Delhi High Court
Jaideep Mohan vs Hub International Industries & Anr on 5 April, 2018
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 5th April, 2018.
+ CS(COMM) No.758/2016
JAIDEEP MOHAN .... Plaintiff
Through: Mr. R.K. Jain & Mr. Devanshu Jain,
Advs.
Versus
HUB INTERNATIONAL INDUSTRIES
& ANR. ......Defendants
Through: Mr. Sushant Singh with Mr. Harsh
Vardhan, Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. The plaintiff has instituted this suit for permanent injunction
restraining the two defendants namely Hub International Industries and NV
Distilleries & Breweries Pvt. Ltd. from manufacturing, bottling, selling,
offering for sale or otherwise dealing in alcoholic beverages including
premium whiskey blended with scotch, gin, rum, vodka, wine and brandy
under the trade mark „GOLDSMITH‟ averring the same to be
similar/deceptively similar to the plaintiff‟s registered trade mark
„BLACKSMITH‟ and for ancillary reliefs of recovery of damages,
destruction, etc.
2. The suit came up first before this Court on 10th June, 2016 when
though summons of the suit were ordered to be issued but no ex parte ad
interim order sought, granted. The defendants, on service of summons, have
CS(OS) 758/2016 Page 1 of 14
filed a joint written statement and to which a replication has been filed by the
plaintiff.
3. The suit came up before this Court on 8 th November, 2016, for
framing of issues and for hearing of the application for interim relief, when
after hearing the counsels it was felt that there is no need to frame issues and
relegate the parties to trial, because the two words „BLACKSMITH‟ and
„GOLDSMITH‟ have definite meaning which is understood by most of the
population of the country, even those not conversant with english language
and thus no case for infringement of trade mark was made out particularly
when the counsel for the plaintiff, on enquiry, informed that more than 90%
of the sales of the plaintiff are through the Defence Canteen and the Police
Canteen sales whereto and wherefrom could definitely be not said to be
affected by the commonality of „SMITH‟ in the two words. It was however
proposed, that by way of settlement, the possibility of the defendant
changing the shape of its bottle and its packaging / carton, could be explored
and for which the counsel for the defendants stated that the defendants may
be agreeable with effect from the next date of renewal of the excise licence.
On request of the counsel for the plaintiff, the hearing was adjourned to 9th
November, 2016 to enable him to obtain instructions.
4. On 9th November, 2016, the counsel for the plaintiff stated that he had
instructions to argue on merits and no settlement was possible. The counsels
were heard further, not only on the application for interim relief but also on
the need if any for framing of issues and on the aspect of disposal of suit
under Order XIIIA of CPC, the suit being a commercial suit, and orders
reserved.
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5. The necessary pleadings in the aforesaid context may be noticed.
6. It is the case of the plaintiff in the plaint,
(i) that the plaintiff, carrying on business as sole proprietor in the
name and style of M/s Mayfair Enterprises, of manufacturing and
marketing of alcoholic beverages, in the year 2011, coined and
adopted "an arbitrary and distinctive trade mark" „BLACKSMITH‟ in
respect of alcoholic beverages and on 24th October, 2011 obtained
registration thereof in Class 33 of Schedule IV of the Trade Marks
Act, 1999;
(ii) that the plaintiff, from an advertisement published in the Trade
Marks Journal on 23rd November, 2015, learnt of the defendant no. 1
having applied for registration of trade mark „GOLDSMITH‟ in Class
33 of Schedule IV of the Trade Marks Act and claiming user thereof
since 1st January, 2014;
(iii) that the trade mark „GOLDSMITH‟ is deceptively/confusingly
similar to the registered trade mark „BLACKSMITH‟ of the plaintiff,
particularly when both are in respect of the same class of goods;
(iv) that the plaintiff has opposed registration of the mark of the
defendant no.1; enquiries of the plaintiff revealed that the defendant
no. 1 had started manufacturing under the said mark only in or around
June, 2016; and,
(v) that the trade mark adopted by the defendants is visually,
structurally and phonetically similar to the registered trademark of the
plaintiff.
