Delhi District Court
Mr. S. P. Garg vs M/S Sumangal Calendar Company on 18 May, 2010
IN THE COURT OF SHRI HARISH DUDANI,
ADDITIONAL DISTRICT JUDGE-15 (CENTRAL) : DELHI
Suit No.174/08/01
Mr. S. P. Garg,
Son of Shri R. C. Garg,
R/o 60/13, Ramjas Road,
Karol Bagh, New Delhi
Proprietor of Ramesh Chandra Gupta & Co. ..........Plaintiff
Versus
1. M/s Sumangal Calendar Company
2. Sumangal Press Ltd.
(Both at 172, M.M.G.S. Marg, Dadar,
Mumbai - 400 014) ..........Defendants
Date of Institution of Suit : 13.02.2001
Date of Decision : 18.05.2010
JUDGEMENT
1. This is a suit for declaration, injunction and damages, filed by the plaintiff.
2. The plaintiff has filed the abovenoted suit stating therein that the plaintiff is the proprietor of a publishing house under the name and style of Ramesh Chandra Gupta & Co. and is carrying on the business of publishing and circulating a calendar under the name and style of "Kal Jyotish Nirnaya". It is stated that the defendants claim themselves to be printers and publishers of almanacs, books, periodicals and calendars and that the plaintiff has been publishing his calendar under the trademark and name and style of "Kal Jyotish Nirnaya" since 1996. The plaintiff is running a small Suit No. 174/08/01 1 concern, however, due to his hard labour and dedication he has been able to generate substantial local market for his calendar and the plaintiff has been publishing the calendar under the name and style of "Kal Jyotish Nirnaya" since 1996 without any demur or protest from any corner and has generated immense goodwill and reputation in this calendar due to its quality and contents. It is stated in the plaint that the said calendar is published in Hindi and also gives horoscope and other information based on planetary position and configuration. The name is derived from the purpose this calendar serves that is foretelling future based on the planetary configuration. The revenue for publishing the said calendar is generated by the plaintiff primarily from advertisements etc. appearing on the calendar and to some extent from its sales value. The said calendar is sold through street hawkers or is bought by the advertisers who use it for their promotional campaigns etc. The concept of publishing such calendars is a common practice and such calendars are being published from almost all major cities by small publishers like the plaintiff and having regard to the nature of the product/good, the name given to such calendars is the descriptive name for example "Jayshree Kal Nirnaya Panchang", "Jay Hind Kal Nirnaya Panchang", "Shri Kal Nirnaya Panchang" etc.
3. It is stated in the plaint that the defendants claim themselves to be publishing a calendar under the name and style of "Kalnirnaya" and they further claim that the said word "Kalnirnaya" is registered and that they are the registered proprietor of the same. It is stated that though the Suit No. 174/08/01 2 defendants applied for registration of the said mark, the Registrar of Trade Marks refused them the registration and the only mark registered in favour of the defendants was a composite mark of a wheel with spikes and the words "Kalnirnaya", however, the words "Kalnirnaya" had to be disclaimed by the defendants and it was provided in the registration that the registration shall give no right to the defendants to the exclusive use of the word "Kalnirnaya" and, therefore, to the knowledge of the plaintiff, the defendants are not the registered proprietor of the mark "Kalnirnaya". It is stated that the word "Kalnirnaya" being descriptive of the character of the goods in question, cannot be registered and in fact, the word "Kal" denotes time and the word "Nirnaya" denotes decision. Therefore, the word "Kal Nirnaya" denotes the meaning time's decision that is foretelling future based on the planetary configuration and positions. There are many calendars in the market which use the words "Kal" and "Nirnaya" in various combinations to describe their product and no person can claim exclusive right and title in the said words or claim to be proprietor of the same. These are not invented words and are common Hindi words, which due to their meaning are clearly descriptive of the goods.
