Delhi District Court
M/S Balar Marketing Pvt. Ltd vs Lokesh Tayal on 7 April, 2011
IN THE COURT OF SH. REETESH SINGH
ADDITIONAL DISTRICT JUDGE-01 (NORTH-EAST)
KARKARDOOMA COURTS, DELHI
CS No. 23/11
Date of Institution of Appeal : 22.03.2009
Date on which Reserved for Judgment : 31.03.2011
Date of Judgment/Order : 07.04.2011
Case I.D. Number : 02402C0091842011
IN THE MATTER OF:-
M/S BALAR MARKETING PVT. LTD.
217, FUNCTIONAL INDUSTRIAL ESTATE
PATPARGANJ,
DELHI-110092.
........Appellant
Versus
1. LOKESH TAYAL
5/9, GALI NO. 2, VISHWAS NAGAR,
SHAHDARA, DELHI-110032.
2. M/S DURGA PLASTIC
5/9, GALI NO. 2, VISHWAS NAGAR,
SHAHDARA, DELHI-110032.
3. M/S POWER & CONTROL CABLE (INDIA),
1/429/1& 1/429/2,
GALI NO. 1, FRIENDS COLONY,
INDUSTRIAL AREA,
SHAHDARA, DELHI-110095.
.......Respondents
JUDGMENT
1. By this order I shall decide the application of the plaintiff under Order 39 Rules 1 and 2 of the CPC for grant of interim injunction.
2. Case of the plaintiff as stated in the plaint is that the plaintiff is a Pvt. Ltd. Company incorporated under the Indian Companies Act, 1956 and has its registered office at 217, Functional Industrial Estate, Patparganj, Delhi-92 and has instituted the suit through its authorized representative and Director Sh. Paras Jain. It is stated that the plaintiff is engaged in the manufacture and sale of a wide range of electrical goods including electrical accessories and fittings, electrical switches, main switches wires and cables. Plaintiff claims to be the registered proprietor of trademark "KUNDAN" and "KUNDAN CAB" of which it is user since 1975. It is claimed by the plaintiff that trademark KUNDAN and KUNDAN CAB belong to M/s AIPIAI Electrical Trading Company which adopted the said trademarks in the year 1980 and had also filed an application before the Registrar of Trade Marks seeking for registration of the same in class 9 claiming user since 1980.
3. By a written deed of assignment dated 17.02.1993, rights of M/s AIPIAI Electrical Trading Company in the said trademarks were assigned to the plaintiff who made an application before the Registrar of Trademarks in Form TM-16 giving intimation of the assignment. On 23.03.1989, Registrar of Trademarks granted to the plaintiff company registration of trademark KUNDAN on 23.03.1989 (w.e.f. 1980) vide registration no. 507445 and trademark KUNDAN CAB vide registration no. 566441 dated 29.01.1992 in Class 9 which relates to electrical accessories and fittings including electrical switches, main switches fuse units wires and cables and electrical iron.
4. Plaintiff further claims that another concern by the name of M/s Atul Cable Company of whom Smt. Promila Sehgal was the sole proprietor also claimed user of trade mark KUNDAN since the year 1975. The said concern in the year 1996 filed suit No. 51/1996 against the plaintiff company alleging passing of and during the pendency of the said suit the parties entered into a compromise in terms of which Smt. Promila Sehgal executed a deed of assignment dated 01.05.1998 in favour of the plaintiff company. Suit No. 51/1996 filed by Smt. Promila Sehgal was disposed of / decreed in terms of the said compromise according to which plaintiff company became the proprietor of the trade mark KUNDAN. Since M/s Atul Cable Company had claimed user of trade mark KUNDAN since 1975, plaintiff having stepped into its shoes has claimed user of the said trade mark since 1975.
5. Counsel for plaintiff has argued that the plaintiff company was granted registration by the Registrar of Trademarks of trademark KUNDAN on 23.03.1989 (w.e.f. 1980) and trademark KUNDAN CAB on 29.01.1992, both in Class 9 which relates to electrical accessories and fittings including electrical switches, main switches fuse units wires and cables and electrical iron. Counsel for plaintiff has submitted that the plaintiff company apart from being the proprietor of trade mark KUNDAN and KUNDAN CAB is also proprietor of other trademarks such as KUNDAN LABEL in class 9, KUNDAN LABEL in class 11, KUNDAN LABEL in class 7, KUNDAN CAB HOME and GARD LABEL in class 9, KUNDAN CAB FIRE and GARD LABEL in class 9 and KUNDAN CAB-XTRA GARD LABEL in class 9.