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7. The defendants have contested the suit pleading,
(i) that the plaintiff has concealed that the plaintiff‟s application for
registration of mark „SMITH‟ in Class 33 of Schedule IV is still
pending;
(ii) that the plaintiff thus cannot claim monopoly over the word
„SMITH‟;
(iii) that there are many entities which have been using the mark
„SMITH‟ and „BLACKSMITH‟ since prior to and/or along with the
plaintiff;
(iv) that „OLD BLACKSMITH‟ whiskey has been in existence in
United States since much prior to adoption of the mark
„BLACKSMITH‟ by the plaintiff;
(v) that the defendant no.2 is merely a distiller, acting for and on
behalf of defendant no.1 and the trade mark „GOLDSMITH‟ belongs
to defendant no.1;
(vi) that the defendants commenced manufacturing alcoholic
beverage under the mark „GOLDSMITH‟ in 2014;
(vii) that the marks „BLACKSMITH‟ and „GOLDSMITH‟ are
conceptually, structurally and visually different;
(viii) that the suit is barred by Section 17 of the Trade Marks Act,
1999, being for infringement of part of the mark;
(ix) that the words „BLACK‟ and „GOLD‟ are totally different;
CS(OS) 758/2016 Page 4 of 14
(x) that the defendants will take steps for cancellation of
registration of the trade mark of the plaintiff;
(xi) that the plaintiff is selling his whiskey in the territories of Delhi,
Jammu & Kashmir, Bihar and Punjab only; the defendants have been
selling their whiskey in the territories of Delhi, Haryana, Punjab,
Himachal Pradesh, Uttaranchal, Rajasthan, West Bengal, Jammu and
Kashmir and Madhya Pradesh;
(xii) that the bottle of whiskey of the plaintiff sells at Rs. 382/- and
the bottle of whiskey of the defendants sells at Rs. 412/-;
(xiii) that the market penetration of the defendants is much higher that
the plaintiff‟s;
(xiv) that a Blacksmith is a metal smith who creates objects from
wrought iron or steel, by forging the metal using tools to hammer,
bend and cut;
(xv) that a Goldsmith means a metal worker who specializes in
working with gold and other precious metals;
(xvi) that the words „Blacksmith‟ and „Goldsmith‟ are ordinary
dictionary words which are never confused by any ordinary person
and are separately identified by English knowing persons;
(xvii) that there are differences in lay-out, get-up and packaging of
plaintiff‟s product vis-à-vis defendants‟ product;
(xviii) that the plaintiff‟s product is sold in the packaging of grey
colour with background of black and white wherein the words
CS(OS) 758/2016 Page 5 of 14
MAYFAIRS along with BLACKSMITH are prominently written on
the label;
(xix) that on the contrary, the defendant‟s product „Hub
GOLDSMITH‟ is a bottle which is sold inside the carton/case which is
called as canister with dark brown and golden colour background
wherein the word „GOLDSMITH‟ is written along with the pictures of
crown prominently displayed thereupon along with the expression
"Rare Premium Whiskey";
(xx) that the shape of the bottles of the plaintiff and the defendants is
also different;
(xxi) that the cap of the defendants‟ bottle bears the mark HUB which
is prominently written along with the trade mark „GOLDSMITH‟;
(xxii) that there is a separate and distinct process of making purchase
by paramilitary forces wherein tenders are floated by their
headquarters and battalions area-wise, after undergoing rigid testing
and thereafter approvals are granted for quality, pricing and other
factors; thus the manner of purchase of alcoholic products of
paramilitary forces is totally distinct from the ordinary retailing in
civil markets;
(xxiii) that the plaintiff‟s and defendants‟ product cannot be confused
owing to their distinct customer bases;
(xxiv) that both the plaintiff and the defendants have been competing
with each other while supplying their goods to canteens of
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paramilitary forces where product of plaintiff as well as defendant
no.1 are available; and,
(xxv) that the plaintiff was thus aware of the defendants‟ product for
more than one year prior to the institution of this suit and the suit is
barred by delay and latches.
8. Replication filed by the plaintiff merely denies the contents of the
written statement.
9. The counsel for the plaintiff has argued,
(i) that the possibility of even 1% of the customers being deceived
is enough to entitle the plaintiff to injunction;
(ii) that the purchasers do not know English language and will be
deceived and confused by the two marks;
(iii) reliance was placed on Amritdhara Pharmacy Vs. Satya Deo
Gupta AIR 1963 SC 449 to contend that when confusion between
„Amritdhara‟ and „Lakshmandhara‟ has been held to be possible,
similarly, there can be confusion between „BLACKSMITH‟ and
„GOLDSMITH‟;
(iv) reliance was placed on Midas Hygiene Industries (P) Ltd. Vs.
