Delhi High Court
M/S Girnar Food & Beverages vs M/S Godfrey Phillips India Ltd. on 19 March, 2001
Equivalent citations: 90(2001)DLT839, 2001(2)RAJ289
Author: Mukul Mudgal
Bench: Mukul Mudgal
ORDER Mukul Mudgal, J.
1. This is an appeal against the order of learned Single Judge dated 23rd June, 1997, passed in IA.6973/96, an application under Order 39 Rules 1 & 2 CPC, filed by the plaintiff-M/s Godfrey Phillips India Ltd., and IA.7896/96, an application under Order 39 Rule 4 CPC, filed by defendant-M/s Girnar Food & Beverages Pvt. Ltd.
2. By the said order impugned in the present appeal learned Single Judge allowed IA.6973-96 and dismissed IA.7896/96 consequent on finding that a strong prima facie case was made out by the plaintiff. The learned Single Judge ordered that the defendant be injuncted from manufacturing, selling, offering for sale or distributing tea with the trademark SUPER CUP or any other trade mark deceptively similar thereto.
3. The plaintiff's/respondent-M/s Godfrey Phillips India Ltd.'s(hereinafter referred to as 'Godfrey Phillips') case set out in the plaint is as under:
M/s Godfrey Phillips carries on business of manufacturing and selling various brands of tea. Since 1988 a new adopted brand SUPER CUP was advertised and marketed by them and for the said purpose they incurred large expenditure. Their expenditure has progressively increased from Rs.27 lacs in 1988-89 to Rs.285 lacs in the year 1995-96. Similarly the sale figures also increased in this period from Rs.13 lacs to Rs.1,898 lacs and the total quantity sold from 23 tons to 2184 tons. M/s Godfrey Phillips came to know in December, 1995 that defendant/appellant-M/s Girnar Food & 'Girnar Food') was advertising and offering for sale by using packages bearing similar or deceptively looking trademark SUPER CUP TEA by wrongfully and dishonestly copying and adopting Godfrey Phillips's trademark. M/s Girnar' Food had attempted to derive unfair benefit from M/s Godfrey Phillips' goodwill and reputation gathered from the superior quality, goodwill and reputation pertaining to the trademark SUPER CUP. On January 11, 1996, M/s Godfrey Phillips issued a cease and desist notice to M/s Godfrey Phillips issued a cease and desist notice to M/s Girnar Food but on the defendants declining to comply with the requisition in the said notice, the present suit was filed wherein an ex-parte ad-interim injunction was granted in favor of M/s Godfrey Phillips on 2nd August. 1997.
4. The defendant/appellant-M/s Girnar Food in defense by its written statement pleaded that the plaintiff's application for registration of the trade mark SUPER CUP TEA CITY LABEL with the device of CUP and SAUCER advertised in the Trade Mark Journal No.1117 of 16.12.1995 bore a disclaimer by M/s Godfrey Phillips in respect of the words "SUPER CUP" and the device of CUP and SAUCER. There was material concealment of the disclaimer issued by M/s Godfrey Phillips in its plaint and this material concealment and misrepresentation of facts disentitled the plaintiff to the grant of the equitable relief of injunction. The said disclaimer advertised on 16.12.1995 disentitled the plaintiff to claim monopoly in the use of trade mark SUPER CUP. The trade mark of M/s Godfrey Phillips was TEA CITY and not SUPER CUP. The predecessor of the defendant, M/s Shah Shantilal & Co. had used the trade mark GIRNAR with the particular colour scheme and device in respect of tea since 1975 till 1982-83 and GIRNAR TEA was a successor to M/s Shah Shantilal & Co. with effect from 1993-94. The trade mark GIRNAR was registered after due advertisement on 1.6.1987. The sale figures of the products were given since the year 1974-75 and in particular in the year 1993-94 to 1995-96 goods worth Rs.1.04 crores, Rs.46 crores and Rs.68 crores respectively were sold by the defendant. That due to the superior quality and the exports of tea by the defendant, merit certificates had been awarded to the defendant by the Government of India in the year 1992-93 and 1994-95. In July, 1995, the defendant started selling their brand of superior quality of tea under the brand name SUPER CUP TEA with the device of CUP and SAUCER under the trade mark GIRNAR. That the SUPER CUP was not a trade mark of the plaintiff. The words SUPER CUP was inherently incapable of distinguishing the goods of M/s Godfrey Phillips as words were descriptive in nature, common to the trade and laudatory. The plaintiff and failed to establish that SUPER CUP and become exclusively associated with their goods and was not an essential feature of the plaintiff's trade mark TEA CITY LABEL. The defendant's trademark was GIRNAR and SUPER CUP TEA was their brand name which was used Along with their registered trade mark GIRNAR and it is the use of GIRNAR and other features which distinguishes their goods from those of the plaintiff's using SUPER CUP.
5.In the replication while reiterating the contents of the plaint and filling supporting affidavits and documents, the plaintiff did not deny the disclaimer issued by them for the words SUPER CUP but pleaded that in an action for passing off, the plea of disclaimer qua registration is of no relevance.
6. The learned Single Judge recorded the following findings:-
(a) That the legal position is that when the trade mark consists of words or device descriptive or laudatory of the goods prima facie not distinctive in relation to the goods to which it are applied no right of property can be said to have been acquired in the trademark so as to entitle the holder to seek restraint on others from the use of it on similar goods. The words which are descriptive of goods are not prima facie considered distinctive. It is required to be established by evidence that the mark as a result of sufficient use has became distinctive and come to denote the goods of the trader using it and none else. Consequently the length of the user is a determinative factor for the mark to become distinctive. Once it is established that the defendant's action will lead to passing of his goods as that of the plaintiffs, it can be assumed that the natural consequences of the defendant's action would cause damage to the plaintiff's business;
(b) That the mark SUPER CUP is prominently displayed in the plaintiff's product marketed under the umbrella mark 'TEA CITY' in capital letters over a circle which contains a cup and saucer on a triangular board and 'TEA CITY' does not occupy such a prominent position. Affidavits averring the purchase of SUPER CUP by the dealers have been filed by the plaintiff ordering the tea as SUPER CUP brand tea;
(c) That the plaintiff's trade mark is SUPER CUP and SUPER is a laudatory word and does not have secondary meaning;
(d) That however when the mark Super is used in conjunction with the word Super is used in conjunction with the work 'cup' both the words have to be considered as a whole and not separately. Words like SUPER TASTE, SUPER FLAVOUR, SUPER TEA, SUPERFINE TEA, SUPER QUALITY TEA may have direct reference to the character or quality of tea but these words cannot have a secondary meaning even by long user. However, the words SUPER CUP have no such direct reference to the character or quality of tea and any indirect reference will not make it a laudatory word or incapable of having a secondary meaning and this mark cannot be said to be a purely laudatory or descriptive one;
(e) That even if there is an indirect reference to the quality or character of the goods the mark is capable of acquiring a secondary meaning by its use by traders as well as customers/public;
(f) That material on record prima facie shows that the plaintiff has been selling tea under the brand name of SUPER CUP with the device of cup and saucer under a umbrella mark 'TEA CITY' since 1988 and there have been substantial sales and substantial amount spent on advertising by the plaintiff;
(g) That the trademark SUPER CUP identifies the goods of the plaintiff;
(h) That the defendant's own case was that from 1975 till July, 1995 goods were sold by them under the trade name of Girnar when the work 'Super Cup Tea' and the device of cup and saucer was added alongside the trade mark Girnar;
(i) That no plausible explanation was given from the defendant's side for adopting SUPER CUP with the device of cup and saucer;
(j) That the basic features of the two marks have deceptive similarities or likely to consumers/customers and the trade;
(k) That the defendant cannot be said to have acted honestly in the absence of a plausible explanation;
(l) That it is a reasonable inference that the sole object of the defendants is either actually misleading the public or taking undue advantage of the goodwill in the trade of the plaintiff;
(m) That the defendant's action are calculated me lead persons to believe that the goods of the defendant are the goods of the plaintiffs;
(n) A strong prima facie case has been made out by the plaintiff and the balance of convenience is also in favor of the plaintiff. Simultaneous use by Godfrey Phillips & M/s Girnar Food of the mark SUPER CUP is bound to lead to confusion in the trade & cause irreparable loss to the business and goodwill of the plaintiff. Plaintiff was using the trade mark since 1989 and defendant started using it since July, 1995;
(o) That the defendant had been using Girnar for the last 20 years and no irreparable injury is going to be caused to them by the injunction and restraining them from using SUPER CUP accordingly.
