Madras High Court
Unknown vs Anchor Health And Beauty Care Pvt. Ltd. ... on 24 September, 2012
Author: K.Chandru
Bench: K.Chandru
IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED: 24/09/2012 CORAM THE HON'BLE MR. JUSTICE K.CHANDRU Original Application Nos.701 and 702 of 2012 and Application Nos.3890 to 3893 of 2012 in C.S.No.559 OF 2012 ORDER
O.A.Nos.701 and 702 of 2012 were filed by the applicant / plaintiff, i.e., Britania Industries Limited, seeking for the grant of an interim injunction restraining the respondents from manufacturing, selling, ordering, offering for sale or supply, supplying, advertising, directly or indirectly dealing, adopting, using or otherwise in dealing with the biscuits under the name NUTRIBIC, infringing the rights of the applicant to its registered trademark in NUTRIBIX and also for the grant of an interim injunction restraining the respondents from manufacturing, selling, ordering, offering for sale or supply, supplying, advertising, directly or indirectly dealing, adopting, using or otherwise dealing with the said biscuits under the name "Horlicks Nutribic 1st Zero Added Sugar Biscuits with five grain" by using any packaging whatsoever with the colour scheme, getup and layout identical or similar to the trade dress and getup of the plaintiff distinctive Britannia Nutrichoice Oats and other variants and thereby passing off or enabling others to infringe or pass off their products as that of the plaintiff's products or in any other manner whatsoever infringing or passing off its products as that of Britannia Nutrichoice Oats pending disposal of the suit.
2.The plaintiff filed the suit making similar prayer of permanent in nature. When the matter came up on 23.08.2012, this court had granted an interim injunction in both applications on the basis that the applicant / plaintiff is having a valid registration certificate for the word mark "Nutribix" and also for the word mark "5 Grain (Lable)(Dev.)". The applicant was manufacturing and selling "Britannia Nutrichoice", which is "Oats" with a particular colour scheme and wrapper. The defendants are manufacturing and selling similar goods bearing the name "Horlicks Nutribic" with almost same wrappers. The defendants had launched their products very recently and had infringed the trademark of the plaintiff and are passing off their goods as that of the plaintiff. Therefore, the court found that the plaintiff is having the trademark registration and the style, colour, format and the trade dress of the goods as per the documents enclosed and they have made out a prima facie case for the grant of an interim injunction.
3.Aggrieved by the grant of the interim order, the first defendant had filed applications in A.Nos.3890 and 3893 of 2012 for vacating the interim order, dated 23.08.2012 and A.Nos.3891 and 3892 of 2012 for suspending the operation of the interim order dated 23.08.2012. A common counter affidavit, dated 12.09.2012 was filed by the applicant / plaintiff. The respondent / first defendant has filed a rejoinder affidavit, dated 14.09.2012.
4.The case of the applicant was that they are manufacturing continuously and selling their Nutrichoice range of biscuits since November, 1998. They are selling various Nutrichoice range products, such as "5 Grain, Hi Fibre Digestive Biscuits, Diabetic Friendly Essentials Oats Cookies, Diabetic Friendly essentials Ragi Cookies, Diabetic friendly essentials Multigrain Roasty, multigrain Thins, Multigrain Roasty, Thin Arrowroot, Classic lite cracker, Nature spice cracker". The first respondent is aware of the goodwill, reputation and the brand recognition of the biscuits marketed by the applicant. They had deliberately copied the essential features of the Nutrichoice trade dress used by the plaintiff with a view to deceive and cause confusion among consumers and traders and ride on the reputation of the applicant to establish itself in the market and sell its biscuits, passing them as the biscuits manufactured by the applicant. The act of copying the trade dress of Nutrichoice biscuits manufactured and marked by the applicant and passing off its product as that of the applicant would cause injury to the goodwill, reputation and brand recognition to the applicant in respect of its biscuits Nutrichoice. In addition, the applicant is a registered owner of the trademark Nutribix registered under Clause 30 since 1999. The registration in favour of the applicant is subsisting and valid. But the first respondent had recently launched its range of biscuits under phonetically similar trademark Nutribic. The first respondent had launched its nutritious biscuit range under a phonetically similar trade name Nutribic and had copied the trade dress of Nutrichoice Oats owned by the applicant with a deliberate and malafide intention to ride on the popularity and brand recognition of Nutrichoice range of biscuits marketed by the applicant. Ordinary consumers will be deceived by such deception adopted by the first respondent, thereby causing irreparable and irreversible loss to the rights of the applicant.