6. Counsel for plaintiff has submitted that the annual turnover of the plaintiff company for the year 2010-11 was Rs.20,45,97,482/- (till December, 2010). Apart from the same, plaintiff has also stated that the annual sales of its predecessors-in-interest M/s AIPIAI Electrical Trading Company in the year 1991-92 was Rs.25,79,759 and the annual turnover of Smt. Promila Sehgal proprietor of M/s Atul Cable Company in 1995-69 was Rs.12,74,588.10/-. The sale figures of the predecessors-in-interest of the plaintiff as well as the plaintiff w.e.f. 1980-81 till 2010-11 are mentioned in the para 7 of the plaint.
7. Plaintiff has further submitted that plaintiff has been continuously promoting its goods and business under the said trade mark through advertisements and publicity in leading newspapers, distribution of trade literature, trade hoardings, boards etc. Plaintiff claims to have spent a huge amount of money towards sale promotions and claims that its acquired the status of a well-known trade mark within the amendment of Section 2 (1) (zg) of the Trade Marks Act 1999.
8. Counsel for plaintiff has argued that in December 2010, it came across certain products of the defendant in the market being sold under the trade name/mark "KUNTH CAB" and "KUNTH" and upon making inquiries from the office of the Registrar of Trade Marks Delhi, plaintiff came to know that on 15.06.2009, the defendant had moved an application before the Registrar seeking registration of KUNTH and KUNTH CAB in class 9 claiming user since 01.04.2006. The said application of the defendant was circulated in the Trade Marks Journal on 16.07.2010. Since the plaintiff came to know of the same only in December, 2010, plaintiff filed objections on 22.12.2010 under sections 18 (4) and Section 19 of the Trade Marks Act, 1999 objecting to grant of such registration.
9. Counsel for plaintiff submits that till date defendant has not been granted registration and application of defendant is still pending. Counsel for plaintiff has argued that as soon as possible, plaintiff filed a suit on 07.02.2011 seeking injunction against the defendant from passing of its goods as the goods of the plaintiff. Counsel for plaintiff submitted that since trade mark of defendant is yet to be registered, the defendant has infringed the registered trade mark of the plaintiff company.
10. Counsel for plaintiff has argued that the plaintiff as well as the defendant are in the same field of business and use the same distribution and sale channels. Counsel for plaintiff has argued that although the packaging style, design and manner of writing of KUNTH AND KUNTH CAB on the products of the defendant are not identical to them of the plaintiff, nevertheless, the words KUNTH CAB and KUNTH are phonically similar to the registered trade mark of the plaintiff KUNDAN and KUNDAN CAB. Counsel submits that since there is phonetic similarity between both the trademarks, the general public and users of these products i.e. electrical wires and cables would most certainly be misled by the defendants into believing that the goods of the defendant are those of the plaintiff. Counsel therefore prays that the plaintiff is entitled to grant of inreim injunction as prayed for.