7. In view of the above findings the injunction was granted as prayed for by the plaintiff by allowing IA.No.6973/96 and dismissing IA.No.7896/96 filed by the defendant for vacating the stay.
8. Learned Counsel for M/s Girnar Food, Mr. T.N. Daruwala has assailed the aforesaid judgment of the learned Single Judge dated 23rd June, 1997 on the following pleas:
(a) M/s Godfrey Phillips suppressed material facts by not disclosing that a disclaimer was issued in respect of the word "SUPER CUP" and the device of Cup and Saucer. The notice given by M/s Godfrey Phillips to M/s Girnar Food did not disclose the Godfrey's trade mark "TEA CITY" nor was the disclaimer of the SUPER CUP disclosed and a claim was made in the said notice of exclusive rights of the plaintiffs for use of SUPER CUP TEA. Godfrey Phillips had made a false statement that the SUPER CUP which had been applied for registration whereas in fact the entire TEA CITY label with words "SUPER CUP" was applied for. No reply was received from the plaintiff with particulars for registration of SUPER CUP as was asked for by the defendant. Another application No.712036 was filed on 19.4.1996 by applying for SUPER CUP per se which fact was also suppressed and only disclosed in the affidavit filed in appeal.
(b) Then the ex-parte order which the learned Single Judge passed on 23rd June, 1997 proceeded on the presumption that the plaintiff's mark is SUPER CUP. The reference to the umbrella mark of TEA CITY was not made anywhere in the cease and desist notice or in the plaint or application for interim injunction. The plaint or the interlocutory application also did not mention that the trade mark of Girnar Food was in fact GIRNAR rendered prominently and not SUPER CUP TEA.
(c) The following admissions were made by the plaintiff/respondent:
(i) Plaintiff had admitted that the word SUPER is common to the tea trade and there is no objection by the respondents to the use of word SUPER by the appellant or the words "SUPER QUALITY TEA". The objection of the respondents is to use of the word SUPER in conjunction with CUP, even though no monopoly in word SUPER or Cup is claimed. The word SUPER is laudatory of the Cup and not tea. SUPER CUP, therefore, is an invented expression. Godfrey Phillips have admitted in appeal that the word SUPER CUP is laudatory of the cup and SUPER CUP is not an invented expression and if SUPER CUP was an invented expression, there is no explanation why another application was filed for SUPER CUP on 19.4.1996.
(ii) The learned Single Judge erred in holding that the plaintiffs' trade mark was SUPER CUP. That the trade mark of the plaintiff is Tea City Label with the descriptive words "SUPER CUP" and SUPER.
(iii) The trade mark of the defendant is not SUPER CUP but GIRNAR with device of snow covered mountain and with the descriptive words SUPER CUP TEA.
(iv) Neither the plaintiff nor defendant are thus entitled to claim proprietory rights in the use of the wholly descriptive and laudatory words "SUPER CUP TEA". The plaintiffs' tea in fact is sold as "Tea City Sup." or "Tea City Super Cup" and not as "Super Cup" per se and learned Single Judge erred in not considering this fact.
(d) The findings of the learned Single Judge are flawed as the rival GIRNAR label and Tea City label were not compared as a whole but only the descriptive word SUPER CUP was compared by disregarding the well settled principles of comparison. In this connection the learned counsel has relied upon S.M. Dyechem Ltd. Vs Cadbury (India) Ltd. 2000 PTC. 297 (S.C.); Malted Milk Case reported as 1916 (32) RPC 1 and Amrithdhara Vs Satya Deo Gupta where it has been held that the whole picture has to be considered by comparing the totality of the marks.
(e) The learned Single Judge erred in holding that SUPER CUP was prominently displayed. However, the learned Single Judge has totally ignored the fact that the word 'GIRNAR', used by the defendant/Girnar Food, is at least three times larger than that the rendering of the words Super Cup Tea. Since the marks are circulated side by side in the market and probable deception is urged, the fact that nobody has been shown to be misled is very material unless it has been satisfactorily explained by the respondent. The learned Single Judge has ignored the dictum laid down in Kerly in Paras 17.29, Page 457 to the effect that a Judge must be guided in all these matter by the evidence before him and when the evidence that there is no confusion is material which the Judge must take into account.
(f) the learned single judge wrongly arrived at a finding that the word SUPER is a laudatory word and the words SUPERTASTE, SUPER FLAVOUR, SUPER TEA, SUPERFINE TEA and SUPER QUALITY TEA have a direct reference to the character or quality of tea but these words might have no second meaning even by the long user. If Super cannot have and would not acquire any secondary meaning then the user of the word SUPER CUP even separately or together cannot make it acquire secondary meaning in so far as tea is concerned and in this view of the matter SUPER CUP undoubtedly has a direct reference to the character or quality of tea and is descriptive and laudatory of tea and cannot have any secondary meaning even by long user.
(g) That the Cup has in fact long been associated with tea and in English language, cup is a synonym for a cup of tea. He has relied upon several extracts from "THE BOOK OF TEA" in one of which the Poet William Cowper describes the cup of tea "the cups that cheer but not inebriate".
(h) He has also relied on following extract to demonstrate why cup is a synonym for tea:-
"It is perhaps best symbolized by the "early morning cuppa" sipped in bed on awakening, prior to washing and dressing."
"She assumed me that Monsieur le Landgrave drank forty cups every morning."
(i) It is thus submitted that the cup in English language is synonym with tea and consequently the word such as 'Cup' or 'Super Cup' refers to the tea and not to the cup. Word 'Super Cup' cannot acquire secondary meaning under any circumstances or for any amount of user and in any event the appellant is a prior user for the word 'Super' being used by it since 1979 and the device of Cup from 2.2.1979 for HILTOP RED CUP and device of Cup of GIRNAR green pouch from 23.21983.
(j) The defendants/appellants used the word SUPER of the plaintiffs/respondents for tea many years prior to the date when the plaintiffs came on to the scene. Learned counsel for the appellant has relied upon the device of cup and the user of the word SUPER by it much prior to the user of the plaintiff/respondent.
(k) The learned Single Judge erred in holding that no plausible explanation was given by the defendants as to why it had adopted the device of cup & saucer and adopted the SUPER CUP in July, 1995. The appellants have proved they still are using the word "SUPER" in relation to loose tea and 'Cup' in relation to their registered trade marks and they had given disclaimer of CUP and 'steam' much before the plaintiffs came into the market. There was no grievance in respect of Cup and Saucer, raised in the plaint by the plaintiffs. M/s Girnar Food have clearly given an explanation of adoption by Harendra/s affidavit in reply to Para 4(b) Pages 12 A & 12 B and para 8 at page 18 wherein it was averred that Girnar added not only the words Super Cup but also the words Super Cup of tea. The word 'Super Cup' was used to describe the super quality of their tea. But a mere look at the appellant's carton of GIRNAR Tea shows that these words were used in a laudatory/descriptive sense. The word 'Super Cup Tea' is written in small white letters and below those words in English and Devnagri appear the words "specially blended super quality tea with bright red liquor, strong taste, delightful aroma."