5.The applicant is the copyright owner of the wrapper design under the Copyright Act for its wrapper for "Nutri Choice" and "Britannia Nutri Choice Oats" from October, 2010 with its distinctive get up, colour scheme including the display of its trademarks, arrangement of items etc., on the wrapper. The artistic work has been created by the applicant at considerable costs. The applicant has exclusive rights in the trade dress for the wrappers of Britannia Nutrichoice having distinctive colour scheme, getup and layout. It qualifies for the artistic work within the meaning of the Copyright Act. The trade dress of the applicant's Britannia Nutrichoice Oats on the wrapper or label is unique, distinctive and creates an instant recognition in the minds of the trade and public and that they intuitively identify the same with the applicant. By virtue of a long, extensive and continuous use, the trade dress in respect of the applicant's Britannia Nutrichoice Oats has acquired a secondary meaning and is exclusively identified with the biscuits manufactured and sold by the applicant. On 20.08.2012, the sale personnel of the applicant came across the biscuits named as Horlicks Nutribic Zero Added Sugar Biscuits with a description of "1st Zero added sugar biscuits with Five Grains" marked by the first respondent in a slavishly copied packaging / trade dress as that of the Britannia Nutrichoice Oats in the shop of the second respondent. The first respondent had copied several features of the applicant's various Nutrichoice packs including Nutrichoice Ragi, Nutrichoice 5 Grain and Nutrichoice Hi Fibre Digestive. They are deceptively similar to Nutribix, which is a registered trade mark of the applicant.
6.The first respondent has packed its product with identical colour scheme, get up and individual identifying factors and in addition had copied all the essential features of the applicant's Britannia Nutrichoice Oats in its package. A bare perusal of the packets of the applicant and the first respondent leaves no doubt that the first respondent uses the applicant's Britannia Nutrichoice Oats packaging to design its Horlicks Nutribic 1st zero added sugar biscuits with five grains packets. The similarities and near identify between the two packets are not due to coincidence, but was committed with deliberate and malafide intention to trade upon the reputation and goodwill enjoyed by the applicant. An ordinary purchaser would involuntarily confuse the wrapper and packaging of the two products. It would cause grave and irreparable damage to the humanguous reputation gained by the applicant. The applicant has suffered an irreparable and irretrievable loss and injury to its trademark, goodwill, reputation and market share and sales. Therefore, an interim injunction was sought for.
7.In the counter affidavit filed in support of the vacate injunction applications as well as suspending the operation of the interim order applications, it was contended that the applicant / plaintiff had indulged in insufficient disclosure of its rights over its label mark "5 Grain" as it is evident from a bare perusal of the trademark certificates. This court was misled in believing that the applicant /plaintiff is having exclusive monopoly over the words "5 Grain". But, in fact the protection granted by the trade mark registration is only in respect of the label / device and its use in a particular manner. The applicant had suppressed the complete absence of the use of the registered trade mark "Nutribix". They are mixing the issues of trademark and trade dress only with an object of preventing the competitor from entering into the category of which the respondent is a market leader. This insufficient disclosure is the fallout of an attempt to portray as dishonest and infringing the genuine descriptive manner in which the words "Five Grains" were used by the respondent / first defendant. It was stated by the first defendant that no person can own any rights whatsoever over a generic and descriptive word like "5 Grain". Irrespective of the right available to the plaintiff, the first defendant company had stated that the 1st Zero added sugar biscuits with five grains is a statement which described the ingredients and the advantages of the first defendant's company's product. It was falsely alleged that there was similarity between the product of the plaintiff and the first defendant. The defendant also is enjoying exclusive popularity by the brand name Horlicks in India. The defendant is a renowned corporation and therefore, its affiliate and group companies are operating in several counties around the World. The manufacture and sale of a wide range of nutritional and healthcare products including Horlicks, a flagship brand is 100 year old. They are also the manufacturers and markets a diverse range of products under many famous and well known trade marks, such as Boost, Viva, Maltova.