Sudhir Bhatia 2004 (28) PTC 121(SC) holding that in cases of
infringement, injunction must follow and mere delay in bringing
action is not sufficient to defeat grant of injunction (interim injunction
restraining use of „Magic Laxman Rekha‟ by the defendant owing to
the registered trade mark „Laxman Rekha‟ of the plaintiff, was
granted);
CS(OS) 758/2016 Page 7 of 14
(v) reliance was placed on Kirorimal Kashiram Marketing &
Agencies Pvt. Ltd. Vs. Sita Chawal Udyog Mill 2010 (44) PTC 293
(Del) (DB) where injunction restraining use of the mark „Golden
Deer‟ on the ground of the same being deceptively similar to „Double
Deer‟, was granted (both marks were with respect to rice);
(vi) reliance was placed on Mohit Kumar Varshney Vs. Girraj
Food Products Hathras 2009 (41) PTC 159 (All) where the mark
„Raja Chaudhary‟ was held to be deceptively similar to „Chacha
Chaudhary‟ (both for namkeen products);
(vii) reliance was placed on Five Star Healthcare P. Ltd. Vs. Tara
Chand Jadwani 2011 (47) PTC 184 (Del) where applying the test of
„essential features‟, injunction against use of mark „6 STAR‟ was
granted at the instance of the proprietor of the mark „5 STAR‟;
(viii) that from the excise licence of the defendants, it is clear that the
defendants commenced manufacturing only in April, 2015; and,
(ix) that in Amar Singh Chawal Wala Vs. Shree Vardhman Rice
and Genl. Mills ILR (2009) 6 Del 399 similarity was also found in
„Lal Qilla‟ and „Hara Qilla‟, both in relation to rice.
10. Per contra, the counsel for the defendants argued,
(i) that the reliance placed by the counsel for the plaintiff on Amar
Singh Chawal Wala supra is of no avail since the word „Qilla‟ had no
correlation to rice;
(ii) same is the position of „Golden Deer‟ and „Double Deer‟;
(iii) that „SMITH‟ is not the predominant part of the trade mark;
CS(OS) 758/2016 Page 8 of 14
(iv) „Smirnoff‟ and „Brisnoff‟ in Diageo North America, Inc. Vs.
Shiva Distilleries Limited 2007 (35) PTC 610 (Del) were not held to
be similar or deceptively similar;
(v) both plaintiff and the defendants are selling to defence canteens
where purchase is by way of tenders;
(vi) that the words „Blacksmith‟ and „Goldsmith‟ are taught to
children in nursery class with photographs;
(vii) reference was made to Delhi Press Patra Prakashan Ltd. Vs.
Diamond Pocket Books (P) Ltd. (1992) 46 DLT 423 where
„Grahlakshmi‟ and „Grahshobha‟ were held to be not confusing or
similar;
(viii) that at the time of Amritdhara judgment supra, Section 17 of
the Trade Marks Act did not exist as it does now;
11. The counsel for the defendants has also given a synopsis of
submissions along with copies of as many as 26 judgments and which were
not referred to at the time of hearing and since the written submissions and
the said judgments have been taken on record, the need to burden this
judgment with contents thereof is not felt.
12. The counsel for the plaintiff, in rejoinder, contended that, each case
has to be decided on its own facts and „Grahshobha‟ and „Grahlakshmi‟ were
held to be not similar owing the customer base thereof being an educated
class and which cannot be said for the customer base of the product of the
plaintiff and the defendants.
CS(OS) 758/2016 Page 9 of 14
13. The plaintiff has not made any averments in the plaint, of similarity of
packaging and shape of the products of the plaintiff and defendants and has
not claimed any relief in that respect. I may, however record that from the
documents filed by the plaintiff himself, there can be no confusion between
the two products on account of packaging or shape of the bottle/container in
which the two sell their products.
14. Though the judgments cited by the counsel for the plaintiff, relating to
Amritdhara - Lakshmandhara, Lal Qilla - Hara Qilla, Golden Deer - Double
Deer, Raja Chaudhary - Chacha Chaudhary, 5 STAR - 6 STAR may at first
blush appear to convey that similar injunction has to follow in the case of
BLACKSMITH and GOLDSMITH also, as claimed by the plaintiff but do
not dislodge the prima facie view expressed on 8th November, 2016 and as
communicated to the counsels in the order of that date mentioned above.
There are material differences between the said judgments and
BLACKSMITH - GOLDSMITH.
15. The marks Amritdhara - Lakshmandhara, Lal Qilla - Hara Qilla,
Golden Deer - Double Deer, Raja Chaudhary - Chacha Chaudhary, 5 STAR -
6 STAR comprised of two different words, each of which had a separate
meaning. However, BLACKSMITH and GOLDSMITH do not comprise of
two separate words (though can be broken into BLACK and SMITH and
GOLD and SMITH) and are both one word and which word has a meaning
of its own, distinct from the meaning of the two parts in which they can be
broken. The purpose/role of a trade mark, in relation to goods/services which
are being manufactured/sold/provided by a large number of
manufacturers/suppliers/providers, is to enable the consumer thereof, if has
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liked or enjoyed the product of one manufacturer/supplier and is desirous of
repeating the experience, to remember/recall the product of the same
manufacturer/supplier to be able to identify it among plethora of choices
available in the market. A consumer of the products of the plaintiff and
defendants is likely to remember the said products by the meaning thereof
i.e. of the composite word i.e. BLACKSMITH and GOLDSMITH which
translate, in hindi language to Lohar and Sunar respectively. The trade marks
of the plaintiff and the defendants are unlikely to be remembered by
breaking each of them into two parts i.e. Black and Smith or Gold and Smith.