(l) In this connection apart from several cash memos, learned counsel for the appellant has relied on the dictionary meaning of SUPER and photographs of cartons of tea having words "SUPER" and the device of Cup and Saucer. He has also relied on Catalogue of Tea Auctioneers to prove that tea manufacturers used the expression "SUP" as an abbreviation for "Super".
(m) Learned counsel has submitted that originally the plaintiffs' tea was sold as "Tea City Sup." or "Tea City Super Cup" and not " SUPER CUP" per se. In this respect he has relied upon the following cash memos:
"Page 217 - Ex.H-1 - Cash memo of Super Bazar of Delhi.
Page 218 - Ex.H-2 - Cash memo of Neeraj Stores of Delhi.
Page 219 - Ex.H-3 - Cash memo of Gupta Stores, New Delhi.
Page 220 - Ex.H-4 - Cash memo of the C&I Enop.Con.Co-op. Stores Ltd., New Delhi.
Page 221 - Ex.H-5 - Cash memo of Goels Rice House, Delhi, Page 222 - Ex.H-6 - Cash memo of Ganga Enterprises, Delhi attached to Rejoinder Affidavit of Harendra S. Shah Dated 30th September, 1996."
(n) Learned counsel for the appellants has relied upon the Malted Milk case reported as 33 RPC 108 & Raggett Vs Findlater (1871 R. 146) 17 - EQUITY CASES 29. He has also relied on case "SUPERWOUND" reported in 1988 RPC 272 where the registration of superwound was refused. The word "Wound" was held to be descriptive of guitar strings and the word "Super" denoted excellence. The above judgment held that the mere joinder of the 2 descriptive words does not give the joint word the necessary element of distinctiveness to enable registration.
(o) He has also relied upon McCarthy Vol.I. 1994 Edition where it is observed that SUPER BLEND and SUPER GEL were held to be descriptive marks. He has in particular relied upon at Page 11.10 of McCarthy wherein it has been held as follows:-
"Use of the laudatory prefix "Super" often will be taken by customers merely as a description of the alleged superior quality or strength of the product. For example, the composite term SUPERHOSE ! for hydraulic hose was held merely descriptive as a whole, the Board noting that addition of an exclamation mark cannot elevate an otherwise descriptive term to the status of a distinctive trademark."
(p) Learned counsel for the appellant further submitted that the learned Single Judge failed to see that the burden in a passing off action is heavy in case of use of descriptive words and if a trader chooses a well-known adjective like CLASSIC then the burden of proof on such a plaintiff is heavy. In support of this plea he has relied upon The Classic Case 1915 R.P.C. 15 W.N. SHARPE LD Vs SOLOMON BROS LD. The aforesaid judgment held that certain words such as "good", "best", "superfine" are incapable of being adapted. They cannot have secondary meaning and are not capable of registration. He further relied upon Cellular Clothing Co. Vs Maxton & Murray XVI 1899 RPC 397 case which judgment held that where a name which is properly descriptive is involved, the burden of proving acquisition of secondary meaning is heavy. He has relied upon HEALTH trade mark case 1912 (29) RPC 452 to contend that there could be no registration of a trademark HEALTH which was a commendatory epithet and not a distinctive one. He further relied upon Parsons Bros. & Co. Vs John Gillespie & Co. 1898 15 RPC 57. In the aforesaid judgment it was held that the "Flaked Oatmeal" must be shown by the plaintiff not to be a part of the common stock of language or the plaintiff must show that the term being originally descriptive of the articles has now come to denote the goods made by the plaintiff. Reliance has also been placed on Standard Ideal Co. Vs Standard Sanitary Mfg. Co. 1910 1910 RPC 789 wherein 'Standard' was held not to be a valid trade mark. It was further submitted by learned counsel for the appellant/defendant that a defendant may escape liability if it can be shown that the added matter is sufficient to distinguish the matter from those of the plaintiffs. In this connection, he has relied upon the judgment of Supreme Court in S.M. Dyechem Vs Cadbury (India) Ltd. 2000 PTC 297 (SC) to contend that in a passing off action, additions to the get-up or trade dress might enable the defendant to avoid an injunction. He has submitted that in defendant's goods the addition of words 'Girnar' with the superimposition of a mountain in sufficiently large print was sufficient to distinguish his products from those of the plaintiff. For this proposition he has also relied upon Bawa Masala Case 2nd (1974) 11 DEL 760; K.P. Durga Dutt Sharma Vs Navratna Pharmaceutical Laboratories . The counsel for appellant relied on World Athletics & Sporting Publications Ltd. Vs A.C.M. Webb (Publishing) Co. Ltd. 1981 FSR 27 (Athletics) to contend that where the trade name chosen by the plaintiff is in common use for his trade some confusion is inevitable and even small differences in such a case will be sufficient to avert confusion. He has also relied upon Salaried Persons Postal Loans Ltd. Vs Postal & Salaried Loans of Glasgow 1966 RPC 24 to contend that if traders chose to name themselves or their business by purely descriptive name, the user by someone else in the same line could not be complained off unless it was shown that these were being used so as to injure the plaintiff.
(q) Learned counsel for the appellant further submitted that the learned Single Judge has erred in holding that in an action for passing off. disclaimer in respect of a trade mark or a part of the trade mark is wholly irrelevant or is of no consequence. He has submitted that these observations of the learned Single Judge cannot be derived from the judgment of "Shree" case. Apart from the disclaimer which was not disclosed in the notice or the plaint, the plea of the acquisition of secondary meaning was brought out for the first time by Mr. Ramamurthy in his Affidavit in Reply after reading Mr. Harendra Shah's Affidavit dated 3rd August, 1996. The disclaimer is of relevance inasmuch as the disclaimed matter cannot be considered to be per se distinctive and SUPER CUP was not an essential feature of the plaintiff's trade mark which is in fact the words "Tea City" rendered prominently in red on yellow background.
(r) Even at the time the "case & desist" notice was given, or even in the plaint, it has not been stated that "SUPER CUP" had acquired a secondary meaning for plaintiff's trademark "Super Cup Tea".
(s) Learned counsel for the appellant/defendant further submitted that a disclaimer in a registered trade mark has an important bearing inasmuch as the disclaimed portion of the trade mark cannot be considered to be per se distinctive and has to be ignored while considering infringement as per the law laid down by the judgment of this Court in Bawa Masala Co.(Supra). The defendant's addition of Girnar with the device of snow covered mountain is sufficient to distinguish the defendant's products from those of the plaintiff and a comparison of the rival labels shows that the labels are totally different except the presence of words SUPER CUP. It was further submitted that the plaintiff's plea that the SUPER CUP acquired a secondary meaning by a large scale sale and advertisement is an after-thought and not proved. He has submitted that there is neither a whisper of this in the notice or the plaint nor was this plea taken except in the Rejoinder Affidavit dated 16.9.1996, filed by Mr. Ramamurthy. Even the few photocopies of invoices filed along with plaint from December 1993 onwards referred to TEA CITY with the word Super Cup. Even the advertisements are mainly for cigarettes and not for tea and are in the nature of posters without any date and name of newspapers. Particular figures for Super Cup in advertising have not been given nor certified by any Chartered Accountant. It is only at the stage of the appeal that the plaintiffs, brought 3 invoices of 1988-89 through Mr. Ramamurthy's Affidavit of 16.8.1997. The affidavits of Vijay Kumar and 6 others are almost identical and none of them have produced bill or proof of purchase order.