4. It is stated in the plaint that the defendant has all along been representing that its product is a magazine and not a calendar and it in fact submits its sales tax accordingly. A bare perusal of the product of the defendant would show that the defendants product also contains various articles etc. relating to subjects of diverse field and, therefore, apart from Suit No. 174/08/01 3 being a mere calendar is also a compilation of articles etc. and is therefore, governed by the provisions of the Press and Regulation of Books Act, 1867. The plaintiff was shocked and surprised to receive a notice dated 29.01.2001 purportedly issued on behalf of the defendants threatening the plaintiff of legal action on the ground that the defendants are the proprietor of the mark "Kalnirnaya" and that the plaintiff by using the mark "Kal Jyotish Nirnaya" has infringed its mark thereby making itself liable to civil as well as criminal action and the notice further claimed Rs. 1 lakh as damages from the plaintiff. The defendants had given up their claim to the exclusivity in the mark "Kalnirnaya" before the Registrar of Trade Marks and therefore cannot claim to be proprietor of the same. The said words are clearly descriptive of the goods and no person can claim exclusive right to use the same. The marks used by the plaintiff and the defendants are clearly distinct and are not at all capable of causing confusion or deception. While the mark of the plaintiff is "Kal Jyotish Nirnaya", the mark of the defendants is a wheel with spikes and the word "Kalnirnaya" and the name of the plaintiff as publisher of the calendar is also boldly mentioned at the top of he calendar. Further, while the calendar published by the plaintiff concerns only with the predictions etc. based on the planetary configuration and position, the magazine published by the defendants contains articles of diverse field etc. is is not confined to the predictions and horoscope and, therefore, the products of the plaintiff and the defendant are diverse. The defendants till the year 1999 were publishing its magazine by printing the dates in Devigiri language and it is only after 1999, magazine that the Suit No. 174/08/01 4 defendants have used English numerical for the dates looking into the success of the plaintiff's calendar. The plaintiff had adopted its mark "Kal Jyotish Nirnaya" in a bonafide manner and is a bonafide concurrent user of the same. It is stated that the plaintiff is neither guilty of infringing the mark of the defendant nor is he guilty of passing off his product as that of the defendant. The notice dated 29.01.2001 issued on behalf of the defendants is clearly a threat to the plaintiff by the defendants that they intend to initiate action or proceeding against the plaintiff for infringement of their trade mark or other like proceedings and in view of the disclaimer of the word "Kalnirnaya" by the defendants, no infringement action can lie against the plaintiff. It is stated that the threats issued by the defendants are totally unjustifiable. It is stated that this Court has got the jurisdiction to try the present dispute as the threatening notice has been received by the plaintiff within the jurisdiction of this Court. It is prayed that a decree of declaration be passed thereby declaring that the threats of legal action issued by the defendants to the plaintiff by means of their legal notice dated 29.01.2001 are unjustifiable, a decree of injunction be passed thereby restraining the defendants from continuing such unjustifiable threats or initiating any legal proceedings against the plaintiff based on such unjustifiable threats, a decree for a sum of Rs.5,00,000/- (Rupees five lacs only) alongwith future interest @ 24% per annum for damages suffered by the plaintiff on account of the unjustifiable threats of the defendants be passed in favour of the plaintiff and against the defendants.
Suit No. 174/08/01 55. The defendants have filed WS and have contested the suit.
In the WS, defendants have stated that it is not in their knowledge that the plaintiff is the proprietor of a publishing house under the name and style of Ramesh Chandra Gupta & Co. However, defendants are given to understand that the plaintiff is publishing and circulating a calendar under the name and style of "Kal Jyotish Nirnaya" in infringement of the trademark rights of the defendants. It is admitted that the defendants are the printers, publishers and are in the business of producing and marketing of almanacs, books, periodicals and calendars in the name and trademark of "KALNIRNAYA" in the Devanagiri script. It is denied that the plaintiff has been publishing his calendar under the trademark and name and style of "Kal Jyotish Nirnaya" since 1996. It is stated that the plaintiff has infringed the trade mark rights of the defendants and is publishing and circulating the calendars under the name of "Kal Jyotish Nirnaya" of which the leading features are interalia the words KAL NIRNAYA. It is denied that the plaintiff has been publishing the calendar under the name and style of "Kal Jyotish Nirnaya" since 1996 without any demur or protest from any corner and has generated immense goodwill and reputation in this calendar due to its quality and contents. It is denied that the said calendar is published in Hindi and also gives horoscope and other information based on planetary position and configuration. It is stated that the defendants are pioneers in the field of establishment of the practice of earning of sizeable revenue in relation to the Suit No. 174/08/01 6 printing, publishing and the marketing of calendars, almanacs etc. and due to the method of publications and the high quality of the paper used, the printed matter and the display mode, the goods of the defendants are in high demand amongst all cross sections of the society and the name KAL NIRNAY has become synonymous in the identification of the goods of the defendants. It is stated that the publication of the calendars etc in the name and style of KAL NIRNAY has been the exclusive domain of the defendants since the year 1972. It is stated that the prominent features in the words as "Jayshree Kal Nirnaya Panchang", "Jai Hing Kal Nirnaya Panchang", "Shri Kal Jyotish Panchang" are not KAL NIRNAY but the said words are used only as supplemental words. However, in case of the name used by the plaintiff the most prominent features are KAL NIRNAY and thereby leading to the infringement of the trade mark rights of the defendants and the defendants reserve their rights to initiate necessary legal action in these matters. It is denied that defendants' claim to be the registered proprietor of the mark "Kalnirnaya" is false and misleading. It is also denied that the word "Kalnirnaya" being descriptive of the character of the goods in question, cannot be registered and no person can claim exclusive right and title in the said words or claim to be proprietor of the same. It is denied that these are not invented words and are common Hindi words, which due to their meaning are clearly descriptive of the goods. It is denied that the defendants have all along been representing that its product is a magazine and not a calendar and it is submitting its sales tax accordingly. It is also denied that the defendants have given Suit No. 174/08/01 7 up their claim to the exclusivity in the mark "Kalnirnaya" before the Registrar of Trade Marks and therefore, cannot claim to be proprietor of the same. It is further denied that the name/title used by the plaintiff and defendants are clearly distinct and are not at all capable of causing confusion or deception. It is denied that the defendants till the year 1999 were publishing its magazine by printing the dates in Devanagiri language and it is only after 1999 that the defendants have used English numerical for the dates only after looking into the success of plaintiff's calendar. It is stated that the change was made in response to the market demand. The defendants have also denied rest of the pleadings and have prayed that the suit be dismissed.