11. Counsel for plaintiff has relied upon the following judgments in his support.
1. M/s Hitachi Ltd. Vs. Ajay Kr. Agarwal 1996 PTC (16) (DB).
2. Amrutanjan Limited Vs. Amarchnd Sobachand PTC (suppl.) (1) 230 (Mad)
3. M/s Amba Lal Sarabhai Enterprises Ltd. Vs. M/s Sara Pharmaceuticals & Ors.
1982- PTC-214
4. Ruston & Hornby Ltd. Vs. Zamindara Engineering Co. AIR 1970 SC 1649
5. K.R. Chinna Krishna Chettiar Vs. Sri Ambal & Co.
AIR 1970 SC 146
6. M/s Pidilite Industries Pvt. Ltd. Vs. M/s Mittees Corporation AIR 1989 Delhi 157
7. Essco Sanitation Vs. Mascot Industries (India) 1982 - PTC -302
8. M/s Richardson Vicks Inc. Vs. M/s Vikas Pharmaceuticals 1990 - PTC -16
9. M/s Tinna Enterprises Vs. M/s International Rubber Ind. 1986 - PTC - 121
10. Colgate Palmolive Co. Vs. Sundeep Enterprises 1995 - PTC - (15) 389
11. M/s R.P. Locks Co. Vs. M/s Sehgal Locks Co.
1988 - PTC - 10
12. Lakme Ltd. Vs. Subhash Trading 1996 PTC (16) 567
13. M/s Girnar Tea Vs. M/s Brook Bond (India) Ltd.
1990 - PTC - 245
14. M/s Deep Chand Arya Ind. Vs. M/s Kiron Soap Works 1981 - PTC - 108
15. M/s Asso Auto Accessories Vs. M/s Ess Pee Auto Enterprises 1990 - PTC - 11
16. The Tata Iron & Steel Co. Vs. Mahavir Steels
17. Conopeo Inc. Vs. Banwari Lal 1997 (VI) AD (Delhi) 658, MANU/DE/0840/1997
18. Ciba Ltd. Vs. M. Ramalingam & S. Subramaniam AIR 1958 Bom. 56, MANU/MH/0021/1958
19. Vikas Manufacturing Co. Vs. Bharaj Manufacturing Co. AIR 1980 P & H 127, MANU/PH/0179/1980
20. Asha Soap Factory Vs. Dhanthak & Co.
A.L.R. 1985 Bom. 176.
21. Anglo French Drug Co. Vs. M/s Belco Pharma A.L.R. 1984 P & H 3
22. Amritdhara Pharmacy Vs. Satya Deo Gupta AIR 1963 SC 449
23. Devi Pesticides Pvt. Ltd. Vs. Shiv Agro Chemicals Ind. 2006 (32) PTC 434 (Mad), MANU/TN/1436/2006
24. Avis International Ltd. Vs. Avi Footweer Ind.
PTC (Suppl.) (1) 844 (Delhi)
25. Bombay Oil Industries Vs. Ballarpur Ind.
1989 - PTC - 131
26. B.K. Engineering Co. Vs. U.B.H.I. Enterprises AIR 1985 Delhi 210
12. Counsel for defendant on the other hand has argued that this Court by order dated 25.03.2011, has framed a preliminary issue with regard to territorial jurisdiction of this Court to entertain the suit and the matter is fixed for leading of evidence on the said issue on 07.05.2011. He submits that till such time the said preliminary issue is decided, it would not be open for this Court to pass any order on the application for interim injunction. Counsel for defendant has relied on the judgment of the Hon'ble High Court of Punjab and Haryana in the case of M/s Punjab Beej Bhandar Vs. M/s Kumar Fertilizers reported in 2003 (1) RCR (Civil) 236.
13. Counsel for defendant then argued that U/s 124 of the Trade Marks Act 1999, the jurisdiction of this Court i.e. of the Civil Court stood ousted and only course upon for this Court would be to remit the matter before the Registrar of Trade Marks for its decision. Counsel for defendant has also argues that the plaintiff company has two Directors Smt. Mahindra Jain and Sh. Paras Mal Jain and that the present suit has been filed on behalf of Plaintiff Company through its Director with the name mentioned as Paras Jain and not Paras Mal Jain. Counsel therefore, submits that plaint has not been signed and filed through an authorized person.
14. Counsel for defendant then argued that plaintiff has not filed any documents to show that it had acquired any reputation or goodwill in the market in order to entitle it to maintain an action of passing of. Counsel has submitted that the defendant has filed invoices of the year 1993, 1998 and 2005 and that the same related only to orders for printing of packaging material and boxes and no retail invoices of any customers have been filed.
15. Counsel for the defendant lastly argued that there was no phonetic similarity between the trademark of the plaintiff and that of the defendant and that the plaintiff was not entitled to the grant of interim injunction. Counsel for the defendant has argued that there is no similarity between the packaging and writing style with respect to the products of the parties. Counsel for the defendant argued that the meaning of word "Kundan" was gold and the meaning of word "Kunth" was spear. Counsel for defendant argued that the defendant had coined the word "Kunth" from the name of Sh. Kunthu Sagar Ji Maharaj, a Jain spiritual guru of whom the the defendant was a follower being a member of the Jain Community. Counsel for the defendant also argued that the syllables "ND" in the Trade Mark Kundan were different from the syllable "TH" in the trade mark Kunth. Counsel for the defendant on the other hand has relied on the following judgments:-