8.It was stated that they are the strong marketing and distribution network in India comprising over 600 wholesalers and covering over 7 lakhs retail outlets. Their company Horlicks has about 50% of the market share in the Health Food drinks category. They had been introducing a wide range of products in the Indian market. In 2011, they had launched Horlicks Gold, a premium variant of the malt drink under the Horlicks mega-brand. In the year 2012, the first defendant had adopted the trademark Horlicks Nutribic to be used in respect of the range of functional biscuits to meet the lifestyle needs of literate urban population. The product is of digestive biscuits and zero added sugar biscuits, which are generally not consumed by the rural and illiterate or semi-literate population. It is consumed by the population leading an urban lifestyle. Prior to the adoption and use of the mark Horlicks Nutribic, the first defendant had conducted a search in the market to see whether any person was using the same mark. As no manufacturer or marketer had earlier used the above said mark, the company had a launch of functional biscuits under the mark Horlicks Nutribic in respect of goods on 03.8.2012 and since then the trade mark "Horlicks Nutribic" had been used in connection with the goods. The trade mark Horlicks Nutribic has been continuously used in different parts of India by the defendant company. The said product has become extreme popular. They are selling their product as Horlicks Nutribic and not as Nutribic alone. The product of the applicant is known as Britannia Nutrichoice. There was no consistency in the trade dress of Britannia Nutrichoice range of biscuits.
9.It was further stated that the applicant's trademark claimed to have been registered way back in the year 1999, cannot be used to claim monopoly protection for such mark. As a basis of infringement proceedings against a third party, for the last 13 years, no efforts were take by the registered proprietor towards using such mark. In fact, such mark is liable to be removed from the register and that the respondent / first defendant had already initiated process to file an application under Section 47 of the Trade Marks Act before the Trade Mark registry. The respondent company was entirely honest and had acted with all due diligence before adopting the mark Horlicks Nutribic. The applicant had mislead this court into believing that the trade dress of Britannia Nutrichoice Oats biscuits is continuously used from 1998, but such statement is contradictory inasmuch as they had later stated that the trade dress Britannia Nutrichoice Oats biscuits was devised only in October, 2010. The applicant has been using the name only in Oats biscuits and that too on a single pack size. The sales figure produced by the applicant is incorrect as no details of the product was given. The respondent / first defendant are consistently using the blue colour in their wrappers for various Horlicks products over many years. There was no similarity between the two products as the word Horlicks has been written in white font in a blue background and that the company has been using the white font to write the brand Horlicks on all its wrappers. The identical stacking is also found in all the other biscuits manufactured by the respondent including Horlicks Nutribic Fibre Rich Digestive Biscuits and even in the bigger pack of Horlicks Nutribic Zero Added Sugar biscuits. But the plaintiff had raised no objection. The blue colour, the wave mark, Horlicks written in white font have been adopted by the respondent in its wrappers for various products for many years. The trade dress varies across different variants of Britannia Nutrichoice biscuits with no consistent use of imagery or colour and that they are highlighting vague similarities between the smaller pack of Britannia Nutrichoice Oats biscuits.
10.The difference between the products of the two companies were set out in paragraph 28, which is as follows :
Horlicks Nutribic Zero Added Sugar Biscuits Britannia NutriChoice Oats Biscuits Megabrand HORLICKS and the logo of "Horlicks Nutrition Academy" are prominently displayed on front of the pack.
The logo of Britannia in red brought is entirely different as compared to HORLICKS NUTRIBIC biscuits.
HORLICKS brand wave is the centre point of this pack, which divides the pack in two parts. This is a unique and consistent feature in all the Horlicks products across a wide variety of goods.
A blue coloured curve inconsistently covers the pack and the curve is different, both in shape and colour, on different packs even where the only difference is size of the pack. The curve cannot be considered as a unique feature of all BRITANNIA NUTRICHOICE biscuits.
HORLICKS NUTRIBIC Zero Added Sugar Biscuit has Five Grains (Oats, Corn, Ragi, Wheat 7 Rice), which are prominently displayed on the pack.
BRITANNIA NUTRICHOICE OATS biscuit only has oats, which has been displayed on the pack.
Three major areas on the pack that convey information :
* top right part, * top left part, and * the bottom area.
Only one information area is available on centre right.
HORLICKS NUTRIBIC Zero Added Sugar Biscuit is a superior product fortified with nutrients and it has no artificial sweeteners, which has been portrayed on the pack. No such features are available on BRITANNIA NUTRICHOICE OATS biscuit pack.