6. The plaintiff has filed replication to the WS of defendants. In the replication, the plaintiff has reiterated the contents of the plaint and has controverted the allegations of defendants as alleged in the WS. It is denied that the use of the mark "Kal Jyotish Nirnaya" is an infringement of the trademark rights of the defendant. It is also denied that defendants are pioneers in the field of establishment of the practice of earning sizeable revenue in relation to printing, publishing or marketing of calendars, almanacs etc and the calendars of the defendants are in high demand in any section of the society or that the word "KALNIRNAY" has become synonymous with identification of the goods of the defendant.
7. From the pleadings of the parties, following issues were framed by my ld. Predecessor on 18.07.2005 :-
Suit No. 174/08/01 81. Whether the plaintiff is entitled to relief claimed? OPP.
2. Relief.
8. The plaintiff examined himself as PW-1 and PE was closed on 15.10.2007.
9. Defendants examined Shri Jayraj Jayant Salgaokar, partner of defendant no. 1 and Managing Director of defendant no.2 as DW-1 and DE was closed on 10.12.2008.
10. I have heard the ld. Counsel for parties and carefully perused the record. My findings on the specific issues are as under :-
11. Issue No. 1The case of the plaintiff is that the plaintiff is in the business of publishing and circulating a calendar under the name and style of "Kal Jyotish Nirnaya" and the plaintiff has been publishing the said calendar since the year 1996 and the said calendar is published in Hindi and also gives horoscope and other information based on planetary position and configuration and the said name has been derived from the purpose of this calendar which it serves i.e. foretelling future based on the planetary configuration and the defendants claim themselves to be publishing a calendar under the name and style of "Kalnirnaya" and claim themselves to be registered proprietor of the said trade mark "Kalnirnaya" and the defendants are not entitled to exclusive use of the word "Kalnirnaya" and the defendants are not registered proprietor of the same. The plaintiff has pleaded that the word "Kal"Suit No. 174/08/01 9
denotes time and the word "Nirnay" denotes decision and, therefore, the word "Kalnirnaya" denotes "Time's Decision"
i.e. foretelling future based on the planetary configuration and position. Moreover, the marks used by the plaintiff and the defendants are distinct and are not capable of causing confusion and deception as the mark of the plaintiff is "Kal Jyotish Nirnaya" and the mark of the defendants is a wheel with spikes and the word "Kalnirnaya" and the said mark "Kal Jyotish Nirnaya" was adopted by the plaintiff in a bonafide manner and the plaintiff is a bonafide concurrent user of the same.
12. The defendants have pleaded that publication of the calendar under the name and style of "Kalnirnaya" has been the exclusive domain of the defendants since the year 1972. The defendants have pleaded that on 18.01.1977, the defendants applied for and obtained registration of the composite trade mark interalia containing the word KAL NIRNAY in respect of panchangs, books, periodicals and the calendars under no. 322232 in Class 16. However, at the time of registration of the composite trade mark, on the advice of the Registrar, the defendants had disclaimed the expression "Kalnirnaya" since the defendants did not lead evidence of the user and acquired distinctiveness of the said trade mark. In para 7 of the WS, the defendants have stated that they subsequently submitted fresh application for registration of the trade mark without disclaimer of the word and the said application is pending with the registry. The defendants have further stated that disclaimer of the word in the first registration does not take away common law right of Suit No. 174/08/01 10 the defendants to the exclusive use of the word "Kalnirnaya".
In para 8 of the WS, the defendants have admitted that the literal meaning of the word "Kal" denotes time and the word "Nirnaya" denotes decision. The plea of the defendants is that although the literal meaning of the word "Kalnirnaya" denotes "Time's Decision" i.e. foretelling future on the basis of planetary configuration and position, in the instant context the said words are distinguishing and prominent features which pertains to the identification of the goods of the defendants which has been established over a long period of time.
