Gauhati High Court
Dura Roof Private Limited vs Dyna Roof Private Limited on 28 August, 2017
IN THE GAUHATI HIGH COURT
(THE HIGH COURT OF ASSAM; NAGALAND; MIZORAM AND ARUNACHAL
PRADESH)
FAO 47/2017
FAO 50/2017
DURA ROOF PRIVATE LIMITED
A CO. REGISTERED UNDER THE PROVISIONS OF THE COMPANIES ACT, 1956
AND HAVING ITS REGISTERED OFFICE AT ANANDI BHAWAN, ALLAHABAD
BANK BUILDING, 5TH FLOOR, SRCB ROAD, FANCY BAZAR, GUWAHATI,
KAMRUP, ASSAM-781001
....... Appellant
Vs.
DYNA ROOF PRIVATE LIMITED
A CO. INCORPORATED UNDER THE PROVISIONS OF THE COMPANIES ACT
1956 AND HAVING ITS REGISTERED OFFICE AT 10 TH MILEMAWSWAMI VILL.
G.S. ROAD, IN THE DIST. OF RI-BHOI, MEGHALAYA 793101 AND HAS ITS
CORPORATE OFFICE AT 5TH FLOOR, ANIL PLAZA, G.S. ROAD, GUWAHATI,
ASSAM 781005
.......Respondent
BEFORE HON'BLE MR. JUSTICE MIR ALFAZ ALI For the Appellant : Mr. K.N. Choudhury, Sr. Advocate Mr. D. Barua, Advocate For the Respondent : Mr. M.K. Choudhury, Sr. Advocate Date of hearing : 10.08.2017 Date of Judgment & Order : 28.08.2017 JUDGMENT AND ORDER(CAV) In both the appeals, i.e. FAO No. 50/2017 and FAO No. 47/2017, Dura Roof Private Limited, a company registered under the Companies Act is the FAO 47/2017 FAO 50/2017 Page 1 of 26 appellant and Dyna Roof Private Limited, a company, registered under the Companies Act is the respondent.
2. In FAO 50/2017, the order dated 02.08.2017 passed by the learned Additional District Judge, Kamrup in Misc. (J) Case No. 59/2017 arising out of TS 3/2017, granting temporary injunction, restraining the appellant from using the trade mark 'Dura Roof' or any other mark identical or similar to the plaintiff's trademark 'Dyna Roof' either as a trade mark or trade name and in FAO 47/2017, the order dated 09.06.2017 passed by the learned Addl. District Judge, Kamrup in Misc. (J) Case No. 15/2017, arising out of TS 2/2017, granting temporary injunction, restraining the appellant from using the trade mark 'Dura Lume' or any other mark identical or similar with the plaintiff's trade mark 'Dyna Lume' and 'Dyna Lume 3 G Roofing Sheets' are under challenge.
3. On consent of both the parties, both the appeals are taken for disposal at the stage of admission.
4. The respondent Dyna Roof Pvt. Ltd. (hereinafter referred to as the plaintiff) instituted TS 2/2017 for damages, declaration and permanent injunction restraining the DURA ROOF PVT. LTD (hereinafter referred to as defendant) from using the mark Dura Lume or any other mark identical or similar to the plaintiff's mark Dyna Lume,in relation to colour quoted galzvalume/zincalume sheets. The case of the plaintiff is that the defendant infringed the well known trade mark of the plaintiff 'Dyna Lume' and Dyna Lume the 3 G Roofing Sheets'. The plaintiff has been engaged in manufacturing and marketing of galzvalume/zincalume sheet and other accessories under the trade mark 'Dyna Lume'. The plaintiff has been the leading business house in North Eastern India in manufacturing and FAO 47/2017 FAO 50/2017 Page 2 of 26 marketing the roofing sheets and its accessories since 2004 and trade mark 'Dyna Lume' was registered on 24th September, 2007. In or around the month of September, 2016, the plaintiff through its marketing and sales team came to know that the defendant was carrying on business activities similar to that of the plaintiff and was selling its variety of roofing sheets under the mark 'Dura Lume', which is deceptively similar to the trade mark 'Dyna Lume' of the plaintiff. The plaintiff also came to know that the defendant has applied for registration of the said infringed mark 'Dura Lume', which has been objected by controller of patents, design of trade mark. By adopting the mark 'Dura Lume', which is deceptively similar to that of the plaintiff's registered trade mark 'Dyna Lume' and 'Dyna Lume the 3 G Roofing Sheets',defendant clearly infringed the plaintiff's trademark. The plaintiff further stated that its popular and well known trademark 'Dyna Lume' has earned huge reputation in the market. Defendant's trademark 'Dura Lume' is deceptively similar to plaintiff's trademark both visually and phonetically and defendant is manufacturing and marketing identical goods under the said infringing mark. Adoption of the infringing mark by the defendant is likely to cause confusion on the part of the public, which would cause irreparable loss and injury to the plaintiff. Along with the suit, the plaintiff has also filed a petition for temporary injunction restraining the defendant from using the alleged infringed mark 'Dura Lume' or any other mark, label etc., which is identical or similar to the plaintiff's trade mark 'Dyna Lume' and 'Dyna Lume the 3 G Roofing Sheets' either as trade mark or trade name, style, domain name and corporate name etc.