11.It was further stated that the infringement prayer has no legs as the plaintiff's trademark Nutribix was not used admittedly for more than six years. Hence the registration is liable to be removed or expunged on that ground. Already a rectification petition was filed before the Appellate Board. The applicant / plaintiff had not shown any sale in the last 5 years and 3 months preceding the rectification petition. Similarly the passing off prayer is prima facie faulty. The plaintiff had obtained an injunction against the imitating packaging of Britannia Nutrichoice Oats and its variants. The prayer was prima facie vague, ambiguous and bad in law. If any variant has to be included in the relief, then such packaging should be specifically identified and included in the prayer. The applicant had malafidely acted in filing the suit. The date from which the sale of Britannia Nutrichoice Oats with this trade dress was commenced has not been stated and it has been conveniently kept undisclosed. The plaintiff had not registered the words '5 Grain". The words "5 Grain" are generic and descriptive term. The question of any confusion by the customer will not arise. The plaintiff had conveniently produced sales figure for the entire Nutrichoice of products which was totally irrelevant as the injunction is based solely on Britannia Nutrichoice Oats packaging. The plaintiff's Britannia Nutrichoice Oats package has become the subject matter of the suit, it did not contain the trade mark '5 Grain" at all. While the applicant / plaintiff used the descriptive words "Diabetic Friendly essentials", the respondent / defendant used the word "Diabetes Smart". The plaintiff cannot claim any exclusive use over the word "diabetes" due to its use of the descriptive words "Diabetic Friendly Essentials". No relief is claimed so far as the copyright either in the plaint or in the interim injunction applications.
12.It was further stated that the case of passing off is only based on "Britannia nutrichoice Oats' packets alone. Therefore, bringing other goods is not within the purview of the suit. The question of using the registered trade mark Nutribix never arose. They had never got any goodwill or reputation since no manufacturing has been made with the said trade mark since the date of the registration. The word "Horlicks" has been in use by the respondent / first defendant for more than 100 years and will not create any deceptive appearance. There is no confusion of purchasing the goods by the common purchaser. The injunction sought for by the applicant / plaintiff is clearly misconceived. As far as the trade dress, there was considerable different between the two trade dresses. The applicant / plaintiff had not made out any case for the grant of the interim injunction under Order 39 Rules 1 and 2 of CPC.
13.In reply to the stand of the respondent, the applicant / plaintiff in their counter had stated that the Trade mark Nutribix was honestly conceived in the year 1999 and that the registration was obtained on 29.10.1999. Since there was categorical admission by the respondent that they had adopted the trade mark Nutribic after conducting due diligence search, the defendant had actual knowledge of the plaintiff's intellectual property rights. The trade dress employed by the respondent in respect of its Horlicks Nutribic 1st Zero Added Sugar Biscuit with five grains" contained all the broad and essential elements of the plaintiff's Nutrichoice Oats biscuits and that the consuming public is bound to be deceived by the slavish imitation. The products of the plaintiff and the defendant were sold across the country and if they were placed side by side in the super market and stores where the goods are generally purchased by the general public. The general public have been acquainted with the distinct trade dress, label and get up used by the applicant for more than two years. Further, in order to justify their using word Nutribix, in paragraph 5 of the common counter affidavit, it was stated as follows :
"5.....The plaintiff had put to use the trademark NUTRIBIX by incorporating its NUTRICHOICE NUTRIBIX products in the website www.ihealthu.com, a website specially designed for promotion of NUTRICHOICE products. Subsequently, the plaintiff has also manufactured the packaging material and advertised the same in national dailies as early as on 22.08.2012. Hence, though the allegation of non-user is not germane for deciding of the present case, the defendant is not correct in stating that the trademark NUTRIBIX of the plaintiff is liable to be rectified on the ground of non-use...."
14.in the rejoinder affidavit filed by the respondent / first defendant, it was contended that the use of the word Nutribix was never made use before 22.08.2012. The plaintiff had abandoned the use of the word Nutribix. Under Section 47 of the Trade Marks Act, already steps have been taken to remove the said trade mark. The green and blue colour combination found in the Horlicks Milk Biscuits with the blue and red wave was manufactured and sold by the respondent for fairly a long period and hence the question of the packaging will not arise. The contention that the applicant had engaged the services of a design agency to create the label / artwork in respect of the trade mark Nutribix is highly suspect. The annexed artwork did not appear even remotely artistic. There was no agreement, dated 10.10.2011 executed between the applicant and the design agency. No agreement has been furnished to this court. The letter of assignment dated 11.01.2012 filed before the court is highly contradictory in nature. The allegation that the manufactured packaging material with the word Nutribix was advertised as early as on 22.08.2012 is an after thought and unsupported by evidence.