13. In Century Traders Vs. Rohan Lal Duggar & Co. & Others 1978 Delhi 250, reference was made to Consolidated Foods Corporation vs. Brandon and Co. Private Ltd., AIR 1965 Bom 35 wherein it was observed :-
"12. A trader acquires a right of property, in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection directly the article having assumed a vendible character is launched upon the market. Registration under the statute does not confer any new right to the mark claimed or any greater rights than what already existed at common law and at equity without registration. It does, however, facilitate a remedy which may be enforced and obtained throughout the State and it established the record of facts affecting the right to the mark. Registration itself does not create a trade mark. The trade mark exists independently of the registration which merely affords further protection under the Statute. Common law rights are left wholly unaffected. Priority in adoption and use of a trade mark is Suit No. 174/08/01 11 superior to priority in registration. ........................................................................
14. Thus, the law is pretty well settled that in order to succeed at this stage the appellant had to establish user of the aforesaid mark prior in point of time than the impugned user by the respondents. The registration of the said mark or similar mark prior in point of time to user by the appellant is irrelevant in an action for passing off and the mere presence of the mark in the register maintained by the trade mark registry did not prove its user by the persons in whose names the mark was registered and was irrelevant for the purposes of deciding the application for interim injunction unless evidence had been led or was available of user of the registered trademarks.
14. In N. R. Dongre & others. vs. Whirlpool Corporation and others, AIR 1995 Delhi 300, it was held that :
"29. Thus the right created by Section 28(1) of the Act in favour of a registered proprietor of a trade mark is not an absolute right and is subservient to other provisions of the Act namely Sections 27(2), 33 etc. Neither Section 28 nor any other provision of the Act bars an action for passing off by an anterior user of a trade mark against a registered user of the same. In other words registration of a trade mark does not provide a defence to the proceedings for passing off as under
Section 27(2) of the act a prior user of trade mark can maintain an action for passing off against any subsequent user of an identical trade mark including a registered user thereof. Again this right is not affected by Section 31 of the Act, under which the only presumption that follows from registration of a mark is its prima facie evidentiary value about its validity and nothing more. This presumption is not an unrebuttable one and can be displaced. Besides Section 31 is not Suit No. 174/08/01 12 immune to the over-riding effect of Section 27 (2)."
"The rights of action under Section 27 (2) are not affected by Section 28(3) and Section 30(1)(d). Therefore, registration of a trade mark under the Act would be irrelevant in an action for passing off. Registration of a trade mark in fact does not confer any new right on the proprietor thereof than what already existed at common law without registration of the mark. The right of good will and reputation in a trade mark was recognized at common law even before it was subject of statutory law.
Prior to codification of trade mark law there was no provision in India for registration of a trade mark. The right in a trade mark was acquired only by use thereof. This right has not been affected by the Act and is preserved and recognized by Sections 27(2) and
33."
15. In Bimal Govindji Shah vs. Panna Lal Chandu Lal, 1997 PTC (17) it was held that :
9."..............................Thus a conjoint reading of the aforesaid provisions persuaded me to conclude on a reading of the aforesaid provisions conjointly the natural deduction is that the right conferred by Section 28(1) of the Act in favour of a registered proprietor of a trade mark is not an absolute right but is subject to the other provisions of the Act namely -Section 27(2) and 33. It is also to be noted that neither Section 28 nor any other provision of the Act prohibits an action for passing off by an anterior user of a trade mark against a registered user of the same. In other words registration of a trade mark does not provide a defence to the proceedings for passing off as provided for under Section 27 (2) of the Act. A prior user of a trade mark is Suit No. 174/08/01 13 entitled to maintain an action against a subsequent user of identical trade mark including registered user thereof.
16. As per aforesaid judgments, it is well settled that registration is irrelevant in case of passing off and a prior user of trade mark is entitled to maintain an action against the subsequent user of identical trade mark including registered user thereof.
17. However, the plea which has been raised by the defendants is that the word "Kalnirnaya" denotes meaning Time's Decision i.e. foretelling future on the basis of planetary configuration and position and, therefore, the defendants cannot claim exclusive right and title in he said word or claim to be the registered proprietor of the same. In para 7 of the plaint, he plaintiff has stated that the defendants applied for registration of the said mark but the Registrar of Trade Marks refused the registration and the only mark registered in favour of the defendants was wheel with spikes and the word "Kalnirnaya". However, the word "Kalnirnaya" had to be disclaimed by the defendants as it was provided in the registration that registration shall give no right to the defendants to the exclusive use of the word "Kalnirnaya". In para 7 of WS, the defendants have stated that on 18.01.1977, the defendants applied for and obtained the registration of composite trade mark containing the word "Kalnirnaya" in respect of panchangs, books, periodicals and the calendars under no. 322232 in Class 16 and on the advice of the Registrar, defendants had to disclaim the expression "Kalnirnaya". In para 8 of the WS, the defendants have admitted that the literal meaning of word Suit No. 174/08/01 14 "Kal" denotes time and the word "Nirnaya" denotes decision and literally meaning of the word "Kalnirnaya" denotes "Time's Decision" i.e. foretelling future on the basis of planetary configuration and position.