5. The plaintiff also instituted T.S. 3/2017 against the defendant for trademark infringement, passing off etc. The case of the plaintiff in TS 3/2017 was that in or around in the month of September, 2016, the defendant started carrying on business activities similar to that of plaintiff FAO 47/2017 FAO 50/2017 Page 3 of 26 under the trade mark 'Dura Roof', which is deceptively similar to that of the plaintiff's trade mark 'Dyna Roof'. The plaintiff also came to know that the defendant applied for registration of the said mark 'Dura Roof', which has been objected by controller of patents, design and trade mark. It has been stated that infringed mark of the defendant, 'Dura Roof', is deceptively similar to the plaintiff's trade mark 'Dyna Roof' and inspite of knowing about the well known trade mark of the plaintiff, the defendant has been manufacturing and marketing the identical goods under the said infringed mark, which is visually and phonetically similar to that of the plaintiff's trade mark. The plaintiff also stated that the defendant has been using logo, trade dress and colour combination, which are also deceptively similar to that of plaintiff's logo, trade dress and colour, which gives rise to confusion in the minds of the common people. It has been stated that the defendant's infringing mark 'Dura Roof' for the identical goods,is structurally, visually as well as phonetically similar to the plaintiff's trade mark 'Dyna Roof'. Along with the suit, the plaintiff has filed a petition for temporary injunction restraining the defendant from using the alleged infringed mark 'Dura Roof' or any other mark, which is identical or similar to the plaintiff's trade mark 'Dyna Roof' either as trade mark or trade name, style, domain name and corporate name etc.
6. Defendant's case in both the suits are more or less similar. The case of the defendant is that the defendant's mark 'Dura Lume' and 'Dura Roof' do not in any way infringe the right of the plaintiff to use its trade mark inasmuch as the trade mark 'Dura Lume' or 'Dura Roof' do not bear any structural, visual or phonetic similarity with the plaintiff's trade mark. It has been stated that the trade mark 'Dura Lume' and 'Dura Roof' is an absolute intellectual property of the defendant and the same has no manner of similarity with the mark of the plaintiff or any other mark in the market. In FAO 47/2017 FAO 50/2017 Page 4 of 26 reply to the petition for injunction, the respondent denied that by use of mark 'Dura Lume' and 'Dura Roof' loss or damage has been caused to the plaintiff. It has also been stated that the plaintiff having quantified the loss in the plaint, there is no question of suffering irreparable loss,by the plaintiff as, in the event of success of plaintiff's suit, the plaintiff can be compensated adequately in terms of money. In respect of temporary injunction restraining the use of the mark 'Duralume', it has been stated that the plaintiff has misrepresented the facts by not disclosing properly the status of its application for registration of the trade mark, Dyna Lume which was abandoned on the date of filing of the suit and therefore, the plaintiff has become disentitled to the relief of injunction for having not approached the Court with clean hands.The mark 'Dyna lume' having not been registered on the date of filing the suit, there was no question of infringement of trademark. It has also been stated that there are 41 marks with the word 'Roof', as suffixing, which is a generic word common to the trade and therefore the plaintiff cannot claim exclusive right over such generic word 'Roof'. It has also been stated that various proprietors engaged in the business of manufacturing and selling galzvalume roofing sheets use the mark with the word 'Lume' as suffix to describe their goods.
7. The plaintiff by filing an affidavit-in-opposition before this court, stated that the defendant has been violating the order of injunction and that the defendant/appellant falsely stated before this Court that the plaintiff abandoned the registration of its mark 'Dyna Lume 3 G Roofing Sheets'. It has also been submitted that the plaintiff has been using its mark Dyna Lume and Dyna the 3 G Roofing Sheets since 2007 and the trade mark 'Dyna Lume' was registered in the year 2007. It has been stated that the plaintiff is a prior user and also prior registrant of its mark 'Dyna Lume' and 'Dyna Roof the 3 G Roofing Sheets'. The defendant's mark 'Dura Lume', which is phonetically, FAO 47/2017 FAO 50/2017 Page 5 of 26 visually and semantically similar to that of the plaintiff's trade mark has infringed the right of the plaintiff. The plaintiff having come in the market much earlier than the defendant and dealing with the business particularly of metal sheet roofing is entitled to injunction against the infringed mark of the defendant, who have entered the market very recently with its mark, which is deceptively similar to the plaintiff's mark. It has also been stated that mere registration of several marks without proof of actual use would not dent the distinctive character and repute of the plaintiff's mark. The plaintiff also denied the claim of the defendant that the term 'Lume' is common to trade or publisi juris.
8. Learned Trial Court on consideration of the pleadings and affidavit of both the parties and having heard both the sides, granted temporary injunction in both the suits, restraining the defendant Dura Roof Pvt. Ltd. from using the mark 'Dura Roof' and 'Dura Lume' or any other mark similar to that of plaintiff's trade mark 'Dyna Roof', 'Dyna Lume' and 'Dyna Lume the 3 G Roofing Sheets'.
9. Aggrieved, the defendant preferred the appeals.
10. Learned Sr. Counsel Mr. K.N. Choudhury and Mr. D. Barua appearing for the appellant/defendant and learned Sr.Counsel, Mr. M.K. Choudhury, appearing for the respondent/plaintiff were heard.