1. Punjab Beej Bhandar Preliminary issue should be decided first
2. AIR 2010 3221 SKYLINE & SKYLINE
3. AIR 1996 Himachanl Pradesh 70 ANGAN & GAGAN
4. AIR 1975 Madras 74 Orthogynol & Utogynol
5. 164 (2009) Delhi Law Times 131 Hajmola & Pachnola
6. AIR 1988 Calcutta 326 Raja & Maharaja
7. Lowenbrau Vs. Lowenbrau Delhi Law Times March (2009)
8. 157 (2009) Delhi Law Times 791 Lawenbrau & Lawenbrau
9. AIR 2010 (NOC) 1065 (Guj.) OCID & DOMOCID
10. 2009 (4) Civil Court Cases 302 Person Should come with clean hands
11. 2007 (4) Civil Court Cases 761 Territorial Jurisdiction
12. AIR 1954 SC 340 Decree passed without jurisdiction is nullity
13. 2007 (3) Apex Court judgment 515
14. 2008 (2) Apex Court Judgment 118
16. Heard the parties and perused the record.
17. The first question which needs to be considered by this Court is whether having fixed the matter for recording of evidence on preliminary issue with respect to territorial jurisdiction, it would be open for this Court to consider application of plaintiff under Order 39 Rules 1 and 2 CPC. Ld. Counsel for defendant had relied on the judgment of the Hon'ble High Court of Punjab and Haryana in the case of M/s Punjab Beej Bhandar Vs. M/s Kumar Fertilizers reported in 2003 (1) RCR (Civil) 236 in which the Hon'ble High Court was pleased to hold that the question of jurisdiction can always be treated as a preliminary issue and the suit can be disposed of on the decision of that issue itself. However, the Hon'ble High Court in the said judgement has nowhere held that where an issue with regard to territorial jurisdiction has been framed, the Court is precluded from deciding an application for interim injunction before deciding the issue of territorial jurisdiction.
18. On the contrary, the Hon'ble High Court of Delhi in the case of Tata Oil Mills Company Limited Vs. Hansa Chemical Pharmacy reported in ILR (1979) 11 Delhi 236 was pleased to hold that the question of territorial jurisdiction should not deter the Court from considering an application for temporary injunction and that it was not such a question which wholly took away jurisdiction of the Court to entertain the same. In the case of Dharam Pal Satya Pal Vs. Janta Sales Corporation reported in 41(1990) DLT 612, the Hon'ble High Court of Delhi relying on the case of Tata Oil Mills Company Limited Vs. Hansa Chemical Pharmacy (Supra) was pleased to observe as under:-
"The plea of the defendant about this Court having no territorial jurisdiction cannot non suit the plaintiff at this stage; for the reason, as held in the case of Tata Oil Mills Company Ltd. Vs. Hansa Chemical Pharmacy, ILR (1979) 11 Delhi 236; the question of territorial jurisdiction should not deter the Court from considering the application for temporary injunction and that this is not such a question which wholly takes away jurisdiction of the Court to entertain the application. This Court also held in the case of Niraj Pvt. Ltd. (supra) that mere averment of the plaintiff in the plaint that the goods were being sold by the defendant in Delhi was enough at this stage for the Court to assume territorial jurisdiction."
19. Placing reliance on the judgment in the case of Dharam Pal Satyapal Vs. Janta Sales Corporation (supra), the Hon'ble High Court of Delhi in the case of Tata Iron and Steel Company Limited Vs. Mahavir Steels and Ors. reported in 47 (1992) DLT 412 was pleased to hold that issue of territorial jurisdiction would not come in the way of Court to confirm an ex-parte injunction and to dispose of application of defendant under Order 39 Rule 4 of the CPC. In the said case the Hon'ble High Court observed that the question regarding jurisdiction can only be gone into after evidence of the parties is recorded and that the Court can assume jurisdiction on the basis of the facts stated in the plaint and proceed with the matter to consider question of confirmation of vacation of interlocutory injunction.
20. Ratio of the decision of the Hon'ble High Court referred above is that the Court is not precluded from considering the application for interim injunction even though question of territorial jurisdiction has been raised. In the present case plaintiff had filed this suit in the Court of Ld. District Judge, New Delhi and by order dated 08.02.2011 passed by the Court of Additional District Judge-I, PHC, plaintiff was granted an ex-parte order restraining the defendants from selling, exporting, advertising, soliciting, displaying their goods under the plaintiff's trade mark "KUNTH" or "KUNTH CAB" or any other trade mark identical with or deceptively similar to the plaintiff's trade mark "KUNDAN" or "KUNDAN CAB" so as to constitute passing off their goods as those of plaintiff's.