18. The defendants have not filed the certificate of registration of his trade mark in the present file. In the examination-in- chief, DW-1 stated that he has filed the documents in another suit bearing no. 175/08 - Sumangal Calendar Co. vs. Ramesh Chandra Gupta & Co., and, therefore, some documents have been inadvertently exhibited in his affidavit Ex.DW1/A. In para 11 of the affidavit Ex.DW1/A, DW-1 has stated that it is a composite trade mark interalia containing the word "Kalnirnaya" which has been registered under no. 322232 in class 16. However, at the time of considering the application of the defendants for registration of the said trade mark, the Registrar had raised the objection to the registrability of the said composite mark under Section 9 of the Act on the ground that the word "Kalnirnaya" was not considered to be prima facie distinctive and as the defendants did not lead evidence of user and acquired distinctiveness of the said trade mark for lack of proper legal advice, the Registrar asked defendant no. 1 to disclaim the expression "Kalnirnaya" while accepting the defendant no. 1's said trade mark for registration and accordingly defendant no. 1 agreed to the condition of disclaimer of the said word. As per para 11 of the affidavit Ex.DW1/A, the trade mark which has been registered of defendant no. 1 is mark consisting of wheel and spikes and the word "Kalnirnaya". In para 11 of the affidavit Ex.DW1/A, the Suit No. 174/08/01 15 defendant itself has admitted that the condition of registration of aforesaid mark is subject to disclaimer of the expression "Kalnirnaya".
19. In Rich Products Corporation & Anr. vs. Indo Nippon Food Ltd., 2010 (42) PTC 660 (Del.), our own Hon'ble High Court has held :
32.6 The rights conferred by registration of a mark are encapsulated in Section 28 of the Trade Marks Act. Section 28 provides that subject to other provisions of the Trade Marks Act the registration of the mark shall confer on the owner exclusive right of use of the trademark in relation to the goods or services in respect of which the mark is registered, and consequently enable a registered proprietor to obtain necessary relief in the event of infringement of his trademark, in the manner provided in the Act. This is subject to the mark being a valid. The validity of the mark in an action for infringement can be enquired into either by the court or the statutory authority depending on where and at which stage the action is pending. [See Lowenbrau AG & Anr. v. Jagpin Breweries Ltd. & Anr., 157 (2009) DLT 791]. The right to exclusive use of a registered mark conferred upon the owner of such a mark is subject to conditions and limitations to which the registration is subjected to. In the context of the present case in my view sub-section (2) of Section 28 of the Trade Marks Act would bring within its ambit any disclaimers which are set out at the time of registration of the mark. (emphasis supplied)
36. Since lengthy submissions were made by both sides with respect to whether or not "WHIP TOPPING" is a generic and/or descriptive expression, it may be necessary to briefly touch upon this aspect of the matter.Suit No. 174/08/01 16
The word "generic" ordinarily would mean that which has character of or belongs to a genus or class (see New Shorter Oxford English Dictionary, Edition 1993 at page 1074);
whereas the word "descriptive" would mean that which seeks to describe, characterized by description, consist of or concern with description or observable things or qualities (see New Shorter Oxford English Dictionary, Edition 1993 at page 644). Whether a word or expression is "generic" or "descriptive" or both is dependent on the facts and circumstances arising in a particular case. It is quite possible that a word or expression which is "generic", i.e. which refers to a genus or a class is also descriptive as the word by itself characterize the qualities of the product. The line dividing the two in certain cases may get blurred. The word "whip" by itself means, in the context of the present case, a light fluffy desert made with whipped cream or beaten eggs (see New Shorter Oxford English Dictionary, Edition 1993 at page 3670), while the word "topping" means a top layer or garnish put on food (see New Shorter Oxford English Dictionary, Edition 1993 at page3342). Similarly, the word "cream" means part of liquid that gathers at the top; froth etc. or a liquid rich in droplets or particles of the dispersed phase that forms a separate (especially upper) layer in an emulsion or suspension when it is allowed to stand or is centrifuged (see New Shorter Oxford English Dictionary, Edition 1993 at page 543). The words "Whip Topping", when juxtaposed would, in my view, be representative of toppings or garnishes for food items which have cream like quality.
Therefore, it is, in my opinion, both "generic" as well as "descriptive" of the product. The submission of Mr. Gupta that the words "WHIP TOPPING" is distinctive because it relates to a non-dairy product is not substantiated by any evidence on record which would demonstrate that the words "WHIP TOPPING" are associated only with a Suit No. 174/08/01 17 cream which is not dairy based.