11. Mr. K.N. Choudhury, learned Sr. Counsel, appearing for the defendant in FAO 47/2017 submitted that in order to bring an action under the Trade Marks Act, plaintiff must plead fraudulent use of the mark and in absence of such pleading, no relief can be granted. The mark 'Dyna Roof' and 'Dura Roof' are not similar as the suffix 'roof' is a generic term common to the trade FAO 47/2017 FAO 50/2017 Page 6 of 26 and therefore, plaintiff cannot claim exclusive right over such generic term 'roof' and if prefix to the word 'roof' i.e. 'Dyna' and 'Dura' are considered, both are phonetically, visually and conceptually different and therefore, there cannot be any similarity, nor can there be any likely hood confusion between the two marks, submits Mr. Choudhury. Further contention of Mr. Choudhury was that on the date of filing of the suit, the trade mark 'Dyna lume' having not been registered, there was no question of infringement of trade mark. It has also been contended that there are existence of 41 trademarks with the word 'roof' as suffix on the register and as such, no exclusive right can be claimed by any one on such generic word 'roof'. Further contention of the learned Sr. Counsel was that the injunction granted by the learned Trial Court is not permissible under Section 135 (2) of the Trade mark Act. Learned Trial Court while granting injunction, whimsically came to the conclusion that prima facie the two marks are deceptively similar without assigning any reason or without applying any well known test. Mr. D. Barua, learned counsel arguing on behalf of the appellant in FAO 50/2017 emphasised more or less on the same points as argued by Mr. Choudhury.
12. Mr. M.K. Choudhury, learned Sr. Counsel appearing for the defendant in both the appeals submitted that this Court, sitting in appellate jurisdiction shall not interfere with the discretion exercised by the learned Trial Court in granting injunction, unless such exercise of discretion by Trial Court is whimsical, capricious or arbitrary. The plaintiff being prior user of the trademark is entitled to protection under Section 34 of the Trade Mark Act, even without registration. The plaintiff's trademark is an invented word and that cannot be used by any other person. No material has been produced to show that the suffixing 'lume' or 'roof' has been in use in the market by others. Further contention of Mr. Choudhury was that while considering similarity of the two marks, the trademark has to be taken as a whole, and it cannot be considered dissecting one part from another.
FAO 47/2017 FAO 50/2017 Page 7 of 2613. With regard to the first submission of Mr. M.K. Choudhury, that power of this court in appeal against discretionary order is limited and circumscribed, Mr. K N Choudhury submitted that the trial court in the present case exercised its discretion arbitrarily without applying judicial mind and therefore, the necessity of interfering with the impugned order has become imperative .Learned Sr. Counsel for the parties were, however, not in quarrel on the question of power of the appellate court in respect of appeal against the discretionary order of the Trial Court. Since there was no divergence of views on the proposition of law, that power of the appellate court is limited and circumscribed and that appellate court will not interfere with the exercise of discretion of the court of first instance and substitute its own discretion, except where, the discretion is shown to have been exercised arbitrarily or perversely or capriciously, or where the court has ignored the settled principles of law regarding grant or refusal of interlocutory injunction. Therefore, I feel it unnecessary to burden the judgment by quoting the various authorities cited by the learned counsels
14. Keeping in view the above principles with regard to the limit of power, let me now proceed to deal with the issues raised in the present case. The basic issue involved in both the appeals are, whether the defendant's trademark 'Dura Roof' and 'Dura Lume' are deceptively similar to plaintiff's trademark 'Dyna Roof' and 'Dyna Lume' as well as 'Dyna Lume 3 G Roofing Sheets' and likely to create confusion in the mind of the public.
15. Mr. K.N. Choudhury, learned Sr. Counsel for the appellant, referring to the preamble of the Trade Marks Act contended, that in order to bring an action under the Trade Marks Act, plaintiff needs to plead fraudulent action or fraud being practised by the defendant, which is absent in the pleadings of FAO 47/2017 FAO 50/2017 Page 8 of 26 the plaintiff. Countering the above submission, Mr. M.K. Choudhury placing reliance on the decision of the Apex Court in (2002) 3 SCC 65 (Lax m ikant V. Patel Vs. Chetanbhai Shah & Anr.) submitted, that fraud or misrepresentation is not a precondition for bringing an action under the Trade Marks Act. The Apex Court in paragraph-13 of the said judgment observed that 'passing off cases are often deliberate and intentional misrepresentation, but it is well settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence, though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception.' In view of the above observation of the Apex Court, I am unable to agree with the submission of Mr. K.N. Choudhury.
16. Mr. K.N. Choudhury, learned Sr. Counsel and Mr. D. Barua, learned counsel appearing for the appellant vehemently argued that the marks 'Dura Roof' and 'Dura Lume' and 'Dyna Roof' and "Dyna Lume' are not similar, either phonetically, visually or conceptually. It has also been contended that the suffix 'roof' and 'lume' in the marks of the plaintiff being generic words common to the trade, no one can claim exclusive right on such generic words in view of Clause (b) to Sub-section (2) of Section 17 of the Trade Mark Act. Clause (b) lays down that when a trademark contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark, so registered. Further contention of the learned counsel is that when a part of the trademark is common and generic term, the similarity between the two marks has to be judged only with reference to the part of the marks, which is not 'publici juris'. Viewing from that point, leaving aside the generic suffixing word 'roof' and 'lume', if the prefixing part is taken into consideration i.e. 'Dyna' and 'Dura', they were neither phonetically nor conceptually nor visually similar and therefore, there FAO 47/2017 FAO 50/2017 Page 9 of 26 is no question of the public being confused on seeing such two marks, submits Mr. K.N. Choudhury and Mr. Barua. In order to buttress the above submission, and to show that the marks 'Dyna Lume' and 'Dura Lume' as well as 'Dyna Roof' and 'Dura Roof' are not visually and phonetically similar, following decisions were cited at the bar.