16. Merit is also found in the contention of the counsel for the defendants
that the words BLACKSMITH and GOLDSMITH are such words of English
language which a person not habituated to reading or speaking the English
language is also likely to identify with and I may add that the same are
taught in elementary school with pictorial depiction. It is highly unlikely that
a consumer of alcoholic beverage in the Hindi speaking belt would confuse
Lohar with Sunar.
17. I may mention that I have in Allied Blenders & Distillers Private
Limited Vs. Shree Nath Heritage Liquor Private Limited 2014 SCC OnLine
Del 3412 held Collectors Choice to be deceptively similar to Officers
Choice, again in the context of alcoholic beverages. However, the reason
which prevailed in the said judgment and the view wherein was upheld by
the Division Bench in Shree Nath Heritage Liquor Pvt. Ltd. Vs. Allied
Blender & Distillers Pvt. Ltd. (2015) 221 DLT 359 was that the idea
conveyed by the two marks was a person in authority, with both „Officer‟
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and „Collector‟ denoting the same. Here, as aforesaid, the idea conveyed is
entirely different.
18. Supreme Court in Amritdhara judgment itself observed that a large
number of decisions relating to use of composite words were cited before it
but held that no useful purpose will be served by referring to them as each
case must be decided on its own facts. What prevailed to grant injunction in
that case was that considering the nature and use of the product and
consumers thereof, the ideological differences between Amritdhara and
Lakshmandhara were unlikely to be of relevance in recall value and the
consumer likely to go more by the similarity between the two. Not only it is
not so here, for the reasons aforesaid, but the Indian consumer has also
evolved in the last nearly sixty years since the said judgment with the advent
of advertising, education and awareness.
19. The reason for grant of injunction in the Laxman Rekha judgment was
that the defendant was earlier working with the plaintiff and his adoption of
„Magic Laxman Rekha‟ was found to be dishonest. The reason which
prevailed for grant of injunction in Golden Deer judgment was that the word
„deer‟ was a prominent part of mark of plaintiff and had no connection or
correlation to the product i.e. rice and was the distinguishing and essential
feature of the mark. Same was the reason in the 5 STAR judgment. None of
the said reasons apply to the facts of present case.
20. Having found so, I have wondered whether in the facts aforesaid, this
suit is to be put through the rigmarole of framing of issues and recording of
evidence. I am of the view that it is not as if every civil suit necessarily has
to be carried through the said process. It has been held in Dr. Zubair Ul
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Abidin Vs. Sameena Abidin (2014) 214 DLT 340 (DB) that suits which are
doomed to fail and of which there is no chance of any success should be
dismissed at whatever stage the Court finds it to be so. In relation to passing
of suits also, it has been held in Camlin Private Limited Vs. National Pencil
Industries AIR 1986 Del 444 that the suit can be dismissed in limine. In fact,
in Amritdhara judgment itself, the Supreme Court held that the Trade Marks
Act does not lay down any criteria for determining what is likely to deceive
or cause confusion and therefore every case must depend on its own
particular facts and the value of authorities lies not so much in the actual
decision as in the tests applied for determining what is likely to deceive or
cause confusion. Similarly in Mahendra & Mahendra Paper Mills Ltd. Vs.
Mahindra & Mahindra Ltd. (2002) 2 SCC 147 followed by the Division
Bench of this Court in Larsen & Toubro Limited Vs. Lachmi Narain
Trades (2008) 149 DLT 46, it was held that whether there is a likelihood of
deception or confusion arising, is a matter for decision by the Court and no
witness is entitled to say whether one mark is likely to deceive or cause
confusion. It is thus felt that allowing the parties to examine self-serving
witnesses would not change the position inasmuch as this Court thereafter
also will be required to form its own opinion and for which all the requisite
material is already available.
21. I may, however, mention that the judgment of summary dismissal in
Bright Enterprises Private Limited Vs. MJ Bizcraft LLP 2016 SCC OnLine
Del 4421 referred to in order dated 8th November, 2016 was set aside by the
Division Bench in the judgment reported in Bright Enterprises Pvt. Ltd. Vs.
MJ Bizcraft LLP (2017) 236 DLT 295 (DB) and the suit remanded for
decision after trial. Reference may however be made to
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Godfrey Philips India Ltd. Vs. P.T.I. Pvt. Ltd. 2017 SCC OnLine Del 12509
where this Court on a similar finding, dismissed the suit for infringement and
passing off summarily.
22. I am thus of the opinion that the present suit is not required to be put
through the rigmarole of trial, when no case of infringement or passing off is
found at this stage alone.
23. Resultantly, the present suit is also dismissed. However, in the facts,
no costs.
Decree sheet be drawn up.
RAJIV SAHAI ENDLAW, J.
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