15.Mr.Satish Parasaran, learned counsel for the applicant referred to a judgment of the Delhi High Court in Colgote Palmolive Company and another Vs. Anchor Health and Beauty Care Pvt. Ltd. reported in 2004 (1) R.A.J.214 for contending that even in respect of the trade dress, there can be confusion to the public in purchasing the product. In paragraphs 52,54,56 and 64, it was observed as follows :
"52.It is the overall impression that customer gets as to the source and origin of the goods from visual impression of colour combination, shape of the container, packaging etc. If illiterate, unwary and gullible customer gets confused as to the source and origin of the goods which he has been using for longer period by way of getting the goods in a container having particular shape, colour combination and get up, it amounts to passing off. In other words if the first glance of the article without going into the minute details of the colour combination, getup or lay out appearing on the container and packaging gives the impression as to deceptive or near similarities in respect of these ingredients, it is a case of confusion and amounts to passing off one's own goods as those of the other with a view to encash upon the goodwill and reputation of the latter.
54.May be, no party can have monopoly over a particular colour but if there is substantial reproduction of the colour combination in the similar order either on the container or packing which over a period has been imprinted upon the minds of customers it certainly is liable to cause not only confusion but also dilution of distinctiveness of colour combination. Colour combination, get up, lay out and size of container is sort of trade dress which involves overall image of the product's features. There is a wide protection against imitation or deceptive similarities of trade dress as trade dress is the soul for identification of the goods as to its source and origin and as such is liable to cause confusion in the minds of unwary customers particularly those who have been using the product over a long period.
56.It is not the diligent or literate or conscious customer who always remain conscious to the quality of goods he has been purchasing which determines an offence of passing off. It is the unwary, illiterate and gullible persons who determine by arriving at a conclusion whether the infringed goods are confusingly similar in colour combination, get up, lay-out printed over the container or packing. If it is not so then the offence of passing off will cease to have its existence once the guilty party chooses a different trade name.
64.Even in changing competitive commercial complexion of Indian economy, the second comer is also required by giving his product a name and dress descriptive and fanciful in its own right and selling it on its own merit not by confusing the public into mistakenly purchasing his product for his competitor's and the second comer must create a reputation of its own and not trade on the goodwill of another product already established at considerable cost and risks."
16.The other contention that the word "Nutribix" was insignificantly shown cannot be a ground and for this purpose, a reference was made to as judgment of the Court of Customs and Patent Appeals in In re The Singer Manufacturing Company reported in 118 USPQ 310 and a reference was made to the following passages found in paragraphs 2 and 3 which reads as follows :
"While the design here sought to be registered appears on the goods, it clearly is not a pictorial representation of such goods, and is, at most, merely suggestive of the goods in a general sense. It is not so nearly descriptive of the goods as a mark which actually pictures the goods in combination with other features.
3.We are unable to agree with the Assistant Commissioner that appellant's labels, because of their relatively small size, "can hardly make a commercial impression." No authority is cited, and none has been found, to the effect that a trademark use requires a display of a design of any particular size or degree of prominence. The important question is not how readily the mark will be noticed, but whether, when it is noticed, it will be understood as indicating origin of the goods."
17.He further referred to a judgment of the Court of Appeals, First Circuit in Boston Athletic Association V. Sullivan reported in 9 USPQ2d 1690 for contending that for an infringement, if there is likelihood of confusion and if the plaintiff shows that the defendant is confusing the consumer, then the court can draw the inference of likelihood of confusion.
18.He also referred to a passage from the Text Book of "McCarthy on Trademarks and Unfair Competition" by J.Thomas McCarthy, Fourth Edition of Volume I with reference to the defendant's liability for unfair competition regarding trade dress. The passage found in paragraph 8.2 may be quoted as follows :
"A defendant cannot avoid liability for unfair competition simply by segregating out the various aspects of plaintiff's product, packaging and labels and claiming that no one of these is protectable in and of itself. It is the total combination of elements of the "trade dress" as defined by the plaintiff that is at issue:"
19.He further referred to a judgment of the Court of Appeals, Second Circuit in American Chicle Company Vs. Topps Chewing Gum, Inc. reported in 99 USPQ 362 regarding infringement based on package.