(t) Learned counsel for the appellant/defendant finally submitted that if an interim injunction is decided virtually the whole suit would be decided and in particular has submitted the proprietors of Girnar have their own established reputation and do not need to trade on the reputation of the plaintiff. Furthermore no instance of passing off or confusion was given or proved nor a single trader had given evidence of deception or confusion. The defendants are not new entrants to the trade and when the marks circulated side by side in the same trade where deception is alleged it is very material to note that no one appears to have been misled. Relying on American Cyanamide Case 1975 RPC 513, the learned counsel for the appellant contended that in the present case damages would be an adequate remedy if the plaintiff succeeds. He also relied on affidavits from two traders of Poland seeking the balance supply of the order placed for Girnar Super Cup Tea.
9. The Learned Senior Counsel for the plaintiff/respondent-M/s Godfrey Phillips, Shri Ashok Desai submitted in reply as under:
(a) Super Cup was adopted as a trade mark in the year 1988 Along with several other brands such as MADHUBAN, SYMPHONY, UTSAV, SAMOVAR, SWAN LAKE and SUPER CUP. The words 'Tea City' on these brands were not the distinguishing feature and the plaintiff has regarded SUPER CUP as a trade mark since word 'Tea City' is an umbrella or house mark which appears on all its tea products. The application for advertising in Trade Marks Journal dated 16.12.1995 was never opposed by the appellant and the trademark SUPER CUP was used by the plaintiff from 1988 to 1996 prior to the filing of the present suit and for this period high advertising expenses by the plaintiff amounted to Rs.12.66 crores. Rs.47 crores was the sales turn-over of the plaintiff for the brand Super Cup for the year 1988 to 1996.
(b) The consumers of tea identify and recognize the word 'Super Cup' when used in relation to tea as a product of the plaintiff which has acquired great reputation, goodwill and renown and is highly distinctive. The defendants are a large tea company and knew the tea market well and were using Girnar label since 1975 and only upon seeing the success of Super Cup brand copied it. There is triple identity involved in the present brand, i.e., infringement by the defendant as it is in respect of the identical product, i.e., tea and trade in the same territories where both the parties sell their goods. The Hon'ble Supreme Court in the present case vide its order dated 5th December, 1997 clearly held that the proposition that Super Cup was not entitled to protection as it was disclaimed was clearly in conflict with proposition laid down by the Supreme Court in RTM Vs Ashok Chandra Rakhit Ltd. . The respondents further submits that no plausible explanation was given for adoption of Super Cup by the appellant and the expression Super Cup was not a natural or apt expression to define the superior cup of tea and the appellant copied the term SUPER CUP in a illegitimate or unfair manner. The fact that other traders have not adapted the term 'Super Cup' indicates that it does not appropriately define tea and the phrase 'Super Cup' is not descriptive of tea but a suggestive trade mark. Reliance has been placed on Abercrombie & Fitch Co. Vs Hunting World Inc. 189 USPQ 759 to contend that the trade marks are classified as descriptive, suggestive, arbitrary or fancy.
(c) Reliance has also been placed on McCarthy Law of Trade Marks, Fourth Edition Para 11.62 to contend that if the mental leap between the word and the product's attributes is not almost instantaneous, suggestiveness is strongly indicated and not direct descriptiveness. Super Cup could mean many things and does not mean a cup of tea unless the consumer imagines a connection showing the mark was suggestive and thereafter inherently distinctive. The two type of invoices produced by the plaintiff/respondent show that the mark has an independent identity. Some of the invoices show the user of the traders trading "Tea City Super Cup", "Tea City Utsav" or "Tea City Swan Lake". The term "Tea City" has a neutral meaning and Super Cup is the distinguishing element forming the basis of the orders and recognition in the market. Reliance has been placed upon The Legal and General Assurance Vs Daniel & Ors. 1968 RPC 253; Globe Super Parts Vs Blue Super Flame AIR 1986 Del 245; Super Seals India Vs Mantri Brothers 1986 PTC 341; Charan Dass Vs Bombay Crockery Store 1984 PTC 102 & Computervision Corporation Vs Computer Vision Ltd. 1975 RPC 171. Reliance has also been placed upon the leading case of Reddaway Vs Banham (1896) 13 RPC 218 to contend that where the trade mark was descriptive, the courts had looked at the evidence to see its adequacy for the acquisition of such secondary meaning. There was no suppression as disclaimer was not relevant for an infringement action according to the proviso to Section 17 of the Trade & Merchandise Marks Act, 1958 and the law laid down by the Supreme Court in RTM Vs Ashok Chandra Rakhit's case(Supra). For a registration mark had to be adapted to distinguish which was the higher test than the test for passing off where the plaintiff has to establish that the mark was distinctive in fact. He has relied upon the example of BEST transport services in Bombay which according to him has been quoted in "Shavaksha, commentary on The Trade & Merchandise Marks Act, 1958" where it has been stated that the mark BEST may not be registrable and mark such as BEST is distinctive though not adapted to distinguish.
(d) Reliance has been placed upon the Perfection case [Joseph Crosfield & Sons Ltd. Caton 29 RPC 47] where the registration for the word PERFECTION was refused yet user for PERFECTION was restrained in a suit for passing off. Reliance has also been placed on Dr. J.K. Jain Vs Ziff Davis 2000 PTC 244 where a restraint order was issued against the user of the terms PC MAGAZINE. PC WEEK and INTERNET USER and COMPUTER SHOPPER despite the plea that the terms were descriptive because the Court found that there was acquisition of secondary meaning.
(e) In the present case the plaintiff's disclaimer was the result of the fact that plaintiff thought it better to have some registration than none and while the mark may not have been adapted to distinguish, it was not inconsistent with the plaintiff's plea that the mark was distinctive in fact. The main plea of the respondent is that if the defendants/appellants are unable to show that why they adopted the trade mark, then the Court would infer that such adoption was dishonest. In this connection, learned counsel for the respondent relied upon Munday Vs Carey 22 RPC 273; Slazenger & Sons Vs Feltham & Co. 6 RPC 531 & Tavener Rutledge Vs Specters 1959 RPC 83.
(f) The essential feature of the plaintiff's mark being 'Super Cup', when people buy tea they order the merchandise by the name SUPER CUP or UTSAV or SWAN LAKE because were they to ask for it by the TEA CITY the retailer is bound to ask the question "which one?" Reliance has also been placed on sub-brands of Maruti such as "ZEN", "ESTEEM", "BALENO" etc. and then on Cadbury's sub-brands such as "5 STAR", "RED LABEL" etc. and Microsoft products such as "MS Office", "MS Windows 1995" etc., which though not registered cannot be copied. In so far as the appellant's plea of mis-statement of facts is concerned, it has been contended that only if relevant documents were kept back then an inference of suppression could be drawn. It was also submitted that reliance on McCain Oven Chips case by the appellant is not justified as the user in that case was for only 18 months so as to prevent the acquisition of a secondary meaning and it is further submitted that correspondence with Registrar of Trade Marks is not relevant in a suit for passing off. Learned counsel for the respondent has also contended that reliance on Cadbury's decision to seek comparison of labels by the appellant was not justified because in that case the rival products were totally different, i.e., potato wafers and chocolates and they were also different in packaging and presentation and that is one of the reasons while the injunction and that is one of the reasons while the injunction was declined. Finally learned counsel for the respondent has submitted that reliance upon Horlicks Milk Malted case & other cases was not justified because in none of the cases was there any evidence of acquisition of a secondary meaning.