21. Subsequently, on 11.03.2011, defendants filed their written statement to the suit and the interim order was continued till 15.03.2011 vide order dated 11.03.2011. On 15.03.2011, arguments were heard in part and matter was posted for further arguments on 18.03.2011 and it was directed that interim order dated 08.02.2011 would continue.
22. On 18.03.2011, the Court of Ld. ADJ-I, PHC was of the view that the said Court was not vested with territorial jurisdiction to entertain the suit. On the prayer of Ld. Counsel for the plaintiff, the said Court by order dated 18.03.2011 returned the plaint to the plaintiff under Order 7 Rule 10 A CPC with the liberty to present the same before the Court of competent jurisdiction. By the said order dated 18.03.2011, the Ld. Court also directed that the interim order granted on 08.02.2011 would continue to be in force for a further period of seven days w.e.f. 18.03.2011 to enable the plaintiff to present the plaint in the Court of competent jurisdiction.
23. Thereafter, the plaintiff has filed the present suit in the Court of District Judge-VII (N-E), Karkardooma Courts, Delhi and the matter was assigned to this Court. It was recorded in the order dt.23.3.2011 that defendant had contended that this Court would also not have the territorial jurisdiction to entertain the suit. Counsel for plaintiff on the other hand submitted that since D- 3 was within the territorial jurisdiction of this Court, this Court was competent to entertain the suit. Matter was then adjourned for 25.03.2011.
24. On 25.03.2011, plaintiff filed an affidavit stating on oath that as per inquiry from PCR (No. 100), visit to Police Station GTB Enclave and inquiry from Trade Welfare Association, Friends Colony Industrial Area, defendant no.3 was located in District North-East and that this this Court was competent to entertain the suit. Counsel for defendant on that date had disputed this position and had prayed that he be permitted to lead evidence on the aspect of territorial jurisdiction. Accordingly, issue regarding territorial jurisdiction was framed on 25.03.2011 and matter was listed for recording of evidence on 07.05.2011.Counsel for plaintiff on the other hand had prayed that the interim injunction that was granted for seven days w.e.f. 18.03.2011 be continued. Matter was therefore listed for arguments on application that interim injunction for 31.03.2011.
25. Till date defendant has not filed any affidavit / document disputing contention of plaintiff that defendant no.3 was situated then territorial jurisdiction of this Court. In view, thereof and keeping in mind the ratio of the judgment of the Hon'ble High Court in the cases of Tata Iron and Steel Company (supra), Dharm Pal Satya Pal Vs. Janta Sales Corporation (supra) and Tata Oil Mills Company Limited (supra) this Court of the opinion that on the basis of averments made by the plaintiff in the affidavit filed on 25.03.2011, this Court prima facie, has the territorial jurisdiction to entertain the suit and to consider the application of the plaintiff for interim injunction under Order 39 Rules 1 and 2 of the CPC.
26. Ld. Counsel for the defendant had argued that the suit of the plaintiff was barred U/s 124 of the Trade Marks Act 1999. Section 124 of the Act reads as under:-
"124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc.--(1) Where in any suit for in- fringement of a trade mark--
(a) the defendant pleads that registration of the plaintiff's trade mark is invalid; or
(b) the defendant raises a defence under clause (e) of sub-section (2) of Section 30 and the plaintiff pleads the in-
validity of registration of the defendant's trade mark, the court trying the suit (hereinafter referred to as the court), shall,
--
(i) if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings;
(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the regis- tration of the plaintiff's or defendant's trade mark is prima facie tenable, raise an issue regarding the same and ad- journ the case for a period of three months from the date of the framing of the issue in order to enable the party con- cerned to apply to the Appellate Board for rectification of the register.
(2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b) (ii) of sub-sec- tion (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification pro- ceedings.
(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may al- low, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case.
(4) The final order made in any rectification proceedings referred to in sub-section (1) or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the re- gistration of the trade mark.
(5) The stay of a suit for the infringement of a trade mark un- der this section shall not preclude the court from making any interlocutory order (including any order granting an injunc- tion, directing account to be kept, appointing a receiver or at- taching any property), during the period of the stay of the suit."
(Emphasis supplied)
27. A bare perusal of Section 124 as reproduced above reveals that the said provisions would get attracted where either the plaintiff or the defendant raises any plea regarding validity of the registered trade mark of either party. In the present case, admittedly the application of the defendant for registration of its trade mark is pending before the Registrar. The defendant has not called into question validity of the registration of the trademarks of the plaintiffs. Hence, in the opinion of this court, the provision of Section 124 are not attracted in the present case. On the other hand, Section 124 (5) of the Act specifically provides that the stay of suit under Section 124 would not preclude the court from making any interlocutory order including any order granting an injunction. Hence, reliance placed by Counsel for defendant on Section 124 of the Act has no merit.