17. AIR 1970 SC 2062 (F. Hoffm ann-la R oche & Co. Ltd. Vs. Geoffrey M anner & Co. Pvt. Ltd.). In this case,the question was whether the words 'dropovit' and 'protovit' were deceptively similar and the Apex Court held as under:
"In order to decide whether the word "DROPOVIT" is deceptively similar to the word "PROTOVIT" each of the two words must, therefore, be taken as a whole word. Each of the two words consists of eight letters, the last three letters are common, and in the uncommon part the first two are consonants, the next is the same vowel '0', the next is a consonant and the fifth is again a common vowel '0'. The combined effect is to produce an alliteration. The affidavits of the appellant indicate that the last three letters "VIT" is a well known common abbreviation used in the pharmaceutical trade to denote Vitamin preparations. In his affidavit dated January 11, 1961 Frank Murdoch, has referred to the existence on the Register of about 57 trade marks which have the common suffix "VIT" indicating that the goods are vitamin preparations. It is apparent that the terminal syllable "VIT" in the two marks is both descriptive and common to the trade. If greater regard is paid to the 'uncommon element in these two words, it is difficult to hold that one will be mistaken for or confused with the other. The letters 'D' and 'P' in "DROPOVIT" and the corresponding letters 'P' and 'T' in "PROTOVIT" cannot possibly be slurred over in pronunciation and the words are so dissimilar that there is no reasonable probability of confusion between the words either from the visual or phonetic point of view."
18. 2016 (5) Bom bay CR 10 (Ultratech Cem ent Ltd. & Ors. Vs. Dalm ia Cem ent Bharat Ltd. & Ors .). In this case, the question was whether the trademark 'Ultratech' and 'Dalmia Ultra' were similar, the Bombay High Court held as under:
FAO 47/2017 FAO 50/2017 Page 10 of 26Considering the fact that the existence of the word 'Dalmia' as part of the Defendant's mark, which has prima facie been associated with the Defendant's trade name and reputation built over the years, was sufficient to put the traders and purchasing public to notice of the distinctive origin of the Defendant's goods, and the fact that the word 'ultra' appears in the Defendant's trade marks in juxta-position with the word 'Dalmia' displayed prominently, there is no likelihood of anyone being deceived or any confusion ensuing in the minds of any traders or purchasing public as to the origin of the goods on account of the Defendant's use of the word 'ultra'."
19. AIR 1998 M ad 347 (Indo-Pharm a Pharm aceutical W orks Ltd. vs Citadel Fine Pharm aceuticals Ltd .). In this case, the Madras High Court,while dealing with the similarity of two marks containing a common feature which is descriptive and 'publici juris' emphasised, that more attention has to be given to the uncommon features and held as under:
"43. The two rival marks 'ENERJEX' and 'ENERJASE' contain the common feature 'ENERJ' which is not only descriptive but also publici juris. Therefore, a customer will bend to ignore the common feature and will pay more attention to uncommon features, i.e. 'JEX' and 'JASE'. These two cannot be said to have such phonetic similarity so as to make it objectionable."
20. (1996) 1 Arb LR 430 Delhi (Kellogg Com pany Vs. Pravin K um ar Bhadabhai & Anr.). In this case, the question was whether the trademark Kellogg Cornflakes and Aristro Cornflakes were likely to confuse the buyer of cornflakes. The Delhi High Court held as under:
"22. In the result, on our prima facie conclusions, we reject the plea of similarity or likelihood of confusion, we reject the plea of fraud as well as the one based on imperfect memory. We are of the view, prima facie that even though the get up is similar, the different names Kellogg's and AIMS ARISTO prominently displayed, make all the difference and this is not a fit case for interference with the order of the learned Single Judge refusing injunction."FAO 47/2017 FAO 50/2017 Page 11 of 26
21. 151 (2008) DLT 635 (Schering Corporation & Ors. Vs. Alkem Laboratories Ltd .). In this case, the question was whether the defendant's mark 'Temoceme' was deceptively similar to the plaintiff's registered trademark 'Temodol', the Delhi High Court held as under.
23. Comparing the plaintiffs' trademark 'TEMODAL' and 'TEMODAR' with the defendant's trademark 'TEMOKEM', it is apparent that the marks are not identical. There is also no phonetic or visual similarity between the marks. I have already noted above that the term 'TEMO' cannot be exclusively used by the plaintiffs in view of the fact that it is publici juris being a clipped abbreviation of the generic word Temozolomide. There is no doubt in my mind, at this prima facie stage, that the suffix 'KEM' is entirely different and distinct from the suffixes 'DAL' and 'DAR' of the plaintiffs' trademarks. There is also no doubt that there is no phonetic or visual similarity between the defendant's mark and the plaintiffs' marks taken as a whole as would be prone to deceive IA Nos.4555/07 & 6041/07 in CS(OS 730/2007 Page No.16 of 18 consumers. It is also relevant to point out that Temozolomide is a Schedule 'H' drug which can only be sold in retail on the prescription of a registered medical practioner. While this condition is not by itself sufficient to establish a case of 'no deception', it is an important factor particularly when the pharmaceutical product is a highly specialized drug and is used for the specific treatment of a type of brain cancer. The warning indicated in the packaging of the defendant is also relevant. The warning reads:-
―To be supplied against demand from cancer hospitals, institutions and against the prescription of a cancer specialist only.‖ It is obvious that the defendant's product is not an off- the-shelf product which any person can go and purchase. The product is to be supplied only against demand from cancer hospitals / institutions and that too against the prescription of a cancer specialist only. This warning greatly reduces the possibility of deception. The cancer specialist would be aware of the therapeutic values of the defendant's product as also of the plaintiffs' products. Apart from this, a significant consideration is the vast difference in the prices of the products. It has already been noted above that the plaintiffs' products are approximately six times more expensive than the defendant's product. When the difference in the price structure is so vast, the likelihood of deception is virtually nil."FAO 47/2017 FAO 50/2017 Page 12 of 26
22. What therefore follows from the ratio laid down by the Apex Court as well as the various High Courts is that, one cannot claim exclusive right on a term which is 'publici juris' and while comparing the similarity between two marks containing common feature which is descriptive and 'publici juris' emphasis has to be given only to the uncommon portion.
