this case and as such, erred in law in refusing the prayer for injunction notwithstanding the fact that the plaintiff has proved a strong prima facie case of breach of registered trade mark at the instance of the defendants. We are unable to appreciate the observation of the learned Trial Judge that when a purchaser will go to the market he would easily distinguish the one from the other when both will be placed before him. The learned Judge did not conceive of a situation if the seller does not show the plaintiffs goods but places only the defendant's goods and whether in such circumstances, a purchaser of imperfect recollection willing to purchase "CENTURY" on the recommendation of his neighbour would be deceived by the mark "CENTURIAN" of the defendant and would purchase the same by treating it to be "CENTURY".
27. We, thus, set aside the order impugned and pass an order of injunction restraining the defendants, their partners, officers, servants, agents, dealers, collectors, vendors, assigns and each of them from any way infringing the plaintiffs registered trade mark CENTURY and/or using any deceptive similar mark or any colour thereunder in any manner by using, advertising, offering for sale, exhibiting for sale of plywood, boards and any goods of those nature till the disposal of the suit.
28. In the facts and circumstances, there will be, however, no order as to costs.
Rajendra Nath Sinha, J.
29. I agree.