10. In so far as the decision s relied upon by the learned counsel for the respondents are concerned, the learned counsel for the appellant has made the following submissions:
(a) In so far as the Reddaway & Co. Vs Banham (1896) 13 RPC 218 case is concerned, the injunction in the aforesaid case was founded on the fact that everyone had a right to describe truly his article by that name provided he distinguished it from the mark of the plaintiff. Secondly the defendant had admitted in a letter that by using the words 'camel Hair Belting' simpliciter they expected to be able to pass off their goods as that of the plaintiff. Furthermore the defendant Banham was for two years in the employment of Reddaway at his works. It is thus submitted that in view of these amongst other distinguishing features the aforesaid decision is not applicable to the facts of the present case.
(b) In so far as Abercrombie & Fitch co. Vs Hunting World Inc. 189 USPQ 759 case is concerned, learned counsel has submitted that the Division Bench of this Court in 1997 PTC 669 referred to the observations made by Supreme Court in American Home Products Corporation Vs Mac Laboratories Pvt. Ltd. AIR 1986 SC 173, observing that we may derive some assistance from English authorities in cases of passing off action. It is submitted by the l earned counsel for the appellant that he said decision is based on American Law codified in the Lanham Act and was not the law which would govern the trade marks actions in U.K. as well as India.
(c) Learned counsel for the appellant has submitted that in so far as Registrar of Trade Marks Vs Ashok Chandra Rakhit Ltd. case in concerned, it is submitted that the aforesaid decision has nothing to do with a passing off action. He has further relied upon the observations in the above judgment in support of his case to the following effect:
"It is, however, a notorious fact that there is a tendency on the part of some proprietors to get the operation of their trade marks expanded beyond their legitimate bound...."
"Temptation has even led some propritors to make an exaggerated claim tot he exclusive use of parts or matters contained in their trade marks in spite of the fact that they had expressly disclaimed the exclusive use of those parts or matters. The real purpose of requiring a disclaimer is to define the rights of the proprietor under the registration so as to minimise, even if it cannot wholly eliminate, the possibility of extravagant and unauthorised claims being made on the score of registration of the trade marks."
(d) In so far as Charan Das Vs Bombay crockery Store 1984 PTC 102 case is concerned, it is submitted that the defendant was a stockist and selling agent of plaintiff's stove and could not have pleaded ignorance of the user of the trade mark of the plaintiff for 20 years. Colour scheme of both the cartons and get-up were also same. The design of Stove was registered as a Design and the get-up and colour scheme was registered under the Copyright Act and the plaintiffs were the Registered Proprietors of the trade marks. The aforesaid decision thus could not apply to the facts of the present case because the trademark of the appellant was not confined to "Super Cup" but the entire label with the word GIRNAR and snow covered mountain and its own distinctive get-up of red & yellow.
(e) In so far as PERFECTION Case Vol. 26 RPC 837 in concerned, it was based on a no-contest by the defendant and no damages were awarded to the plaintiff.
(f) In so far as the judgment in Globe Super Parts Vs Blue Super Flame Industries AIR 1986 Delhi 245 Case is concerned, learned counsel for the appellant has submitted that the said judgment was given after final hearing and examination of all the witnesses. Furthermore the plaintiffs in that case claimed at the outset that the word SUPERFLAME had acquired a secondary meaning and defendant No.2 had worked with plaintiffs for about 12 years and was fully aware of the goodwill and reputation of the plaintiff's product. It was submitted that the aforesaid case being a rank case of dishonesty cannot apply to the facts of the present case.
(g) In so far as the judgment in Super Seals India Pvt Ltd. Vs Mantri Brothers 1986 PTC 341 is concerned, it was submitted that this was an infringement- passing off action. Plaintiff was the Registered Proprietors of a Registered trade mark and thus the facts of this case could not apply to the facts of the facts of the present case.
(h) In so far as the judgment in Computervision Corporation Vs Computer Vision Ltd. 1975 RPC 171 is concerned, the defendants had got incorporated 7 years after plaintiffs had been in business and the plaintiff had been using the word "COMPUTERVISION' as one word. Defendants' Capital was just 100 pounds and while plaintiffs at the time when defendants had incorporated their Company had sale of 1,20,000/- pounds which was expected to rise to 4,50,000/- pounds. At the time of the filing of the suit, the defendants were not even in production it was not averred that the word COMPUTERVISION means that he vision is laudatory of computer or vice versa. In the present case as the respondent have themselves averred at various places that SUPER CUP is laudatory of Cup and that the Word 'CUP' is at best only suggestive of tea. The aforesaid decision cannot thus apply to the facts of the present case.
(i) In so far as Legal & General Assurance Society Ltd. Vs Daniel & Others 1986 RPC (9) 253 Case is concerned, learned counsel for the appellant has submitted that the plaintiff was established for about 129 years and the suit was based on a corporate name and not a trademark. It was proved that the plaintiff were known as 'Legal and General' itself. There was evidence of confusion. The words "Enquiry Bureau" were not prominently rendered with a view to highlight the importance of "LEGAL & GENERAL" and a strong prima facie case was established. It is submitted that such are not the circumstances in the present case.
(j) In so far as J.K. Jain & Others Vs Ziff-Davies Inc. 2000 PTC 244 (DB) Case is concerned, this was a case of an ex-licensee who was held estopped from challenging the ownership of the respondents or stating that the marks were descriptive. In fact no where did the Appellate Court hold that there was an acquisition of secondary meaning for the words P.C. MAGAZINES etc. Thus the aforesaid decision is clearly inapplicable to the facts of the present case.
(k) In so far as the judgment in Munday Vs Carey 1905 XXII 10 RPC Case is concerned, it is stated that the judgment was passed after evidence was fully led and it was a rank case of dishonesty.
(l) In so far as Tavener Rutledge Ld. Vs specters Ld. 1959 RPC 483 case is concerned, judgment was delivered after the entire evidence was led and the action was for infringement of trademark & copyright and passing off. The rival boxes wee identical in so far as words, devices and placements were concerned. Consequently the aforesaid judgment could not apply in a case like the present one where there were considerable differences in the rival products.
(m) In so far as Slazenger & Sons Vs Feltham & Co. Reports of Patent, Design 1889 531 Case is concerned, the aforesaid judgment was delivered after full-fledged trial and evidence. The mark "THE DEMON" and device were Registered for tennis racquets by the plaintiff. The defendants use the word "DEMOTIC" exactly at the same spot where the plaintiffs used it and furthermore there was nothing descriptive or laudatory about the trade mark "demon" when used on a tennis racquet. The aforesaid judgment could not in view of the above factors be applicable to the facts of the present case.
11. Learned counsel for the respondent has raised the following pleas in respect of the decisions relied upon by the learned counsel for the appellant:
(a) In so far as the S.M. Dyechem's case(Supra) relied upon by appellant is concerned, the learned counsel has submitted that the aforesaid case was in respect of two entirely different products, namely, potato wafers and chocolates and being different in packaging and presentation cannot come to the support of the appellant. It is also submitted that the Supreme Court in the aforesaid decision held that in cases where one of the element of a trademark is common to the trade, the Court should take into account that part of the trademark which is not common to the trade. In the light of the above, Supreme Court has that if an element in the mark is common to the trade then comparison should be made of the other features in the trade m ark. It is submitted by the learned counsel for the respondent that neither Super nor Cup are common to the trade.