23. Mr. M.K. Choudhury, learned Sr. Counsel, for the defendant, in order to show that the trademark 'Dyna Roof' and 'Dura Roof' as well as 'Dyna Lume' and 'Dura Lume' are phonetically similar and likely to create confusion in the mind of the public, placed reliance on the following decisions.
24. M ontblanc Sim plo-GM BH Vs. New Delhi Stationery M art & Anr ., reported in 2008 (38) PTC 59 (Del) . The trademark in question in this case were 'Spacewalker' and 'Starwalker'. In paragraph-18 of the judgment, the High Court of Delhi observed as under:
"18. Presently, it is not the plaintiffs case that the use of the marks by the Defendants is likely to be taken as being used as a trademark. Instead, the plaintiff argues that actions of the Defendant constitute infringement under Section 29 (2). A perusal of the word marks - 'Starwalker' and 'Spacewalker' and the three rings used by the plaintiff and defendants, as detailed in the illustrations filed, would reveal that neither the word marks or the rings are identical. Therefore, in so far as the plaintiff claims presumption and consequent prima facie infringement under Section 29(2)(c) read with Section 29 (3) cannot be accepted. Since both the marks are used in respect to identical goods, this Court, then needs to determine whether the defendants adoption is likely to cause confusion in the minds of the public. It is not necessary to prove actual confusion or damage, it is sufficient if likelihood of confusion is established. Given that the three ring device adopted by the defendants closely resembles the one used by the plaintiff, and is being used by the defendant at an identical position, with respect to writing instruments which are similarly shaped and coloured, this Court is of the view that there is a likelihood that such adoption of the mark by the defendants would cause confusion in the minds of the public. Similarly, the adoption by the defendants of FAO 47/2017 FAO 50/2017 Page 13 of 26 phonetically and literally similar word mark - 'Spacewalker' as compared to 'Starwaler' of the plaintiffs, in the absence of a satisfactory explanation as to its choice), would also cause confusion in the minds of the public, since it is being used on a writing instrument of similar getup and configuration along with a similar three ring device. The price difference, as has been held in NR Dongre (supra), will only result in further injury to the plaintiffs goodwill as the products will not be of similar standard. The adoption of a prefix 'Add Gel' to the word mark Spacewalker, is not likely to mitigate the likelihood of confusion."
25. AIR 1960 SC 142 (Corn Products refining Co. Vs. Shangrila Food Products Ltd .). In this case, the trademarks in question were 'Glucovita', the term used by the plaintiff for its goods "Dextrose (d-Glucose powder mixed with vitamins) and 'Gluvita', the term used by the defendant for its product biscuit. The Apex Court considering the likelihood of confusion, from the point of view of average customer observed that "But there is evidence that glucose is used in the manufacture of biscuits. That would establish a trade connection between the two commodities, namely, glucose manufactured by the appellant and the biscuits produced by the respondent. An average purchaser would therefore be likely to think that the respondents 'Gluvita biscuits were made with the appellant's 'Glucovita' glucose."
26. N.R. Dongre & Ors. Vs. W hirlpool Corpn. & Anr. Reported in (1996) 5 SCC 714 . In this case, dispute was between the previous and subsequent user in use of the same trademark 'Whirlpool'.
27. Devi Pesticides Pvt. Ltd. Vs. Shiv Agro Chem icals Industries reported in 2006 (32) PTC 434 (M ad ). In this case, dispute was in respect of use of trademark 'Boom Plus' and 'Super Boom', and the High Court of Madras observed that "by using phonetically similar mark and marking the unwary consumers to believe that the product of the respondent originates FAO 47/2017 FAO 50/2017 Page 14 of 26 from that of the applicant, thus committed an act of passing off infringement of trademark."
28. Am ritdhara Pharm acy Vs. Satyadeo Gupta reported in AIR 1963 SC 449 . In this case, the Apex Court observed that the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity of the two names 'Amritdhara' and 'Lakshmandhara' is, in our opinion, likely to deceive or cause confusion. We must consider the overall similarity of the two composite words 'Amritdhara' and 'Lakhshmandhara'."
29. It would appear from the above decisions cited by learned Sr. Counsel Mr. M.K. Choudhury,that in all those decisions rendered by the Apex Court and various High Courts analysis were based on peculiar facts of each case, which goes to show, that there is no standard principle, nor the statute has laid down any criterion for determining, what is similar or dissimilar or what is likely to cause confusion in the mind of the public in respect of a particular goods or mark.Therefore, whether any two trademarks are phonetically, visually or semantically,deceptively similar or not, or likely to cause confusion, has to be decided on the facts of each case. The Apex Court in Am ritdhara Pharm acy (supra) observed that "It will be noticed that the words used in the section and relevant for our purpose are 'likely to deceive or cause confusion'. The Act does not lay down any criteria for determining what is likely to deceive or cause confusion. Therefore, every case must depend on its own particular facts, and the value of authorities lies not so much in the actual decision as in the test applied for determining what is likely to deceive or cause confusion." The ratio laid down by the Apex Court in the Am ritdhara (supra) makes it abundantly clear that in a trademark dispute, precedents are of not much help to the court, for the simple reason that each FAO 47/2017 FAO 50/2017 Page 15 of 26 trademark connected with a particular product is required to be analysed on the peculiar facts and circumstances attached to it. Therefore, it is the test applied for determining what is likely to deceive or cause confusion, which is of great importance.
