Delhi District Court
A Suit For Permanent Injunction ... vs P. Sulochana Bai (2015) 7 Scale 136 on 23 August, 2018
IN THE COURT OF SH. SANJAY KUMAR, ADDITIONAL
DISTRICT JUDGE-02, WEST, DELHI.
TM-23/17
M/s. Ozone Overseas Pvt. Ltd.
vs.
Mr. Tajinder Kumar Chawla
ORDER
23.08.2018
1. A suit for permanent injunction restraining the defendant from infringement of Copyright, Passing off, delivery up, rendition of account etc. filed by M/s. Ozone Overseas Pvt. Ltd. (hereinafter referred to as 'plaintiff company') against Mr. Tajinder Kumar Chawla, Trading as M/s Hari Om Trading having address at 5, New Adarsh Nagar, Near Hotel Inderprasth, Jalandhar - 144002 (Punjab) and corporate office at Block J-1/73, DDA Flats, Kalka Ji, New Delhi-110019 (hereinafter referred to as 'defendant company').
2. The suit is accompanied with an application under Order 39 Rule 1 & 2 CPC for ad-interim injunction. The plaintiff company seeks interim injunction for restraining the defendants, their partners or proprietor, their servants, wholesalers, retailers, dealers, distributors and vendors from using trademarks OXZONE and OXONE and using domain name www.oxzoneindia.com or any other trademark, domain name, corporate name, trade name which may be identical or TM No. 23/17 Page No. 1/29 deceptively similar to the trademarks OZONE or domain name www.ozone-india.com in any manner for the purpose of selling, marketing, distributing, exporting, importing, offering to sell, advertising, directly or indirectly, any products particularly hardware products including Door & window fittings, Door Closers, Door stoppers, Hinges, Piano Hinges, Butt Hinges, Hangers, Handles, Tower Bolts, Al drops, Floor Springs, Locks & Cathers etc. which is amounting to infringement of the plaintiff's trademarks and copyright as well as passing off.
3. In brief, the facts are that plaintiff company is a limited company and Sh. Kundan Bisht is authorized and competent to institute, sign and verify the present proceedings on behalf of the plaintiff vide Power of Attorney executed on 05.11.2015. It is stated that plaintiff company is one of the leading manufactures, seller and exporter of Architectural Glass Fittings, Door Closing Devices, Door Locks, Electronic Safes and Furniture Fittings.
4. It is stated that the plaintiff is conducting its business activities under the Trademarks "O-ZONE", "OZONE", "OZONE with 'O' Device" and "O Device" which were adopted in the year 1999 and since then, it has been used by the plaintiff honestly continuously and openly during its commercial activities. The other group companies of the plaintiff are also using the mark OZONE as part of corporate name viz OZONE GLASS PVT. LTD., OZONE MATELLICS PVT. LTD. & OZONE MATRIX INFRACON PVT. LTD.
TM No. 23/17 Page No. 2/295. It is stated that the plaintiff is the registered Proprietor of the marks "O-ZONE", "OZONE", "OZONE with 'O' Device" in India in various classes i.e. under Class 6, 7, 8, 9, 11, 17, 19, 20, 21, 25 and 35, details of which are given in the plaint.
6. It is stated that apart from India, the plaintiff Company has also filed applications for registrations trademarks OZONE in respect of Architectural and Hardware products in Class 6 in various countries like, Argentina, Australia, Bhutan, Brazil, Canada, Costa Rica, E.U., Iran, Israel, Kenya, Kuwait, Russia, Singapore, South Africa, Sri Lanka, Thailand, UAE, USA, Ghana, Bahrain, Bangladesh, Oman, Nigeria, Pakistan, Hong Kong, Malaysia, Nepal, Vietnam, Japan, Saudi Arabia, Indonesia, Philippines, as detailed in the plaint.
7. It is stated that the device OZONE of the plaintiff has been designed in a distinctive manner having its own features, layout, get up and arrangement of features. The plaintiff is also using the said logo with other sub-brands of the plaintiff i.e. OZONE@HOMZ, OZONE HUB and OZONE PLUS etc. The plaintiff is also conducting its business activities through information, logos, devices, photographs, catalogs published from time to time on its websites www.ozone-india.com and www.ozonehardware.com.