20.A further reference was made to a judgment of the District Court, S.D. New York in Commerce Foods, Inc. Vs. PLC Commerce Corporation et al reported in 212 USPQ 137 for contending that the test of unfair competition was the likelihood of the prospective purchaser being misled or confused by the defendant's using the trade mark or the trade dress in question and hence an injunction can always be granted against the confusing similar trade dress even if no secondary meaning is shown.
21.A reference was made to a judgment of the Bombay High Curt in Sun Pharmaceutical Industries Limited Vs. CIPLA Limited reported in 2007 Vol.109 (1) Bom.L.R. 0445, wherein it was held that the plaintiff is entitled to an injunction on the basis of the prior user.
22.A reference was made to a judgment of the Bombay High Court in Gorbatschow Wodka KG Vs. John Distilleries Limited reported in 2011 (47) PTC 100 (Bom) for contending that protection of the remedy in passing off is as much available to a manufacturer who invests capital, time and ingenuity in producing premium goods or services. In such case, one must exercise one's common sense and if one is driven to the conclusion that what is intended to be done is to deceive if possible, then the party is entitled for an order in their favour.
23.A further reference was made to a judgment of the Bombay High Court in Drums Food International Pvt. Ltd. Vs. Euro Ice Cream and another reported in MIPR 2011 (2) 0376 for contending that the right to have mark registered is not depending upon the actual use of the mark at the time of registration and that a reference was made to Section 18(1) of the Trade Marks Act.
24.He referred to a judgment of the Supreme Court in Parle Products (P) Ltd. v. J.P. and Co., reported in (1972) 1 SCC 618 to find out as to how deceptive similarity can be found out. A reference was made to the following passage found in paragraph 9, which reads as follows :
"9.It is, therefore, clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case we find that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can essily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence. The word Gluco Biscuits in one and Glucose Biscuits on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in our opinion who has a look at one of the packets today may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs' goods, he might easily mistake the defendants' wrapper for the plaintiffs' if shown to him some time after he had seen the plaintiffs'. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Homes. We have therefore no doubt that the defendants' wrapper is deceptively similar to the plaintiffs' which was registered. We do not think it necessary to refer to the decisions referred to at the bar as in our view each case will have to be judged on its own features and it would be of no use to note on how many points there was similarity and in how many others there was absence of it."
The learned counsel also produced for viewing the products of the applicant and the products of the defendant so as to enable the court to apply the test as set out above.
25.Lastly, the learned counsel further referred to a judgment of the Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., reported in (2001) 5 SCC 73, wherein an action for passing off and for deciding the question of deceptive similarity, the factors have been set out and in paragraphs 35 and 36, it was observed as follows :
"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 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.
(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."
26.Per contra, Mr.T.V.Ramanujun, learned Senior Counsel leading Mr.V.P.Raman, learned counsel for the respondent / first defendant referred to various judgments in support of his contention. It is not relevant to consider all of them at this stage.
27.He referred to a judgment of the Bombay High Court in Cluett Peabody & Co. Inc Vs. Arrow Apparals reported in 1998 PTC (18) for contending that if the trade mark registered is not used for several years, prima facie it becomes a source of monopoly which is not the object of the Act. In such circumstances, an injunction can be rejected with a direction to the defendant to maintain an account of profits every year. Further, referring to the said judgment, the learned counsel further stated that the trade mark has no meaning even if it is registered, unless it is used in relation to the goods. The non use may lead to its death. A trade mark which drops out of the use dies. Where there are no goods offered for sale, there is no use of the trade mark.
28.He further referred to a judgment of the Delhi High Court in Kellogg Company Vs. Pravin Kumar Bhadabhai and another reported in 1996 (36) DRJ 509 for contending that it is in respect of the claiming trade dress, one has to see whether the consuming public would be confused or misled by the getup, the formula or the advertising of the product of the respondent thinking that it was the appellant's dissimilar product. In that judgment, a passage of Lord Halsbury was quoted in paragraph 12, which reads as follows :
" "I can quite understand a case in which, although colourably a defendant has introduced his own name, yet the nature of the wrapping up, the nature of the package itself, or, in this case, the shape of the bottle, may all have been so closely imitated that the mere introduction of some distinctive mark, to which no ordinary observer would have applied his mind, will not get rid of the obvious intention to pass one goods off as the other; but to apply the proposition to this case appears to me to be a little short of ridiculous".