30. Learned Sr. Counsel, Mr. M.K. Choudhury, has taken me to the provision of Section 34 of the Trademark Act, which is reproduced below:
"34. Saving for vested rights.--Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior--
(a) to the use of the first-mentioned trade mark in relation to those goods or services be the proprietor or a predecessor in title of his; or
(b) to the date of registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his; whichever is the earlier, and the Registrar shall not refuse (on such use being proved), to register the second mentioned trade mark by reason only of the registration of the first mentioned trade mark."
31. Referring to the above provision of Section 34 of the Trademark Act, learned Sr. Counsel, submitted that the plaintiff has been doing business with its trademark 'Dyna Lume' and 'Dyna Roof' since 2004 and the defendant has entered into the business for the identical goods very recently and therefore, plaintiff being proprietor of the trademark, which is earlier in point of time; having already earned popularity and reputation and having become a market leader,is entitled to injunction to restrain the defendants from using any trademark which is deceptively similar to that of the trademark of the plaintiff. In support of the contention, Mr. Choudhury, also placed reliance on the decision of the Apex Court in Neon Laboratories Ltd. Vs. M edical FAO 47/2017 FAO 50/2017 Page 16 of 26 Technologies Ltd. & Ors. reported in(2016) 2 SCC 672 , wherein the Apex Court observed as under:
"11 ........ ................... It would not be unfair or fanciful to favour the view that the Defendant-Appellant's delayed user was to exploit the niche already created and built-up by the Plaintiff-Respondents for themselves in the market. The 'first in the market' test has always enjoyed pre-eminence. We shall not burden this Judgment by referring to the several precedents that can be found apposite to the subject. In the interest of prolixity we may mention only N.R. Dongre v. Whirlpool Corporation (1996) 5 SCC 714 and Milmet Oftho Industries v. Allergan Inc. (2004) 12 SCC 624. In Whirlpool, the worldwide prior user was given preference nay predominance over the registered trademark in India of the defendant. In Milmet, the marks of pharmaceutical preparation were similar but the prior user worldwide had not registered its mark in India whereas its adversary had done so. This Court approved the grant of an injunction in favour of the prior user. Additionally, in the recent decision in S. Syed Mohiden v. P. Sulochana Bai (2015) 7 SCALE 136, this Court has pithily underscored that the rights in a passing-off action emanate from common law and not from statutory provisions, nevertheless the prior user's rights will override those of a subsequent user even though it had been accorded registration of its trademark".
32. It is to be born in mind that like any other case, here also ultimately the three golden principles, i.e. prima facie case, balance of convenience and irreparable loss are the guiding principles for granting temporary injunction. In order to get a temporary injunction, plaintiff must show that all the three criteria, i.e. prima facie case, balance of convenience and irreparable loss are in his favour. In the present case, when the crux of the dispute pertains to the question, whether the trademark of the defendant 'Dura Lume' and 'Dura Roof' are deceptively similar to the trademark of the plaintiff, in order to grant temporary injunction, in favour of the plaintiff, the court has to be satisfied, that prima facie the trademarks adopted by the defendant are deceptively similar to the mark of the plaintiff and likely to cause confusion.
FAO 47/2017 FAO 50/2017 Page 17 of 26In order to come to a decision, that prima facie, the defendant's mark is deceptively similar to that of the plaintiff's trademark, court is obliged to apply some test, which are usually followed in the trade mark cases. Because it is only such test, which can enable the court to come to a correct decision, as to whether one trade mark is deceptively similar to another or not. If the court fails to apply any test and comes to a finding, that prima facie, the mark of the defendant is deceptively similar to the mark of the plaintiff without any reason, such finding would obviously be vulnerable to criticism. In the present case, the Trial Court while deciding the prima facie case for granting injunction observed as under:
MISC (J) CASE NO. 59/2017"If the two words or marks are closely observed, it hardly appears much differences. The impression would be amongst the consumers that it is the product of same company i.e. the petitioner and it creates confusion in the mind. Hence there is every likelihood of passing off the product of the petitioner to that of the opposite party. The opposite party being very new into the market, cannot be allowed to use the trade mark which can deceptively similar and closely identical to the trade mark of the petitioner.......... ....................."MISC (J) CASE NO. 15/2017
"On perusal of the two names of the parties, it appears that it is written like; DynaLume and DURA LUME. On close observation of the names and words, it appears that both the words are deceptively similar in respect of product like; similar metal sheets which would create confusion in the mind of the consumers as if that it is a product of the petitioner and/or the petitioner introduces a new product............ ........... It is also phonetically more or less similar since the both the product deals with similar type of goods in the market.................."
33. Above finding of the learned Trial Court demonstrates, that while deciding the question of prima facie case, learned Trial Court did not apply FAO 47/2017 FAO 50/2017 Page 18 of 26 any objective test and on the basis of its own subjective observation came to a finding superficially , that the defendant's trademark is deceptively similar to that of the plaintiffs trademark. In the above facts and circumstances, it has become incumbent for this court to have a relook at the findings of the trial court, as the learned Trial Court apparently failed to exercise its discretion in a proper and judicious manner.