20. In Rhizome Distilleries P. Ltd. & Ors. vs. Pernod Ricard S.A. France & Ors., 2010 (42) PTC 806 (Del.) (DB), our own Hon'ble High Court held :
15. Very recently, the Division Bench of this Court in Cadila Health Care Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd., MANU/DE/2282/2009 : 2008 (36) PTC 168 [Del] upheld the decision of a Single Judge of this Court refusing an injunction against the use of the word "Sugar Free'. The Plaintiff is the manufacturer of the artificial sweetener sugar free, where as the Defendant had stated that its ice creams were sugar free or free of sugar. It was held that exclusivity could not be claimed in respect of ordinary words (or if we may say descriptive words) which are publici juris. The Division Bench also quoted with the approval the decision of the High Court of Bombay in Asian Paints Limited v. Home Solutions Retail (India) Ltd., 2007 (35) PTC 697 [Bom], wherein the learned Single Judge had declined an injunction holding that the words 'Home Solutions' are to be commonly found.
Jural opinion, therefore, is an averse to granting exclusivity to ordinary words. Our esteemed and learned Brother, Mukul Mudgal, J., had noted that 'Sugar Free' is neither a coined word nor an unusual juxtaposition of two English words especially when such expressions are commonly used.
Although the Bench expressed their reservations for the decision of the European Court of Justice in Proctor & Gamble v.
Office of Harmonisation in the International Market (OHIM), (2002) RPC 17 (famously known as "Baby Dry Case"), it was noted that the proprietary character could be accorded to expressions which are syntactically unusual. In other words, there must be something unique to the choice of the Suit No. 174/08/01 18 word; it should neither be descriptive nor laudatory since everyone would be entitled to use such word(s). It would be wise, therefore, for any trader or manufacturer to use a coined or unique word if he expects proprietary right over and a consequent injunction to issue in respect of the user of such trademarks by rivals. If a new venture dealing in computers adopts the name 'Apple', we would expect Courts not to hesitate to grant an injunction against its user by third parties since the choice of the word 'Apple' has no connection whatsoever with computers. Obviously, if a party adopts the mark 'Imperial Apples' in connection with the apple trade, Courts would be loathe to grant an injunction for either word.
24. It is our analysis that no exclusive or proprietary rights can be claimed by either of the parties before us in respect of the word IMPERIAL which is not only in common parlance to be found in every dictionary, but also is laudatory in nature as it alludes to royalty or grandeur. With respect, we are not convinced that IMPERIAL refers only to royalty, empowering only such persons to take litigative umbrage. Illusions of royalty and grandeur are one of the sentiments resulting from imbibing spirits, and, therefore, IMPERIAL may justifiably be seen as descriptive.
21. The plea which has been raised by the plaintiff is that the word "Kalnirnaya" is not an invented word or coined word by the defendants and the defendants are not entitled to the exclusive use of the same as it is a word which has dictionary meaning and, moreover, as per the disclaimer as set out at the time of registration, the defendants are excluded from using the word "Kalnirnaya" to the exclusion Suit No. 174/08/01 19 of others. PW-1 Shri S. P. Garg stated in cross-examination that he did not get the said name registered with the Registrar of Trade Marks in the year 1996 and, thereafter, he voluntarily stated in the cross-examination that the words are of common connotation. No suggestion was given to PW-1 to the effect that the words "Kalnirnaya" are not of common connotation. Rather, the defendants themselves have admitted in para 8 of the WS that the literal meaning of the word "Kal" denotes time and the word "Nirnaya" denotes decision. In para 11 of the affidavit DW1/A, the defendant has admitted that there was condition of disclaimer of the word "Kalnirnaya" while his trade mark was registered under no. 322232 in class 16. In the circumstances, in view of aforesaid decisions, the defendant no. 1 is not entitled to exclusive user of the word "Kalnirnaya".
22. The contention of the plaintiff is that the mark which has been adopted by the plaintiff is "Kal Jyotish Nirnaya" while the mark of the defendants is a composite mark consisting of wheel with spikes and the word "Kalnirnaya" and there is no deceptive similarity between the two marks.
23. In M/s Pidilite Industries Pvt. Ltd. vs. M/s Mittees Corporation and Another, 1988 (2) Arbitration Law Reporter 4 (Delhi), it was held :-
"......................Before, I take up the comparison of the two marks or the similarity or dissimilarity on the containers it would be opposite to state some well settled principles governing these matters, namely (1) it is always a question of fact in each case whether the deception or confusion is likely to Suit No. 174/08/01 20 be caused or not by use of the impugned trade mark; the court has to put itself in the position of an average customer and ask a question whether there is likelihood of deception or confusion or not and then answer the question on that basis, (2) the marks must be compared as a whole. It is not rights to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case, there is no sufficient similarity to cause confusion. The totality of the trade marks is to be seen to find out whether there is likelihood of deception or confusion or mistake in the minds of persons accustomed to the existing trade mark, (3) the likelihood of confusion or deception is to be seen in relation to average unwary customer, (4) it is the tendency to mislead or cause confusion that forms the gist of passing off action and the plaintiff need not establish the actual deception."
24. In the present case, the mark of the plaintiff is "Kal Jyotish Nirnaya" while that of the defendants is wheel with spikes and the word "Kalnirnaya". The plaintiff has contended that there is no phonetic similarity between the two marks and, moreover, they are not likely to cause any confusion as they are different in presentation and number of alphabets.