8. It is stated that the plaintiff has worldwide sales network and it is marketing and promoting its products in India and abroad on a substantial scale using trade TM No. 23/17 Page No. 3/29 name/trademarks O-ZONE/ OZONE. The annual sales turn- over achieved by the plaintiff company during financial year 2016-2017 is Rs.2453605178/-. The plaintiff company is also advertising its products under the trademarks O-ZONE/ OZONE through various media of publicity. The business promotion figures of the plaintiff incurred during the financial year 2016-2017 is Rs.43991610/-. The extensive, uninterrupted and wide use of the trade mark OZONE by the plaintiff has generated colossal sales volumes for the plaintiff and unprecedented and unmatched reputation/goodwill in the domestic as well as international markets.
9. It is stated that during third week of August 2016, the plaintiff came across the trademark OXZONE of the defendants which was published in the Trademark Journal No. 1742 dated 24.06.2016 bearing application no. 2176219 dated 16.07.2011 in Class 6 with regard to all type of hardware item including Door & Window Fittings, Door Closers, Door Stoppers, Hinges, Piano Hinges, Butt Hinges, Hangers, Handles, Tower Bolts, Aldrops, Floor Springs, Locks & Cathers. By comparison of both the trademarks side by side, it crystal clear that the defendants have adopted the near identical trademark and device for the identical set of goods. The plaintiff has filed its objections with the Trademark office against the above said trademark application Oxzone on 14.08.2016.
10. It is further stated that during the last week of July, 2017, the plaintiff came to know that defendants another trademark OXONE has been published in the Trademark TM No. 23/17 Page No. 4/29 Journal in Class 6. The applicant filed an opposition seeking rejection of the trademark OXONE falling in Class 6. The defendants have bent upon to infringe the trademark OZONE of the plaintiff. Both the marks adopted by the defendant i.e. OXZONE and OXONE are visually, phonetically and structurally near identical to the plaintiff's trademark OZONE for the same set of goods. The defendants have cleverly replaced the alphabet 'Z' with the alphabet 'X' and adopted the mark OXONE against the OZONE of the plaintiff. Both marks OZONE and OXONE sound identical while pronounced. The defendants have no justification for adoption of the mark OXONE as the mark has spelled without application of mind to come closure to the mark OZONE.
11. It is stated that the defendants have copies and reproduced each and every essential feature of the design, getup, layout and arrangement of features of the plaintiff's trademark OZONE and its device. The overall look of the defendants' counterfeit products under the trademark OXZONE is identical/confusingly and deceptively similar tot he packaging/ device / trademark of the plaintiff's reputed products sold under the trademark OZONE and its device. The defendants have also adopted the domain name www.oxzoneindia.com which is near identical to the plaintiff's domain name www.ozone.india.com.
12. It is stated that the similarities in the trademarks, device and domain names are not co-incidental but systematic, substantial and flagrant infringement of the legal rights of the plaintiff by the defendants. The conduct of the TM No. 23/17 Page No. 5/29 defendants is utterly dishonest, malafide and amounts to infringement of the plaintiff's trademarks and copyright as well as passing off their goods as the goods of the plaintiff.
13. It is stated that the defendant is riding upon the goodwill and reputation of the plaintiffs trademark OZONE to deceive the consuming public and the members of the trade. Hence, allowing the defendants to use the impugned marks OXZONE/ OXONE or any other mark deceptively similar to the plaintiff's trademark OZONE will lead to passing off degraded products at the cost of the plaintiff's reputation as well as the safety of the public.
14. In the application under Order 39 Rule 1 & 2 CPC, it is stated that the plaintiff would suffer irreparable loss damage and injury to their business, goodwill and reputation, if the defendants are not restrained immediately from using the trademark OZONE and logo of O-ZONE in any manner particularly hardware products. The plaintiff has made out a prima-facie case against the defendants and in its favour and the balance of convenience is also in favour of the plaintiff.
15. The plaintiff seeks interim injunction for restraining the defendants, their partners or proprietor, their servants, wholesalers, retailers, dealers, distributors and vendors from using trademarks OXZONE and OXONE and using domain name www.oxzoneindia.com or any other trademark, domain name, corporate name, trade name which may be identical or deceptively similar to the trademarks OZONE or domain name www.ozone-india.com in any manner TM No. 23/17 Page No. 6/29 for the purpose of selling, marketing, distributing, exporting, importing, offering to sell, advertising, directly or indirectly, any products particularly hardware products including Door & window fittings, Door Closers, Door stoppers, Hinges, Piano Hinges, Butt Hinges, Hangers, Handles, Tower Bolts, Al drops, Floor Springs, Locks & Cathers etc. which is amounting to infringement of the plaintiff's trademarks and copyright as well as passing off.