28. In this case it is an admitted position that the packaging and style of writing of trademarks of the plaintiff and defendant are not identical and the only question which arises for consideration is whether there is phonetic similarity between the trademark "KUNDAN" and "KUNDAN CAB" of the plaintiff and "KUNTH" and "KUNTH CAB" of the defendant. In order to appreciate the contentions of the parties on their cases on merits, it will be necessary to consider the observations of the Hon'ble High Court as well as the Hon'ble Supreme Court in cases relating to passing off and infringement in cases of phonetic similarity relied on by the parties.
29. In the case of M/s Hitachi Ltd. Vs. Ajay Kumar Aggarwal (supra), Hon'ble High Court of Delhi was pleased to observe that the question of similarity between two trademarks has to be approached from the point of view of an average man with imperfect memory. In that case, the Hon'ble High Court was pleased to hold that the words "HITACHI" AND "HITAISHI" were phonetically similar and injunction was granted to the plaintiff.
30. In the case of Amrutanjan Limited Vs. Amarchand Sobachand (supra), the Hon'ble High Court of Madras was pleased to hold in cases of phonetic similarity, the first syllable in both the names are to be given importance since first syllable is the one which is most likely to be remembered by the customers. In that case the Hon'ble High Court was pleased to hold that Amrutanjan Pain Balm was similar to Amar's Pain Balm and injunction was granted with the plaintiff. In the case of M/s Amba Lal Sarabhai Enterprises Ltd. Vs. M/s Sara Pharmaceuticals (supra), the Hon'ble High Court of Delhi reiterated that the first syllable of a trademark was considered to be most important in the case of short words.
31. In the case of Ruston & Hornby Ltd. Vs. Zamindara Engineering Co. (supra), the Hon'ble Supreme Court was pleased to grant and injunction in favour of plaintiff holding that Ruston and Rustum were phonetic similar. In the case of K.R. Chinna Krishna Chettiar Vs. Sri Ambal and Co. (supra), the Hon'ble Supreme Court was pleased to hold that even though there must be any visual resemblance between two marks resemblance with respect to the ear is equally important and since there was affinity of sound between Ambal and Andal. Hon'ble Supreme Court was pleased to grant interim injunction.
32. In the case of Tinna Enterprises Private Ltd. Vs. International Rubber Industries (supra), the Hon'ble High of Delhi was pleased to hold that in a case of passing off it was not necessary for a party to prove that the other party did the same knowingly or with any intent to deceive. In that case, the Hon'ble High Court hold that defendant's mark Tany was phonetically similar to plaintiff's mark Tinna.
33. In the case of Amritdhara Pharmacy Vs. Satya Deo Gupta (supra), the Hon'ble Supreme Court was pleased to hold that the words Amritdhara and Lakshmandhara were phonetically similar. In the case of Bombay Oil Industries Vs. Ballarpur Industries Limited (supra), the Hon'ble High Court of Delhi was pleased to reiterate that question whether two marks are likely to give rise to confusion or not is a question of first impression and that for the Court to decide at all questions. The same was hold by the Hon'ble Supreme Court in the case of Corn Products Refining Co. Vs. Sangrella Pvt. Ltd. (AIR 1960 SC 142) (supra) and followed by the Hon'ble High Court of Delhi in the case of Bombay Oil Industries Pvt. Ltd. Vs. Ballarpur Industries Limited (supra). In that case Hon'ble High Court was pleased to hold that marks Saffola and Sapola were phonetically similar.
34. In the case of B.K. Engineering Co. Vs. U.B.H.I. Enterprises (supra), the Hon'ble High Court of Delhi was pleased to observe that what the judge has to decide in a passing off action as whether the public at large is likely to be deceived and that what would be the effect of the representation upon the prospective purchaser.
35. In the case of N.R. Dongre & Ors. Vs. Whirlpool Corporation and Ors. (supra) the Hon'ble High Court of Delhi was pleased to hold that registration of a product would not be relevant in an action of passing off. It was held that the rights of action for passing off were not affected by the registration of a trademark. In the case of M/s Pidilite Industries Pvt. Ltd. Vs. M/s Mittees Corporation (supra), the Hon'ble High Court of Delhi was pleased to hold that deception or confusion likely to be caused was a question of fact and the Court has to be 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. In that case, Hon'ble High Court was pleased to hold that Fevicol and Trevicol were phonetically similar.