(b) In so far as McCain International Ltd. Vs country Fair Foods Ltd. & Anr. 1981 RPC 69 case is concerned, learned counsel for the plaintiff/respondent has submitted that the principle involved in that judgment was that the user by the plaintiff in that case was for too short a period of about 18 months and such period was not sufficient for acquisition of a secondary meaning. Learned counsel has submitted that in the present case the period involved was more than 7 years and the McCain Oven Chips case could have no application to the facts of the present case.
(c) In so far as the reliance by the appellant on Horlicks Milk Malted Vs Summerskill (1916) 32 RPC 1 is concerned, the reason for not granting the injunction was that the Court held that the term "Malted Milk" had never lost its original proper descriptive meaning and never became distinctive exclusively or otherwise of the preparation of the plaintiff.
(d) In so far as S.P. Chengalvaraya Naidu (deceased) Vs Jagannath regarding suppression of facts relied upon by the appellant is concerned, it is submitted by the learned counsel for the respondent that only if the relevant documents are kept back would the principle stated in the above case apply. In the present case, disclaimer was not a relevant factor in so far as a passing off action is concerned. The aforesaid decision, therefore could have no application to the facts of the present case.
12. The two questions which are crucial to the determination of the appeal arising from the interim application are:
(i) Whether the words 'Super Cup' adopted by the plaintiff/respondent are descriptive in nature and the word 'Super' is laudatory of the Cup and not of tea? and
(ii) Whether the defendant has given a plausible explanation for adoption of 'Super Cup' by it as a part of its mark.
In case the answer to the first question is against the plaintiff and the words 'Super Cup' are held to be descriptive and the word 'Super to be descriptive of tea and not just cup, then the answer to the second question becomes academic.
13. For the purpose of this case in view of the law laid down in the case of Registrar of Trade Marks Vs Ashok Chander Rakhit and the Order of the Hon'ble Supreme Court dated 5th of December, 1997 in this case, the present dispute is being considered on the basis that when certain features of a mark are disclaimed during registration, the plaintiff is not disentitled from seeking an injunction and can still sue for passing off.
14. The defendant's plea is that if Super Cup was an invented expression there was no need for the plaintiff/respondent to give a disclaimer. The defendant/appellant has further submitted that it is not in dispute now in view of Ramamurthy's affidavit that the word 'Super' in the mark 'Super Cup' is laudatory of the word 'Cup'.
15. On the other hand there is no objection by the respondent/plaintiff to the user of the word 'Super ' by the defendant. It is only the conjunction of the word 'Super' and 'Cup' which has been found objectionable by the respondent/plaintiff as according to the plaintiff/respondent this is an attempt to derive unfair benefit of the reputation earned by them in the market place by the sustained quality of their product. The plaintiff/respondent has contended that the adoption of the combination of the words 'Super Cup' is inspired by a desire to derive unfair benefit from the reputation and goodwill of the plaintiff's products which had been successful in the market for about 7 years before its success persuaded the defendant/appellant to pick it up. The plaintiff/respondent has contended with great emphasis that the word 'Super' was descriptive of the word 'Cup' and not of 'tea'.
16. In so far as plaintiff's claim for secondary meaning is concerned, there is substance in the defendant's plea that the plaintiff's plea regarding acquisition of secondary meaning by the term 'Super Cup' was not averred either in the "Cease & Desist" Notice given to the defendant or in the plaint and no sufficient documentary evidence barring few invoices has been filed by the plaintiff/respondent. However, we have considered the case on the basis of the plaintiff's plea that Tea City is an umbrella brand of its various tea products and the mark of the plaintiff said to be violated is 'Super-Cup'. In fact the perusal of the various brands of tea marketed under the common name 'Tea City' by the plaintiff such as Symphony, Madhuban, Swan Lake and Samovar justifies the plea of the plaintiff that Tea City is the umbrella brand and the product whose trade mark has been said to be infringed bears the relevant mark 'Super Cup' which is required to be considered by us.
17. It is not disputed by the respondent/plaintiff, that the word 'Super in isolation cannot acquire a secondary meaning. Consequently the meaning assigned in common parlance to 'Cup' assumes significance. Similarly the effect of the conjoint use of 'Super' and 'Cup' also has to be considered. In this respect it is the meaning commonly ascribed to a cup especially with reference to the product in question, i.e. tea, which has to be considered by us. By perusing the various meanings relied upon by the learned counsel for the appellant/defendant before us, the conclusion is inescapable that the word 'Cup' in its various manifestations such as 'Cuppa' means a reference to a cup of tea. For instance the quotation from Poet William Cowper refers to the cups that cheer but not inebriate. Furthermore, whenever a reference is made to be invariably it is referred to as a cup of tea. The meanings and the colloquial user relied upon by the learned counsel for the appellant/defendant as extracted herein before make it abundantly clear that in the English language a reference to the Word 'Cup' can be taken as a reference to a cup of tea. Though the learned counsel for the appellant has urged that the cup could be of tea as well as coffee, yet we are of the view that the common usage of Cup is qua tea and not coffee. Thus if the word 'Cup' is a synonym for the words "Cup of tea" in the English language, then it is obvious that the combination of the words 'super' and 'Cup' cannot acquire a secondary meaning. Since the plaintiff's own case is that Super is a laudatory word but is only laudatory of the Cup and not of tea and if the 'Cup' in the present context is held to mean a, cup of tea, then on the plaintiff's own showing the word 'Super' is laudatory of the word 'Cup to tea' and therefore incapable of acquiring a secondary meaning. There is no explanation forthcoming from the respondent as to why the word 'Super' was use only to describe 'Cup' and not tea. The plaintiff is not in the business of marketing tea cups and it is not clear why it would want to praise a cup and not the tea which might be contained in it. In so far as the Superwound case reported in 1988 RPC 272 relied upon by the counsel for the appellant is concerned, the registration of the word 'Superwound' was refused. The Court held that the word 'Super' denoted a high standard and the word 'wound' described a particular kind of guitar strings. The Court held it to be well settled that mere jonider of two descriptive words did not give the joined word the required air of distinctiveness to enable registration. Even though the above case arose from registration proceedings, nevertheless the general principles laid down relating to distinctiveness would apply to the facts of the present case. In view of our finding that 'cup' refers to 'tea' the joinder of 'Super' and 'Cup' cannot give the words 'Super Cup' the requisite distinctiveness affording protection by an injunction even against passing off. Similarly McCarthy Vol.1 (1994 Edition) at P.11 39 has listed the marks Super Blend for motor oil and Super Gel for shaving gel as descriptive marks. In our view the instance of Super Blend for motor oil held to be descriptive is relevant for the present case because while Super Blend cannot be held to be as direct a reference to the concerned product as Gel is for shaving, yet it was nevertheless held to be descriptive. By a similar analogy a cup qua tea is also clearly descriptive. The learned counsel for the respondent has strongly relied upon observations in Abercombie & Fitch Co. Vs Hunting World Inc. 189 USPQ to contend that the trade marks are classified as descriptive, suggestive, arbitrary or fancy and Super Cup is at best suggestive and not descriptive. Reliance has further been placed on "McCarthy on Trademarks & Unfair Competition" at Para 11.62 where it is observed that a mark which merely suggested some quality or ingredient of goods was suggestive in character and a suggestive mark is distinguishable from descriptive ones and is entitled to protection without any necessity for proving secondary meaning. The counsel for the respondent by relying upon the above principles has submitted that the words 'Super Cup' are not descriptive of tea but are a suggestive trade mark. The learned counsel for the defendant/appellant has, however, relied upon the observations of a Division Bench of this Court in 1997 PTC 669 which has referred to American Home Product's case AIR 1986 SC 173 that we may derive some assistance from the English common law. However, he submitted that the Abercombie Case (supra) was based upon the American law codified in the Lanham Act which would not govern the law in India. Without going into the pleas whether the principles derivable from American law relating to passing off would apply in the Indian context, we have considered the present appeal even according to the principles of American la w derivable from Abercombie judgment (supra) and McCarthy. However, a perusal of McCarthy at Para 11.66 shows that it has been observed that the descriptive suggestive borderline is hardly a clear one and its exact location in any given situation is hazy and only subjectively