16. The defendant filed written statement and reply to the application under Order 39 Rule 1 & 2 CPC. In the preliminary objections, it is stated that this court does not have jurisdiction over the present suit as the registered office/ head office of the defendant is situated in Punjab and goods are shipped/sold to customers from Punjab. The defendants do not sell goods online not their website as alleged by the plaintiff. The website is for information purposes and getting inquiries from potential customers.
17. It is stated that the plaintiff has filed opposition against the registration of defendants OX ONE and OX ZONE marks which are presently pending adjudication. The plaintiff and the defendant have co-existed and conducted their business activities since last more than 15 years and there is no likelihood of confusion in the minds of the general consuming public. The OX ONE & OX ZONE marks are quite dissimilar to the OZONE marks in sight, sound and meaning and there is no likelihood of confusion in the mind of the public. The trademark Examiners have also concluded that the marks OX ONE and OX ZONE are quite dissimilar to the TM No. 23/17 Page No. 7/29 OZONE who did not raise any objection on this ground and allowed the marks to the published for opposition. The present suit has been filed without any valid cause of action, which also suffers from delay and latches. According to the allegations of the plaintiff, the cause of action arose for the first time in 2016, however, the suit was filed after delay of more than a year from the alleged first cause of action.
18. On merits, the averments made in the plaint are denied. It is stated that the defendants are not aware of the incorporation, existence and relation of the alleged group companies which contain the word O-ZONE. The present status of the O-ZONE marks concerning registration and renewal requires verification. The defendant has no information about the alleged dates of adoption & development of the websites as alleged by the plaintiff.
19. It is stated that there are several other businesses and persons who are also using the OZONE marks or marks containing the words O-ZONE. Online search of the word OZONE on google.com reveals various other businesses using the word Ozone, therefore, the alleged contention of the plaintiff that he is the sole user of the OZONE marks holds no ground.
20. It is stated that the defendant filed the application for OX ZONE (stylised mark) on 16.07.2011 in Class 6. The Examiner on being completely satisfied cleared the mark for publication, which was then opposed by the plaintiff and the opposition proceedings are not finished. The defendant is TM No. 23/17 Page No. 8/29 using the OX ZONE (stylised mark) since 01.04.2003 and has spent considerable amount of money in promotion of the mark. The defendant's OX ZONE (stylised mark) is quite dissimilar to plaintiff's OZONE marks, as the comparison of the marks has to be done as a whole and not by splitting a mark which has single word into different components and then compare it with a mark which had two distinct words/elements. Plaintiff's OZONE mark is a single word, whereas defendants OX-ZONE mark is made of two words, OX and ZONE. In the minds of the general consuming public OZONE means a gas or related to the ozone layer in the sky/atmosphere. On the other hand OX ZONE means a zone or area for an OX (a cow or bull). OX is the dominant word in the OX ZONE mark. Therefore, the OZONE and OX ZONE mark are dissimilar in meaning and connotation and the general consuming public is highly unlikely to be confused to take the one as the other. The sound of the OZONE and OX ZONE marks are highly dissimilar.
21. It is further stated that defendant filed the application for OX ONE (stylised mark) on 22.05.2017 in Class
6. During the examination stage, the Examiner did not raise any objections on the grounds of similarities with any other mark including any of the plaintiff's OZONE marks. This itself is a strong ground in support of the fat that the marks of the parties are highly dissimilar. The Examiner allowed the mark OX ONE mark to reach the publication stage, which was then opposed by the plaintiff and the opposition proceedings are pending. The defendant is using the OX ONE (stylised mark) since 01.04.2003 and has spent considerable amount of TM No. 23/17 Page No. 9/29 money in promotion of the mark. The plaintiff is also trying to mislead this Court by citing the how the marks would be written in Hindi when the marks are strong English words.
22. It is stated that plaintiff being a big market player is acting high handed manner to burden, disrupt the business of the defendant, who is smaller player in the market. The defendant and plaintiff has co-existed since last 15 years, and strangely it is now that plaintiff has opted to go after the defendant by making all these baseless allegations. The plaintiff alone does not have sole right to sell hardware products to exclusion of everyone else. Defendant seeks dismissal of the suit and application with costs.
