Delhi High Court
Naresh Confectionery Works vs Jain Confectionery on 17 May, 2002
Equivalent citations: 2002VIIAD(DELHI)504, 98(2002)DLT285, 2002(25)PTC129(DEL)
Author: D.K. Jain
Bench: D.K. Jain
JUDGMENT D.K. Jain, J.
1. In this suit for permanent injunction seeking to restrain the defendant from carrying on business as manufacturers or vendors of confectionery items under the trade mark "New Kamal/Kamal" in the infringing cartons, the plaintiff, engaged in the business of manufacture and sale of confectionery products under the trade mark "Kamal", has filed an application (IA 9173/01) under Order 39 Rules 1 & 2 of the Code of Civil Procedure (for short the CPC), for temporary injunction to restrain the defendant from manufacturing, selling, offering for sale or otherwise dealing in confectionery items under the impugned trade mark "New Kamal Coconut Bar" or artistic wrapper identical to the plaintiff's trade mark "Kamal".
2. IA No. 2824/02 has been filed by the defendant under Order 39 Rule 4 CPC, praying for vacation of ad interim injunction granted on 27 September 2001.
3. This order will dispose of both the applications.
4. Plaintiff's case, in brief, is that since the year 1972, it has been using the distinctive trade mark "Kamal" for confectionery products, including coconut bar packed in the hard board cartons; the said trade mark is duly registered vide certificate of registration dated 11 July 1980 and is still valid it is also using the trade mark "Kamal Coconut Bar" for the last many decades; the carton has some artistic features, mentioned in the plaint, which are unique, artistic and distinctive; that the defendant has recently started manufacturing and marketing the same products under exactly the same/identical and/or deceptively similar trade mark "Kamal" by affixing the word "New", to make it "New Kamal"; it has copied the exact writing and adopted the exact colour scheme on their carton as that of the plaintiff except that instead of plaintiff's corporate name they have used their own. It is alleged that the defendant has adopted the same size, the colour scheme, get up, lay out and writing style and arrangement on its cartons and is, thus, passing off its inferior and substandard products as that of the plaintiff's, which cannot be permitted.
5. The defendant, on the other hand, states that the defendant's mark "New Kamal" with different placement is phonetically, visually and structurally absolutely different from that of the plaintiff's registered trade mark; plaintiff's trade mark only stands registered in respect of the sweets (being non-medicated confectionery) but they have been using the same in respect of the other products and that they have been making false representation to the public with respect to the origin, composition and value of their products.
6. I have heard learned counsel for the parties.
7. Both the learned counsel have reiterated the points set out in the plaint and in the written statement, briefly noted above. The main thrust of argument of learned counsel for the defendant is that the label of the defendant, if seen as a whole, is entirely different from that of the plaintiff and that defendant's label contains and consists of the word "New Kamal", device of Joker and device of half cut coconuts, whereas the plaintiff's label contains the device of Joker and Lotus. It is, thus, pleaded that the defendant's mark is entirely different, there is no likelihood of any one being deceived or confused. In support reliance, is placed on a decision of Supreme Court in S.M. Dyechem Ltd. v. Cadbury (India) Limited , AIR 2000 SC 2114.
8. I am unable to persuade myself to agree with the contentions urged on behalf of the defendant.
9. The essence of cause of action for passing off in its classic form consists of mis-representation of the defendant in respect of its marketed goods by colourable imitation by using the same material, resembling with those of others in such a manner as to be calculated to cause the goods to be taken by the ordinary purchasers for the goods of the plaintiff. The purpose of passing off action is not only to protect commercial goodwill but is also to ensure that the purchasers are not exploited and dishonest trading is prevented and for that the plaintiff must establish that his business or goods have acquired a positive reputation. Relying on Reddaway v. Bentham Hemp Spg. Company (1892) 2 QB 639 it was held in Ellora Industries, Delhi v. Banarasi Dass Goela , that in a passing off action all that needs to be proved is that the defendant's goods are so marked, made up or described by them as to be calculated to mislead the ordinary purchasers and to lead them to mistake the defendant's goods for that of the plaintiff's, and it is this tendency to mislead or to confuse that forms the gist of passing off action; and the plaintiff need not establish fraud nor that any one was actually deceived or that he actually suffered damage.