definable. It was observed in Para 11.67 of McCarthy that if the mental leap between the words and the attributes of the product is not almost instantaneous, suggestiveness and not direct descriptiveness is indicated. We are of the view that considering the usage of the world 'Cup' when applied to tea-trading the mental leap between cup and tea is substantially instantaneous. In fact observations of Judge Weinfield in Stix's case 295 F.Supp. 479 are quoted with approval in McCarthy to define suggestiveness as that which requires imagination, thought and perception to reach a conclusion a s to the nature of the goods and a term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities and characteristics of the goods. Applying the above tests it is clear that it does not require any appreciable imagination, thought and perception to associate cup with tea and in fact the word 'Cup' conveys and immediate association with tea. In this connection the observations in Investacorp case 931 F.2d 1519 quoted in Para 11.67 of McCarthy which held that the word 'investacrop' is descriptive of investment brokerage services because the customer who observes the term can readily perceive the nature of the plaintiff's services without Having to exercise his imagination, are relevant and applicable, to the facts of the present case as a customer on seeing the word 'Super Cup' would immediately and readily perceive an excellent cup of tea. Learned counsel for the appellant has strongly relied upon the judgment in Reddaway & co. Vs Banham (1986) 13 RPC 218 to contend that where the trademark was descriptive, the Courts have looked into the evidence to see its adequacy for the acquisition of such a secondary meaning. In our view, the above judgment is not applicable to the facts of the present case because the judgment itself starts with the words "Mylord, I believe that this case turns upon a question of fact". The decision in the above case turned on a letter written by the defendant who had written that in case he puts the words 'Camel Hari Belting', he would be able to pass of his goods as that of Reddaway, the plaintiff. Furthermore the respondent-Banham was in the employment of the plaintiff-Reddaway and started his own manufacturing company. This was another factor which led to the above judgment. The Jury had also found that the effect of using the words in the manner in which they were used would lead the purchaser to believe that the goods were manufactured by the plaintiff and thus likely to both deceive the purchasers and to injure the plaintiffs. In the is respect both the competing products in the present appeal have substantial differences which have the effect of differentiating between them. The Court also held in Reddaway's Case (Supra) that the plaintiffs were not entitled to any monopoly of the name 'Camel Hair Belting and everyone in the trade had a right to describe hi articles by that name provided he distinguished hi products from the plaintiff's products. The above principle would squarely apply to the present case as we have found that the trade dress of the defendant's products clearly distinguishes the defendant;s products from that of the plaintiff. In so far as Globe Super Parts Vs Blue Super Flame Industries AIR 1986 Delhi 245 Case is concerned, the above judgment of the learned Single Judge was given after final hearing and not on a prima facie view of the matter. The above judgment also found that the word 'SUPERFLAME' was a coined and meaningless word and was a word which is not is use and,therefore, the plaintiff was not required to prove the existence of secondary significance to sustain the claim for exclusive appropriation. The above judgment cannot apply to the facts of the present case as 'Super Cup' is used conjointly and not as a coined or a joint word and we have arrived at a finding that 'Super' qua 'Cup' is laudatory in nature and Cup refers to tea and in that view of the matter, the above judgment cannot apply. Furthermore the defendant in the above judgment had worked with the plaintiffs for about 12 years as a Painting Contractor and the case was a clear case of dishonesty. The above judgment, therefore, cannot apply to the facts of the present case. In so far as Supra Seals India Pvt Ltd. Vs Mantri Brothers 1986 PTC 341 Case, relied upon by the plaintiff/respondent is concerned, the same cannot apply to the facts of the present case because the mark of the plaintiff was a registered trademark. In so far as Computervision Corporation Vs Computer Vision Ltd. 1975 RPC 171 Case, relied upon by the respondent is concerned, in the above case there was no pleas or finding that the COMPUTERVISION meant the vision to be laudatory of the computer or vice-versa. In the said case apart from the fact that the defendant's issued capital was just 100 pounds as compared to the sale of the plaintiffs which was at the level of 1,20,000/- pounds sterling, the defendants were not even in production when the suit was filed. Furthermore the words 'Computer' and 'Vision' were joined to create the joint word 'Computervision ' whereas in the present case the words 'Super' and 'Cup' are separate though used in a conjoint manner. The above decision accordingly cannot apply because in the present case, we have found the words 'Super Cup' to be descriptive and laudatory of tea and hence not entitled to protection. In so far as Legal & Genera Assurance Society Ltd. Vs Daniel & Others 1968 RPC (9) 253 Case is concerned, it had been found proved that the plaintiffs were known as 'Legal and General' and the manner in which the defendant had adopted his mark as 'Legal & General Enquiry Bureau' indicated clearly that the last two words 'Enquiry Bureau' were not prominently rendered so as to cause confusion so as to have the defendants perceived as 'Legal & General' and the injunction was granted due to the aforesaid reasons. The above decision also cannot, therefore, apply to the facts of the present case as the defendants have substantially and sufficiently been found to have distinguished their mark from that of the plaintiff's. In so far as J.K.Jai & Others0vs Ziff-Davies Inc. 2000 PTC 244 (DB) Case is concerned, the defendant was a former licensee who was consequently held estopped from challenging the ownership of the plaintiffs/respondents or terming the marks as descriptive. Such is not the factual situation in the present and the above decision, therefore, cannot apply. In so far as Charan Das Vs Bombay Crockery Store 1984 PTC 102 Case is concerned, the said judgment of the l earned Single Judge proceeded on an erroneous footing that the Oven Chips Case(Supra) was not a passing off action. Consequently the above judgment need not be considered in the present case. Furthermore as already found the mark and trade dress of the defendant viewed in totality differentiates it substantially from the plaintiff's mark where as in the above judgments of Charan Das the trade dress and the get-up of the two competing products were found to be similar. The judgments in Munday Vs Carey 1905 (xxii) RPC 10 and Tavener Rutledge Vs Specters 1959 RPC 4 cited by the respondent cannot apply as injunction was granted after the entire trial and there were several visual and other similarities found in the two rival products. In the present case apart from the words 'Super Cup' there is no other similarity of substance between the plaintiff's and defendant's products and hence the above judgment is inapplicable. Similarly in so far as the Slazenger & Sons' (Supra) 41 Reports of Patent, Design & Trade Mark Cases 531 is concerned, the injunction was granted after a full trial and the word 'demon' was not descriptive of a tennis racquet in any sense. Furthermore, defendant had used the word 'demotic' on the same spot on the product, i.e., tennis racquet as the word 'demon' used by the plaintiff. In the present appeal 'Super Cup' having been found descriptive and trade dresses of defendant and plaintiff having been found different, the above judgment cannot apply. The plaintiff/respondent has chosen to employ/describe the words especially the word 'Super' as a part of its mark. The burden in such a case of proving passing off is obviously heavy on the plaintiff when well-known adjectives such as 'Super' are chosen as per the law laid down in Classic Case 1915 R.P.C (C.A.) W.N. SHARPE LD Vs SOLOMON BROS LD. In the above case it was held that words such as "good' "best and "superfing" are Incapable of being adapted and cannot have a secondary matching which point only to the goods of the appellant. Applying the law laid down in the above case if the word "superfing" was held to be descriptive and not capable of assuming a secondary meaning, then in our view 'Super Cup' would also suffer from the lack of capacity of having a derivative meaning. In this connection, the findings in the Cellular Clothing Co. Vs Maxton & Murray XVI 1899 RPC 397 are relevant wherein it has been held that it should almost be made impossible to obtain the exclusive right to use of a word or term which is in ordinary use in English language and is descriptive only. It is not in dispute that the word 'Super' is descriptive. Merely by adding 'Cup' the conjoint phrase 'Super-Cup' cannot cease to be descriptive and incapable of acquiring a secondary meaning in view of our finding that 'Cup' in English language is a synonym for 'Cup of Tea'. We are of the view that in view of the above position of law, the words 'Super-Cup' are descriptive and laudatory and cannot partake of a secondary meaning. Once it is found that the words' Super Cup' have not acquired a secondary meaning and are words which are inherently incapable of distinguishing the goods of the plaintiff as the words 'Super-Cup' are descriptive in nature, common to the trade and laudatory, then the plaintiff cannot be held entitled to an injunction.