It was held that the name of 'Gibbens' was so plainly placed upon the bottle as it could possibly be and it was in the place where 'Schweppes' was on the bottle of the appellant, and there was no intention to deceive."
29.In the same judgment, in paragraph 14, it was observed as follows :
"14.In the present case, in spite of any other close resemble ness in the cartons, the name 'AIMS' written prominently on the respondents carton would, in our view, prima facie, as in case before Lord Halsbury show that there was no intention on the part of the defendant to play fraud by misrepresenting his goods as the goods of the appellant. In that very case, Lord Halsbury emphasized the need to see the whole description on the goods as one whole and not the individual features in isolation. He said :
"Inasmuch as you and certainly not to impute fraud without proof, you are not to suggest that people are fraudulently committing some commercial trick without sufficient evidence, and I cannot conceive here how anybody could gravely argue that the one thing could be mistaken for the other by anybody who looked as it.
**** ***** ****** The whole question is these cases is whether the thing taken in its entirety, looking at the whole thing, is such that in the ordinary course of things a person with reasonable apprehension and with proper eyesight would be deceived."
Thus, the above case also lays down that the trade dress or rather the whole thing must be seen in its entirety and not parts in isolation. It is not permissible, Therefore to say that the square on the left side top had a small red and green border or there was a red band horizontally and defendant's carton if examined from close quarters, showed these feature. Viewed as a whole, one can see that the words Kellogg's, and AIMS are prominently displayed on each and Therefore there can be no confusion, prima facie."
30.Inspiration was also drawn to the passage regarding consumers who are likely to deal with the goods. In paragraph 22 of the same judgment, it was observed as follows :
"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."
31.The learned counsel also referred to a judgment of this court in M/s.Aravind Laboratories Vs. Modicare reported in 2011-4-L.W. 55 and a reference was made to the following passage found in paragraph 36, which reads as follows :
"36.To succeed in an action for passing off, the plaintiff must satisfy the "classical trinity" of (i) reputation (or goodwill) (ii) misrepresentation and (iii) damage, as has been held consistently by various Courts...."
If applied the said test, there is no scope for the plaintiff succeeding in the suit.
32.A reference was also made to a judgment of the Delhi High Court in Om Prakash Gupta Vs. Praveen Kumar and another reported in ILR (2000) II Delhi 124 for contending that non user of the trade mark for several years can be said that such trade mark was abandoned in the absence of any valid or reasonable classification.
33.In the light of these rival contentions and the above legal precedents, it is seen that the applicant / plaintiff has not made out any case for the grant of an injunction against the respondent. As rightly contended, the Trade mark Nutribix is yet to be used by the applicant. Even the advertisement produced does not show that they have already used the trade mark in the market. In this context, the respondent's contention that the said document was produced as an after thought as no such averment was made in the plaint as well as in the original averments cannot be lost sight of. It is no doubt true that a mere non use of the trade mark will not lead to an automatic conclusion of abandonment. But it could be a prima facie case for declining the relief since as on date there is no product of the applicant in the market with the said trade mark. The omnibus prayer sought for by the applicant related to only one product. The major argument based upon the trade dress also does not convince especially when several brands of such biscuits have certain similarities in colour combination.
34.Further the fact that the brand name of the product was prominently displayed will easily make any consumer a particular choice to prefer their own product and it cannot mislead any one. Merely because of colour combination used in the trade dress, the reputation of the applicant is affected also does not stand to reason as in respect of the efforts taken out to launch one product, the details were also given in respect of their product. Therefore, relative efforts taken by them was not disclosed. In any event, after seeing both products closely, there is no similarity between these two products. It cannot be said that the trade mark of the applicant has been infringed or that by using the similar colour in the trade dress, an attempt for passing off was made by the defendant.
35.Under these circumstances, O.A.Nos.701 and 702 of 2012 will stand dismissed. A.Nos.3890 and 3893 of 2012 for vacating the interim order will stand allowed. A.Nos.3891 and 3892 of 2012 seeking for suspending the operation of the interim order are closed as unnecessary. No costs.
vvk