23. Plaintiff filed replication to the written statement and rejoinder to the reply to application under Order 39 Rule 1 & 2 CPC and reiterated the averments made in the plaint and application.
24. I have heard Sh. Navneet Singh, Ld. Counsel for the plaintiff. None assisted from the side of defendant despite ample opportunities given for arguments. I have perused the record.
25. I have considered the submissions of Ld. Counsel for the plaintiff and also gone through the record. After going through the judgments of Hon'ble Delhi High Court in two recent cases has crystallized the law in the present facts and circumstances of the case. The judgments are Win- Medicare Pvt. Ltd. (Supra) and Senge Himalayan TM No. 23/17 Page No. 10/29 Ceramics (Supra) considering most of the judgments referred by both the parties. It is admitted case of the parties that the present case is for the passing off. Further, in order to appreciate the respective contentions of the parties, a detailed scrutiny is required of the respective trade marks/labels/packaging of the products of both the parties. The scanned copy of both the labels and trademarks is placed as under:
26. In the judgment of Senge Himalayan Ceramics (Supra), Hon'ble Delhi High Court held and observed the concept of prior user passing off and grant of injunctions against the registered property. It has been observed in para no. 35 and 36 of the judgment that :
TM No. 23/17 Page No. 11/29"35. Even the test of confusion and deception in order to prove the case of passing off has been very well discussed in case of Laxmikant V. Patel v. Chetanbhat Shah and Another, report in (2002) 3 SCC 65: 2002 (24) PTC 1 (SC), wherein the Supreme Court while considering a plea of passing off and grant of ad interim injunction held in no uncertain terms that a person may sell his goods or deliver his services under a trading name or style which, with the passage of time, may acquire a reputation or goodwill and may become a property to be protected by the Courts. It was held that a competition initiating sale of goods or services in the same name or by imitating that name causes injury to the business of one who has the property in that name. It was held that honesty and fair play are and ought to be the basic policy in the world of business and when a person adopts or intends to adopt a name which already belongs to someone else, it results in confusion, has the propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.
It was also held in Laxmikant v. Patel (supra) that the principles which apply to trademark are applicable to trade name also. Para 10 of the aforesaid judgment reads as under:
"The law does not permit anyone to carry on his business in such a way as would persuade the customers or clients in believing that his goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity or diverting the customers and clients of someone else to himself and thereby resulting in injury."
In this case, the Supreme Court further observed that:
"Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently."TM No. 23/17 Page No. 12/29
36. As far as prior user is concerned, in the very recent judgment delivered by the Supreme Court in the case of Neon Laboratories Ltd. v. Medical Technologies Ltd. And Ors., 2015 (64) PTC 225 (SC), the same aspect has been dealt with wherein by referring to another decision of the Supreme Court in S. Syed Mohideen v. P. Sulochana Bai 2015 (7) SCALE 136, prior to the Neon's case (supra) it was held as under:
"The 'first in the market' test has always enjoyed preeminence. 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: 1996 (16) PTC 583 (SC) and Milmet Oftho Industries v. Allergan Inc. (2004) 12 SCC 624. In Whirpool, 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 vs. 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. Learned Counsel for the Defendant-
Appellant has endeavoured to minimize the relevance of Whirpool as well as Milmet by drawing the distinction that those trademarks had attained world-wide reputation.
However, we think that as world shrinks almost to global village, the relevance of the transnational nature of a trademark will progressively diminish into insignificance. In other words, the attainment of valuable goodwill will have ever increasing importance. At the present stage, the argument in favour of the Defendant-Appellant that we find holds more water is that in both Milmet and Whirpool, as distinct from the case before us, the prior user of the successful party predated the date of application for registration of the TM No. 23/17 Page No. 13/29 competing party.
The question to examine, then, would be whether prior user would have to be anterior to the date of application or prior to the user by the Defendant- Appellant. In other words, the question before the Court would remain whether the situation on the date of app0lication for registration alone would be relevant, or whether the developments in the period between this date and the date of grant of registration would have any bearing on the rights of the parties. All these considerations will be cast into a curial cauldron to be appreciated by the Court before which the suit is being contested. In these premises, we cannot conclude that a prima facie case has not been disclosed by the Plaintiff-Respondents."