18. The word 'Cup' particularly when used for a product such as tea has reference to a cup of tea and not a cup simpliciter and cup as a visual or written depiction is used extensively in the tea-trade. In this respect it is significant that either 'Super' or 'Cup', though separately, have been used by the defendant/appellant since 1979, in respect of the word 'Cup' or various brands of the defendant's tea. For instance the word 'Cup' was used as a part of 'Red Cup' brand by a sister concern of the defendant since 1979. Similarly Girnar Tea pouch with a depiction of a cup was registered since 1986 and the word 'Super' was used or broken orange peko from 23.8.83 as Super B.O.P. by the defendant. These words have also been used in the tea trade by M/s Godfrey Phillips/plaintiff. Similarly other manufacturers of tea have used the visual depiction of the Cup in combination with the word 'Super' such as 'Brooke Bond Super Dust', 'Dayani's SUPER ASSAM TEA' and 'Sapat's SUPER DUST TEA' Similarly other brands, i.e. 'PEEKAY Garden Fresh BEST QUALITY LEAF TEA', SURYA TRADERS' HOT-SIP ASSAM CTC TEA', 'SOCIETY Premium TEA', 'Sapat's PARIVAR PURE ASSAM TEA', 'Nestle's TASTER'S CHOICE PREMIUM TEA', LEONE Finest Indian Tea','Assam Golden CTC Dust GS CHAHA' have used only the visual depiction of a Cup of Tea to highlight their products. Thus it would be readily seen that the word' Super'; combination of the word 'Super' and a visual depiction of the 'Cup '; and the user as well as the mere visual depiction of a 'Cup'; are extremely common features for tea producers as a part of their trade dress/mark. In this view of the matter it is evident that the 'Cup' whether used visually or as a 'word' clearly denotes 'tea' in the marketplace. Thus in view of the fact that the plaintiff started marketing its 'Super' Cup' tea in 1988, the user of the word 'Super' for tea by the defendant since 1979 is significant, particularly when the combination of the word 'Super Cup' has been held not to have acquired a secondary meaning.
19. We are of the view that while the Trial Court did notice that the words 'Super Cup' were prominently displayed by the defendant yet it has not given due weight to the fact that the word 'Girnar' used by the defendant/appellant was substantially larger than the words 'Super Cup' tea. In our view this itself was a significant factor, which while considering the totality of the concerned mark, would show that no consumer was likely to be misled, particularly where the marks were said to be circulating side by side. The visual depiction of the two competing cartons is also substantially different. The word 'Girnar' and a snow capped mountain range featured in the defendants' product constitutes sufficient differences to distinguish the defendants' product form that of the plaintiff's/respondent. the background in yellow and red checks behind the depiction of the 'Cup in the plaintiff's product is significantly and substantially different. The 'Cup' is yellow in the plaintiff's product while it is white in the defendant's. In the plaintiff's product words 'Super Cup' are above a Orange circle ringed in Gold and separated from the word 'tea' whereas the defendant uses the words Super Cup Tea' atop each other in 3 different lines and inside the picture of a white cup. Thus on comparing the two products and considering the crade dress of the defendant/appellant as a whole, there are differences which are substantial enough to distinguish the defendant's product from that of the plaintiff's. We are also of the view that S.M. Dvechem's judgment reported as 2000 PTC 297 would have a bearing on the differences between the two competing marks. The Supreme Court in the above judgment approved the view of the High Court which had noticed the dissimilarities in the essential features so as to decline an injunction. In our view the differences detailed above by us in Para 19 are sufficient differences in essential features so as to distinguish in the marketplace, the plaintiff's product from that of the defendants's and thus disentitle relief to the plaintiff. The plaintiff's claim that the word 'Super Cup' before tea are used by the defendant illegally, cannot thus be countenanced at this stage, considering the fact that the word 'Super Cup' in the defendant's product is written in small white letters with the annotation "special blended super quality tea with bright re liquor, strong taste, delightful aroma ..." In this respect, the decision in World Athletics & Sporting Publications Vs A.C.M. Webb (Publishing) Co. Ltd. 1981 FSR 27 (Athletics) is relevant where the Court has held that when a trade name which is in common use is adapted. Some risk of confusion is inevitable and in such a situation the Court will accept comparatively small differences as sufficient to avert, confusion. In the present case, the colour scheme, the size of the word Girnar emblazoned on the carton and the other visual parameters of the competing products,are in our view sufficient prima facie to constitute differences which avert and avoid confusion between the plaintiff and the defendant's products.
20. In view of the above discussion, the finding of the learned Single Judge that the plaintiff's product displays the mark 'Super Cup' prominently and 'Tea City' does not occupy a prominent position is unassailable and is required to be sustained, Consequently we do affirm the view taken by the learned Single Judge that the plaintiff's mark in question is 'Super Cup'. However, the further and consequential conclusion of the learned Single Judge that the word 'Super' does not refer to the character or quality of the tea, in our view, cannot be sustained on account of the foregoing discussion and our finding that the word 'Cup' refers to a 'Cup' of tea' any word 'Super Cup' was, therefore, laudatory of tea. This conclusion of the learned Single Judge cannot, therefore be sustained.
21. Accordingly, since the terms 'Super Cup' has now been held be us to be descriptive and laudatory of the goods of the plaintiff, the plaintiff/respondent is not entitled to an injunction.
22. Consequently the finding of the learned Single Judge that the plaintiff has been selling 'Super Cup' tea since 1988 with considerable expenses and the trademark 'Super Cup' identifies the plaintiff's goods as well as the finding that no plausible explanation has beeb given by the defendant for adoption of the mark 'Super Cup' in 1995 is nt of any relevances as the plaintiff/respondent prima facie is held disentitled to the protection claimed for Super Cup and the consequent grant of an injunction.
23. In so far as the finding of the learned single Judge that there are basic features of similarities between the two marks which make misleading of the public a reasonable inference, we are of the view that this finding canot stand in view of the findings arrived at by us to the effect that taking into account the differences between the plaintiff/respondent's and defendant/appellant's marks and trade dresses there can be no legally relevant confusion in the marketplace. Accordingly, the appeal is allowed. The Order dated 23rd June, 1997 is set aside to the extent indicated above. The appellant /defendant's application, IA.7896/96 under Order 39 Rule 4 CPC is allowed and IA.6973/96 under 39 Rules 1& 2 CPC, filed by the plaintiff/responden dismissed. Appeal stands disposed of accordingly.
24. Needless to add that the findings and conclu arrived at by us are meant only for the purpose deciding the appeal and will not affect the case on me which of course will have to be decided in accordance law.