25. In Dabur (S. K. Burman) vs. Vikas Pharma, 1983 PTC 179, it was held :-
"Secondly. On the question whether there is any deceptive similarity between the two trade marks in question, I am of the opinion that there is a phonetic similarity. The vocal sounds of the two very much resemble. They produce the same sounds of speech with a slight difference of 'A'. In the pronunciation of word HAJMOLA AND HAZMOL. There is Suit No. 174/08/01 21 hardly any difference of note. HAJMOLA is the plaintiff's trade mark. Hazmol is the trade mark of the defendant except that the suffix 'A' is in addition in the plaintiff's trade mark, there is not much substantial difference between the two. The plaintiff has used the word 'J'. the defendant has used the word 'Z'. This is a distinction without any difference. The only difference is that the defendant do not have the word 'A" at the end of their trade mark 'HAZMOL'. In my opinion the buyers of the products are likely to be deceived and confused if the defendants are allowed to sell their products in the market........................."
26. In Lakme Ltd. vs. Subhash Trading, 1996 PTC (16), it has been held :-
9. 'In the case of K. R. Chinna Krishna Chettiar Vs. Ambal & Co. and another, reported in AIR 1970 SC 146 it has been held that the resemblance between the two marks must be considered with reference to the ear as well as the eye and ocular comparison is not always the decisive test. Therefore, even if there be no resemblance between the two marks that does not matter when there is a close affinity of sound between the distinctive features of the two marks. The Supreme Court further pointed out that merely because the distinctive words used in both the marks have distinctive meaning it cannot be said that the phonetic resemblance does not lead to confusion, when it is likely that majority of the customers are not capable of understanding the fine distinction between the meanings of the two words. In the same case the Supreme Court was called upon to consider whether there is striking similarity and affinity of sound between the words "AMBAL" and "ANDAL". After considering various decisions, the Supreme Court held that there is a close affinity of sound between the words "AMBAL" and "ANDAL". Similarly in the case Suit No. 174/08/01 22 of Ruston Vs. Zamindara Engg. (supra), the Supreme Court came to consider whether there was resemblance between the words "RUSTON" and "RUSTAM", and on consideration of various decisions came to uphold the decision of the High Court that there was deceptive resemblance between the words "RUSTON" and "RUSTAM" and therefore, the use of the bare word "RUSTAM"
constituted clear infringement of the plaintiff's trade mark "RUSTON"
13 ................................................................... .When both the words are articulated, it would be difficult for an ordinary prudent man to distinguish between the two sounds produced by the two words. Applying the test of phonetic resemblance as laid down by the Supreme Court I am of the view that there is a striking resemblance between the two words and there is a real danger of deception and confusion being caused by the two marks in view of the similarity and affinity of sounds between the words "LIKE ME" and "LAKME".
27. In Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories, AIR 1965 Supreme Court 980, it was held that in an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is in imitation, no further evidence is required to establish that the plaintiff's rights are violated.
28. In Corn Products Vs. Shangrila Food Products, AIR 1960 SC 142, the Hon'ble Supreme Court observed :-
"The question whether the two marks Suit No. 174/08/01 23 are likely to give rise to confusion or not is a question of first impression. It is for the Court to decide that question. It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole."
Further, it is held in the said ruling as follows :
"Again in deciding the question of similarity between the two marks, we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them."
29. The plaintiff appeared in the witness box as PW-1 and adduced evidence by way of affidavit Ex.P1. The plaintiff has filed the calendar published by the plaintiff which are Ex.PW1/1 to Ex.PW1/3 and the calendar of the defendants which is Ex.PW1/5. A comparison of the mark of the plaintiff "Kal Jyotish Nirnaya" as appearing on Ex.PW1/1 to Ex.PW1/3 with that of the defendants which is wheel with spikes and the word "Kalnirnaya" as appearing on Ex.PW1/5, show that the word "Kal" and "Nirnaya" in Ex.PW1/1 to Ex.PW1/3 are separated by insertion of the word "Jyotish" and in the mark of the defendants as appearing in Ex.PW1/5, Suit No. 174/08/01 24 the distinguishing feature of the mark of the defendants is wheel with spikes and on the right top of the said wheel ® is mentioned in order to convey that the said mark is registered. The manner and font in which the mark of the plaintiff is depicted on Ex.PW1/1 to Ex.PW1/3 and as depicted by the defendants on Ex.PW1/5 are different and it cannot be said that on first look, the same will cause confusion or deception in the mind of a customer or the customer who intends to buy products of defendant no. 1 would end up buying the products of the plaintiff.