36. Although, Counsel for the defendant has filed a compilation of judgments with a case index (reproduced above) he has only relied on the judgment of the Hon'ble Supreme Court in the case of Skyline Education Institute (Pvt.) Ltd. Vs. S.L. Vaswani & Anr. (Supra). In this case, the Hon'ble Supreme Court was pleased to uphold the denial of grant of interim injunction on the ground that the word "Skyline" was a generic word and was being used as trade name by several companies and other entities. It is not the case of the present defendant that the word "Kundan" was being used by several companies with respect to products in class 9 i.e. Electrical Wires and Cables. In all the other cases relied upon by counsel for defendant, the same ratio as in the cases relied upon by counsel for plaintiff has been reiterated. Hence, the same need not be repeated.
37. Apart from the above, in the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 the Hon'ble Supreme Court was pleased to hold as under:-
"18. We are unable to agree with the aforesaid observations in Dychem case11. As far as this Court is concerned, the decisions in the last four decades have clearly laid down that what has to be seen in the case of a passing-off action is the similarity between the competing marks and to determine whether there is likelihood of deception or causing confusion. This is evident from the decisions of this Court in the cases of National Sewing Thread Co. Ltd. case2, Corn Products Refining Co. case3, Amritdhara Pharmacy case4, Durga Dutt Sharma case7 and Hoffmann-La Roche & Co. Ltd. case8. Having come to the conclusion, in our opinion incorrectly, that the difference in essential features is relevant, this Court in Dyechem case11 sought to examine the difference in the two marks "PIKNIK" and "PICNIC". It applied three tests, they being: (1) is there any special aspect of the common feature which has been copied? (2) mode in which the parts are put together differently i.e. whether dissimilarity of the part or parts is enough to make the whole thing dissimilar, and (3) whether, when there are common elements, should one not pay more regard to the parts which are not common, while at the same time not disregarding the common parts? In examining the marks, keeping the aforesaid three tests in mind, it came to the conclusion, seeing the manner in which the two words were written and the peculiarity of the script and concluded (at SCC p.597, para
39) that "the above three dissimilarities have to be given more importance than the phonetic similarity or the similarity in the use of the word PICNIC for PIKNIK".
19. With respect, we are unable to agree that the principle of phonetic similarity has to be jettisoned when the manner in which the competing words are written is different and the conclusion so arrived at is clearly contrary to the binding precedent of this Court in Amritdhara case4 where the phonetic similarity was applied by judging the two competing marks. Similarly, in Durga Dutt Sharma case7 it was observed that: (AIR p. 990, para 28) "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 plaintiffs and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated."
20. Lastly, in Dyechem case11 it was observed in para 54 as under: (SCC p. 600) "54. As to scope of a buyer being deceived, in a passing-off action, the following principles have to be borne in mind. Lord Romer, L.J. has said in Payton & Co. v. Snelling, Lampard & Co.12 that it is a misconception to refer to the confusion that can be created upon an ignorant customer. The kind of customer that the courts ought to think of in these cases is the customer who knows the distinguishing characteristics of the plaintiff's goods, those characteristics which distinguish his goods from other goods in the market so far as relates to general characteristics. If he does not know that, he is not a customer whose views can properly be regarded by the Court. (See the cases quoted in National Sewing Thread & Co. Ltd. v. James Chadwick & Bros. Ltd.13 which was a passing-off action.) In Schweppes case14 Lord Halsbury said, if a person is so careless that he does not look and does not treat the label fairly but takes the bottle without sufficient consideration and without reading what is written very plainly indeed up the face of the label, you cannot say he is deceived."
These observations appear to us to be contrary to the decision of this Court in Amritdhara case4 where it was observed that the products will be purchased by both villagers and townsfolk, literate as well as illiterate and the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. A trade may relate to goods largely sold to illiterate or badly educated persons. The purchaser in India cannot be equated with a purchaser of goods in England. While we agree that in trade mark matters, it is necessary to go into the question of comparable strength, the decision on merits in Dyechem case11 does not, in our opinion, lay down correct law and we hold accordingly."
"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:
(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 trademarks.
(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.
(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 depending upon facts of each case and the same weightage cannot be given to each factor in every case."