34. A prima facie case being sine qua non, for granting of temporary injunction, the primary and first task of the court before granting interim injunction is to decide whether there is a prima facie case or not. In the instant case, crux of the dispute between the parties being whether the trademark of the defendant 'Dura Roof' and 'Dura Lume' are deceptively similar to the trademark of the plaintiff and likely to create confusion, it is incumbent upon the court to see at the outset, whether such mark of the defendant is prima facie, deceptively similar to the trademark of the plaintiff. Once the court finds the same to be in favour of the plaintiff, than the question of prior or later entry in trade or use of the trade mark, as pointed out by the learned counsel for the plaintiff would certainly be a significant factor to be considered for granting injunction. For deciding the question of deceptive similarity in a trade mark case some well known tests have been evolved by the courts over the years, which are expected to be followed, while deciding, whether one trade mark is deceptively similar to another.
35. The Apex Court in the case of Cadila Health Care Ltd. Vs. Cadila Pharm aceutical Ltd . reported in (2001) 5 SCC 73 , in paragraph-35 & 36 enumerated certain test or factors for deciding the question off deceptive similarity, which are as follows:
FAO 47/2017 FAO 50/2017 Page 19 of 26"35. Broadly stated in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered:
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 require, 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.
36. Weightage to be given to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case."
36. In K hoday Distilleries Ltd. Vs. Scotch W hiskey Association reported in (2008) 10 SCC 723 , the Apex Court discussed the factors to be considered for deciding whether one trade mark is deceptively similar to other and is likely to create confusion and observed as follows:
FAO 47/2017 FAO 50/2017 Page 20 of 26"74. This Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., [(2001) 5 SCC 73 ] inter alia laid down the law in the following terms :-
35. Broadly stated, in an action for passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered :
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely toe exercise in purchasing and/or using the goods.
75. The tests which are, therefore, required to be applied in each case would be different. Each word must be taken separately. They should be judged by their look and by their sound. Must consider the goods to which they are to be applied. Nature and kind of customers who would likely to buy goods must also be considered. Surrounding circumstances play an important factor. What would likely to happen if each of those trade marks is used in a normal way as a trade mark of the goods of the respective owners of the marks would also be a relevant factor.
76. Thus, when and how a person would likely to be confused is a very relevant consideration.
77. Where the class of buyers, as noticed hereinbefore, is quite educated and rich, the test to be applied is different from the one where the product would be purchased by the villagers, illiterate and poor. Ordinarily, again they, like tobacco, would purchase alcoholic beverages by their brand name. When, however, the product is to be purchased both by villagers and town people, the test of a prudent man would necessary be applied. It may be true that the tests which are to be applied in a country like India may be different from the tests either in a country of England, United Sates of America or Australia."
37. In view of the nature of disputes and pleadings of the parties the only question to be decided prima facie at this stage is whether the trade marks of the defendant i.e. 'Dura Roof' and 'Dura Lume' are deceptively FAO 47/2017 FAO 50/2017 Page 21 of 26 similar to the trade mark of the plaintiff i.e. 'Dyna Roof' and 'Dyna Lume' and are likely to cause confusion.
38. Learned counsel for the appellant referring to existence of about 41 trademarks having common suffix 'Roof' and 11 trademarks with common suffix 'Lume', on the register, contended that 'Roof' and 'Lume' being non- distinctive and generic terms common to the trade, no one can claim exclusive right over such generic term. Countering the above submission, Learned Sr. Counsel, Mr. M.K. Choudhury, submitted that no evidence has been adduced to show that all those trademarks with suffix 'Roof' or 'Lume' are present in the market, and that only because some other proprietors are using the common suffix or prefix to their trade mark, would not affect the right of the plaintiff to bring action against the defendant. Apparently, defendant has produced some documents showing the existence of about 41 marks with suffix 'Roof' and about 11 trademarks with suffix 'Lume' on the register. For the purpose of temporary injunction, in my view, prima facie, it has to be presumed that there are such marks being used. Whether, those trademarks are present in the market or not is matter of evidence and that will come only at the time of final decision of the suit, when parties will adduce evidence. The documents, produced by the defendant, in my view, are sufficient for holding prima facie, that the marks 'Roof' and 'Lume' are common and non-distinctive. Since many other proprietors are dealing with identical goods being roofing sheets, with the trademark having suffix 'Roof', the term 'Roof' appears to be common to the trade relating to the goods dealt by the parties and therefore the word 'Roof' is apparently a non- distinctive term and one cannot claim exclusive right over such term 'Roof'. Similarly, from the documents produced by the defendant, showing the existence of about 11 trademarks with the common word 'lume' on the register, the word 'Lume' also prima facie appears to be commonly used for FAO 47/2017 FAO 50/2017 Page 22 of 26 the product i.e., the roofing sheet, which has reference to the materials, i.e aluminium, used for the product. The defendant contended in the pleading that word 'Lume' is used by various roofing companies to show, that their roofs is made out of Alloy of Zinc and aluminium, to reflect heat and sunlight. Therefore, the word 'Lume,' used as suffix by both the parties indicating the materials of which the product is made of, and existence of multiple trade mark with suffix 'Lume' on the register, indicating that many of the proprietors are using such word 'Lume' as suffix for identical goods, the term 'Lume' also in my view, is a non-distinctive word for which no one can claim exclusive right.