10. In lieu with the above said view, it has recently been held by the Supreme Court in Cadila Health Care Ltd., v. Cadila Pharmaceuticals Ltd. , that in an action for passing off what has to be seen is the similarity between the competing marks and to determine what is the likelihood of deception or causing confusion. The Court reiterated the following broad factors which could be taken into consideration for deciding the question of deceptive similarity in an action for passing off:
"(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.
(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they required, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods and
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
Weightage to be given to each of the aforesaid factors depends upon the facts of each case and the same weightage cannot be given to each factor in every case."
11. The prime question for consideration, therefore, is whether the additional material on the label of the defendant in the form of affix "New" and device of half-cut coconuts is sufficient to distinguish the goods of the defendant from that of the plaintiff and whether the unwary purchasers are not likely to be deceived or confused by the defendant's label as being in any way associated with or emanating from the plaintiff.
12. The trite proposition of law is that the test to be applied in such matters is as to whether a man of average intelligence and imperfect recollection would be confused. According to Kerly's Law of trade Marks and Trade Names, "Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side comparison, might well be deceived." Even otherwise, the unwary purchasers is not expected to keep the goods of two manufacturers or the labels side by side and critically examine and compare the similarities and dissimilarities thereon meticulously to decide whether he is purchasing the same goods which he had intended to buy. Deception can be caused by user of one mark or more essential features of a mark and degree of resemblance necessary to deceive or cause confusion could not be defined and the question to be asked by the Court to itself is as to whether the customers of average intelligence and imperfect recollection are likely to be confused on the first impression. (See: Amritdhara Pharmacy v. Satya Deo Gupta , in Cadila Health Care Ltd. (supra).
13. In the present case, having regard to the material placed on record by both the parties, it seems, prima facie that the defendant's label is likely to deceive an unwary purchaser of average intelligence and imperfect recollection. The additional features, in the form of a coconut in place of lotus and the prefix of the word "New" with the plaintiff's trade mark "Kamal" in my view makes no difference for an unwary purchaser of average intelligence, who is not expected to keep the goods manufactured by the plaintiff and the defendant side by side to decide which product he intends to buy. The defendant's user of the impugned trade mark, in my view, is likely to cause confusion and deception, and it cannot be permitted to use the said trade mark. As observed by the Supreme Court in Power Control Appliances and Ors. v. Sumeet Machines Pvt. Ltd. there can be only one mark, one source and one proprietor. It cannot have two origins.
14. The decision of the Supreme Court in S.M. DyChem (Supra), relied upon by learned counsel for the defendant, is of no avail, particularly when the observations of the Court in that case have been disapproved by the Apex Court in Cadila Health Care case (Supra) , by stating thus:
"As far as this Court is concerned, the decisions in the last four decades have clearly laid down that what has to be seen in the case of passing off action is the similarity between the competing marks and to determine where there is likelihood of deception or causing confusion".
15. For all these reasons, I am of the view that the plaintiff has not only made out a prima facie case for grant of ad interim injunction, the balance of convenience also lies in its favor and, if the defendant is not restrained from using the impugned trade mark, the products traded by both the parties being the same, there is every possibility of difference in standard and quality of goods. It would not only create confusion in the minds of the purchaser but may also affect the reputation of the plaintiff, causing irreparable injury.
16. Consequently, I restrain the defendant, its agents or any one acting on its behalf from manufacturing, selling or offering for sale, directly or indirectly, confectionery items under the trade mark "NEW KAMAL" till the final disposal of the suit.
17. However, since the confectionery items, inventorised by the Local Commissioner and kept in the custody of the defendant on superdari on 4 October 2001, are perishable, I am inclined to permit the defendant to sell the same under any other mark, after seeking appropriate orders of this Court.
18. It goes without saying that any observation made hereinabove is a prima facie view of matter for the limited purpose of disposal of the present applications and shall not b e construed as an expression of opinion on the merits of the case.
19. In the result, plaintiff's application (IA 9173/01) is allowed and defendant's application (IA 2824/02) is dismissed.