30. Another plea which has been raised by the plaintiff is that the plaintiff had adopted the mark "Kal Jyotish Nirnaya" in bonafide manner and the plaintiff is bonafide concurrent user of the same. The plea of the plaintiff is that they have been publishing the calendar under the trade mark and name and style of "Kal Jyotish Nirnaya" since the year 1996. In para 4 of he affidavit Ex.P-1 also the plaintiff has stated that they have been publishing calendar under the name "Kal Jyotish Nirnaya" since the year 1996. In the cross-examination of PW-1, no suggestions have been given to the effect that the plaintiff has not been publishing the calendar "Kal Jyotish Nirnaya" since the year 1996. In the cross-examination of PW-1, the defendants had put a question to him to the effect that is there any record available with the plaintiff regarding publication of "Kal Jyotish Nirnaya" prior to 1996. In the cross-examination of PW-1, the defendants had put question to PW-1 to the effect that even after receipt of notice from the defendants in February, 2001, the plaintiff did not take any steps for registration of name of his calendar i.e. "Kal Suit No. 174/08/01 25 Jyotish Nirnaya". The plaintiff has filed on record copy of journal wherein the application of the defendants for registration of trade mark "Kalnirnaya" alongwith wheel and spikes was published and the same is Ex.PW1/7 and in Ex.PW1/7, there is a disclaimer that registration of the trade mark shall give no right to the exclusive use of the word "Kalnirnaya" appearing on the mark in Devnagiri script. As the defendants do not have any exclusive right to use of the work "Kalnirnaya" as per the disclaimer in Ex.PW1/7 and as there is no deceptive similarity between the two marks as discussed above, hence, it cannot be said that the mark "Kal Jyotish Nirnaya" has not been adopted by the plaintiff bonafidely.
31. By way of present suit, the plaintiff has prayed for a decree of declaration thereby declaring that the threats of legal action issued by the defendants to the plaintiff by means of their legal notice dated 29.01.2001 are unjustifiable. The plaintiff appeared in the witness box as PW-1 and in para 18 of his affidavit Ex.P1, the plaintiff has stated that the notice dated 29.01.2001 issued on behalf of the defendants is clearly a threat by the defendants to the plaintiff that they intend to initiate action against the plaintiff for infringement of their trade mark and the notice dated 29.01.2001 is Ex.PW1/8. The suit was initially filed before the Hon'ble High Court of Delhi and on 13.02.2001, the Hon'ble High Court was pleased to pass interim order and the Hon'ble High Court observed :-
Reliance has been placed on Exxon Corporation vs. Exxon Packing Systems Pvt. Ltd., AIR 1989 Madras 182 in support of the Suit No. 174/08/01 26 contention that the expression 'threats' used in Section 120(1) would take within its fold a lawyer's notice also.
32. As per aforesaid order of the Hon'ble High Court, the expression 'threat' used in Section 120(I) of Trade and Merchandise Marks Act, 1958 would also take within its hold the notice dated 29.01.2001 Ex.PW1/8 issued on behalf of the defendants. Accordingly, the plaintiff is entitled to decree of declaration, as prayed.
33. The plaintiff has also prayed for decree of injunction thereby restraining the defendants from continuing such unjustifiable threats or initiating any legal proceedings against the plaintiff based on such unjustifiable threats. Section 41(f) of the Specific Relief Act, 1963 provides that an injunction cannot be granted to prevent, on the ground of nuisance, an act of which it is not reasonably clear that it is a nuisance. The plaintiff has sought a decree of injunction on the ground that in case defendants extend unjustifiable threats or initiate any legal proceeding based on those threats, however, it is not clear at this stage that the threats, if any, in future would be unjustifiable or not and the same have to be adjudicated on their own merits. Accordingly, the plaintiff is not entitled for the decree of permanent injunction, as prayed.
34. The plaintiff has also prayed for decree for a sum of Rs.5,00,000/- (Rupees five lacs only) alongwith interest @ 24% per annum for damages suffered by the plaintiff on account of unjustifiable threats of the defendants. Although, in para 19 of the affidavit Ex.P1, it is stated by the plaintiff Suit No. 174/08/01 27 that he suffered blood pressure and have been under tremendous stress and has been contacting for legal advice and he suffered loss in the business but the plaintiff has not produced any evidence to this effect. PW-1 stated in the cross-examination that he has no documentary proof of the damages suffered by him on account of the threats given by the defendants. As the plaintiff has failed to prove that he has suffered any damages, in the circumstances, the plaintiff is not entitled to decree of damages, as claimed. This issue stands answered accordingly.
35. Issue No. 2 (Relief) In view of aforesaid discussion and findings on issue no. 1 above, suit of the plaintiff is decreed for declaration thereby declaring that the threats of legal action issued by the defendants to the plaintiff by means of their legal notice dated 29.01.2001 are unjustifiable. Parties are left to bear their own costs. Decree sheet be prepared accordingly. File be consigned to Record Room.
(Announced in the open Court (HARISH DUDANI) on 18 May, 2010 ) th ADDL. DISTT. JUDGE-15 (CENTRAL) DELHI Suit No. 174/08/01 28