39. Learned Sr. Counsel, Mr. M.K. Choudhury contended that while comparing the two trademarks, the trade mark is to be taken into consideration as a whole and it is not permissible to dissect the trademark and compare part by part. No doubt, in view of Sub-Section (1) of Section 17 of the Trade Marks Act., while considering the question whether two trademarks are deceptively similar or not, the trademark has to be taken as a whole, but the fact remains that where a trademark contains a part, which is common to trade or otherwise of non-distinctive character and publici juris, no one can claim exclusive right over such matter forming part of the whole trademark in view of Clause(b) of sub-section (2) of Section 17 of the Trade Marks Act
40. The suffix 'roof' and 'lume' to the trademark of the plaintiff and defendant, prima facie having found to be a term 'publici juris', necessarily greater emphasis has to be given to the prefix of the trademark i.e. 'Dyna' and 'Dura'. In order to judge, whether one trade mark is visually and phonetically similar to the other, primarily comparison has to be made by their look and sound. If the two marks resembles in respect of their sound FAO 47/2017 FAO 50/2017 Page 23 of 26 and look, it will be considered as visually and phonetically similar. When we see the mark "Dyna" and "Dura" pronunciation and sound of both the words are totally different and therefore, phonetically there is no similarity between the word 'Dyna' and 'Dura'. So far visual similarity is concerned, Below the plaintiff's trademark 'Dyna Roof,' SOLID STYLE is written and below the defendant's trademark 'Dura Roof' FASHIONABLE ROOFING START HERE' is written. Apparently colour combination and logo of the plaintiffs trade mark Dyna Lume or Dyna Roof and defendant's mark Dura Roof and Dura Lume are also different. Therefore, plaintiff's mark 'Dyna Roof' and 'Dyna Lume' and the defendant's mark 'Dura Roof' and 'Dura Lume' cannot be said to have any visual similarity. The word Dura and Dina, Phonetically and visually being dissimilar, reasonably there cannot be likelihood of any one being confused.
41. The nature of goods and the Class of buyers, who are likely to purchase the goods bearing the trade mark, their intelligence and education etc., are important factors to be taken note, while considering the likelihood of confusion in respect of a goods or trade mark for another goods or trade mark. In respect of certain goods, trade dress plays an important role. For example, the goods which are of day to day use and sold in packet or cartoon and also not a costly one, trade dress plays an important role. Because, in respect of such goods any one can be a vendor or purchaser. Let us take the example of a common good like tooth paste. No one bothers too much while purchasing a tooth paste. It may so happen, we sometime even send our staff or children to purchase a tooth paste, who are not expected to apply their minds, while purchasing a tooth paste. Therefore, the test to be applied in order to see the likely hood of a customer being confused by seeing trade mark and trade dress of a product like toothpaste and a valuable good like colour coated roofing sheet cannot be the same. For goods, as in the present FAO 47/2017 FAO 50/2017 Page 24 of 26 case, which is a costly roofing sheet, the buyer may be an individual for his own use or builders or contractors, who may be buying for commercial purpose. If we take the builder or contractor as purchaser, they are obviously professional men. When they go to purchase valuable construction material like roofing sheet, they are unlikely to purchase such goods without verifying and without being satisfied, what they actually intend to purchase. If we take an individual customer, who is supposed to purchase such goods (roofing sheet) once or twice during the whole life for construction of ones own house, in such cases, the individual customer, irrespective of whether he is a villager or an urban dweller, or educated or uneducated, will certainly take a deliberate decision to purchase such goods,. Therefore, while applying the test of intelligence or imperfect memory of a buyer for a product, as in the present case, we must go by the standard of a prudent man. When a prudent person will go to purchase a valuable good like roofing sheets, it can be reasonably expected that he will take a deliberate decision to purchase such valuable good, which he really intends to purchase and therefore, there will be reasonably no likely hood of confusion being created in the mind of such a purchaser, while comparing the two trade marks i.e. Dyna Roof and Dura Roof or Dyna lume and Dura lume. Therefore, in my view, the defendant's trade mark Dura Roof and Dura lume and the plaintiff's trade mark Dyna Roof and Dyna lume, phonetically and visually being totally dissimilar, there is no chance or likely hood for the buyers to be misguided or confused. In the above facts and circumstances, in both the matters, prima facie case does not appear to be in favour of the plaintiff. Existence of prima facie case in favour of the plaintiff being sina qua non, for granting temporary injunction and the same being absent in the present case, the order of temporary injunction granted by learned Trial Court cannot be allowed to continue.
FAO 47/2017 FAO 50/2017 Page 25 of 2642. Both the suit being T.S. No. 3/2017 and T.S. No. 2/2017 have been filed for the identical relief of recovery of damage, declaration, permanent and mandatory injunction. It is apparent from the plaint of both the suits that the plaintiff has attempted to quantify the alleged financial loss by showing yearly sale of products and also approximate financial loss for certain period. This being the position, if the temporary injunction is refused, and ultimately the plaintiff succeeds in the suit, the loss, plaintiff is likely to suffer, basically being financial one, for which damage is already claimed in the suit, there will be no difficulty in compensating the plaintiff. Therefore, balance of convenience and irreparable loss also does not appear to be in favour of the plaintiff. No doubt, in an appeal against a discretionary order, the appellate court is not supposed to substitute its own view, unless the discretionary order is found to be whimsical, capricious or arbitrary. As already pointed out hereinbefore, the learned Trial Court while exercising jurisdiction in the instant case, failed to exercise its discretion in a judicious and proper manner and therefore, in the facts and circumstances, there is no option left for this Court, but to set aside the impugned orders of temporary injunction. Accordingly, both the appeals are allowed and the impugned orders are set aside. Needless to say, trial court will proceed with the Title Suits on their merit, without being influenced by any observation made in this judgment. No cost.
43. Send back the LCR.
JUDGE.
Mkk FAO 47/2017 FAO 50/2017 Page 26 of 26