(Emphasis supplied)
38. The ratio of the cases referred above are that in passing off action, question of similarity between two trademarks has to be approached from the point of view of an average man with imperfect memory. What the judge has to decide in a passing off action is whether the public at large is likely to be deceived and that what would be the effect of the representation upon the prospective purchaser. The question whether two marks are likely to give rise to confusion or not is a question of first impression and that it is for the Court to decide all questions. Deception or confusion likely to be caused was a question of fact and the Court has to be 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.
39. Registration of a product would not be relevant in an action of passing off since rights of action for passing off are not affected by the registration of a trademark. In cases of passing off action, chances of confusion are not restricted to visual resemblance but can occur due to phonetic similarity as well and resemblance with respect to the ear is equally important. It is not necessary that resemblance between two trademarks should be phonetic as well as visual and that possibility of confusion on either of these grounds entitles a party to grant of interim injunction. In cases of phonetic similarity, the first syllable in both the names are to be given importance since the first syllable is the one which is most likely to be remembered by the customers and that first syllable of a trademark is considered to be most important in the case of short words. Nature of the goods, distribution channels and 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 are relevant factors that are to be taken into consideration by the Court.
40. As observed above, it is an admitted case of the parties that their respective trademarks do not have any visual similarity but that their products of are the same i.e. electrical wire and cables and are sold to the same customers through the same distribution and marketing channels. Only question is with respect to phonetic similarity of the trademarks of the parties. Plaintiff has pleaded and filed on record its sales figures w.e.f. 1980-81 to 1991- 92 (AIPIAI ELECTRICAL TRADING COMPANY) w.e.f. 1975-76 to 1995-96 (with respect to Atul Cable Company) and 1992-93 to 2010-11 (Balar Marketing Pvt. Ltd.). The plantiff is also the registered proprietor of trade mark "Kundan" and trade mark "Kundan Cab". Hence, prima facie, the trademarks of the plaintiff with respect to Electrical Wires and Cables has acquired a reputation in the market.
41. As far as the defendant is concerned, admittedly defendant has filed an application for registration of trademark "Kunth" and "Kunth Cab" before the Registrar of trademarks on 15.06.2009 claiming user since 01.04.2006. Defendant has not filed any sales figures to demonstrate that its products of wires and cables are associated in the market with it under the trademark "Kunth" and "Kunth Cab". Explanation of the defendant with regard to adoption of the word "Kunth" from his Jain Guru, Sh. Kunthu Sagar Ji Maharaj does not inspire any confidence since the name of the spiritual guru is "Kunthu" and not "Kunth".
42. As regards phonetic similarity, in the cases of Amrutanjan Limited Vs. Amarchand Sobachand (supra) and M/s Amba Lal Sarabhai Enterprises Ltd. Vs. M/s Sara Pharmaceuticals (supra), the Hon'ble High Court reiterated that the first syllable of a trademark was most important, especially in cases of short words and that it was the first syllable that is the guiding factor when assessing chances of confusion. In the present case, the first syllable of trademarks of plaintiff as well as the defendant is "KUN". It is not uncommon that the last syllables "DAN" and "TH" in the trademarks of the plaintiff and defendant respectively are not completely pronounced when products are sought for in the market by name. It is also to be noted that both parties use the words "CAB" as suffix to their respective marks. Persons who are the customers of the parties would be electricians and their assistants majority of whom have not received any formal training / education and would not be well versed in English language and pronunciation.
43. In the opinion of this court, there is sufficient phonetic similarity between the registered trademarks of the plaintiff and of the defendant and the same is likely to cause confusion. More so when the products of the plaintiff and defendants, i.e. electrical wires and cables are identical; are sold and marketed by the same channels; and are bought by the same customers. Hence, for the reasons recorded above, application of plaintiff is allowed. The defendants, their agents, assignees, representatives, successors, distributors, stockists and all others acting for and on their behalf are hereby restrained from selling, exporting, advertising, soliciting, displaying their goods using the trade mark "KUNTH" or "KUNTH CAB" in relation to goods and business of electrical and electronic apparatus and instruments including wire and cables accessories and other related products during the pendency of the suit.
44. List the matter on date fixed, i.e. 7.5.2011.
Dictated to the Steno and Announced in the Open Court today i.e. 07.04.2011 (REETESH SINGH) Addl. Distt. Judge-01 (NE) Karkardooma Courts, Delhi