27. In the case of Win-Medicare Pvt. Ltd. (Supra), it has been held and observed in para 26 and 27 that :
"26. It is rightly mentioned in McCarthy on Trade Marks and Unfair Competition about the anti-dissection Rule, particularly, in para 23.15 which is reproduced here as under:
"23.15 Comparing Marks: Differences v. Similarities [1] The Anti-Dissection Rule [a] Compare composites as a Whole Conflicting composite marks are to be compared by looking at them as a whole, rather than breaking the marks up into their component parts for comparison. This is the "anti-dissection" rule. The rationale for the rule is that the commercial impression of a composite trademark on an ordinary prospective buyer is created by the mark as a whole, not by its component parts. However, it is not a violation of the anti-dissection rule to view TM No. 23/17 Page No. 14/29 the component parts of conflicting composite marks as preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole. Thus, conflicting marks must be compared in their entireties. A mark should not be dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parties thereof, that is important. As the Supreme Court observed: "The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety."
The anti-dissection rule is based upon a common sense observation of customer behavior: the typical shopper does not retain all of the individual details of a composite mark in his or her mind, but retains only an overall, general impression created by the composite as a whole. It is the overall impression created by the mark from the ordinary shopper's cursory observation in the marketplace that will or will not lead to a likelihood of confusion, not the impression created from a meticulous comparison as expressed in carefully weighed analysis in legal briefs.
TM No. 23/17 Page No. 15/29In litigation over the alleged similarity of marks, the owner will emphasize the similarities and the alleged infringer will emphasize the differences. The point is that the two marks should not be examined with a microscope to find the differences, for this is not the way the average purchaser views the marks. To the average buyer, the points of similarity are more important that minor points of difference. A court should not engage in "technical gymnastics" in an attempt to find some minor differences between conflicting marks. However, where there are both similarities and differences in the marks, there must be weighed against one another to see which predominate.
The rationale of the anti-dissection rule is based upon this assumption: "An average purchaser does not retain all the details of a mark, but rather the mental impression of the mark creates in its totality. It has been held to be a violation of the anti-dissection rule to focus upon the "prominent" feature of a mark and decide likely confusion solely upon that feature, ignoring all other elements of the mark. Similarly, it is improper to find that one portion of a composite mark has no trademark significance, leading to a direct comparison between only that which remains."
27. The Division Bench of this Court comprising of A.K. Sikri, J. and Rajiv Sahai Endlaw, J., delivered a judgment in the case of United Biotech (P) Ltd. v. Orchid TM No. 23/17 Page No. 16/29 Chemicals & Pharmaceuticals Ltd., 2012 (5) PTC 433 (Del.) (DB) in which law pertaining to anti-dissection rule as well as the test of deceptively similarity have been dealt with in great detail. The Division Bench has also laid down the rules of comparison in para 32 of the judgment. Two rival trade marks in the matter decided by the Division Bench were ORZID and FORZID and it was held that two trademarks are visually and phonetically similar and would cause deception in the minds of the consumer in relation to medicine. The relevant paras of this judgment reads as under:
"30. The law on this aspect, where the Courts are called upon to consider the deceptive similarity between the two marks is firmly engraved in a series of judgments pronounced by the Courts in the last half century or more. Many are cited by the learned counsel for the appellant, note whereof is taken above. Judgment of Supreme Court in the case of Cadila Health Care Limited (supra), which deals with pharmaceutical preparations, is a milestone on law relating to drugs. Application of the principles laid down in this judgment can be found in scores of subsequent, judgments of this Court and other High Courts. The position which emerges from the reading of all these judgments can be summarized in the following manner:
In such case, the central issue is as to whether the Defendant's activities or proposed activities amount to a misrepresentation which is likely to injure the TM No. 23/17 Page No. 17/29 business or goodwill of the plaintiff and cause damage to his business or goodwill. Lto extend this use to answer this, focus has to be on the aspect as to whether the defendant is making some representation in course of trade to prospective customers which is calculated to injure the business of goodwill of the plaintiff thereby causing damage to him. In the process, difference between the confusion and deception is to be understood. This difference was explained by Lord Denning in "Difference : Confusion & Deception" in the following words:
"Looking to the natural meaning of the words, I would make two observations: first, the offending mark must 'so nearly resemble' the registered mark as to be 'likely' to deceive or cause confusion. It is not necessary that it should be intended to deceive or intended to cause confusion. You do not have to look into the mind of the user to see what he intended. It is its probable effect on ordinary people which you have to consider. No doubt if you find that he did intend to deceive or cause confusion, you will give him credit for success in his intentions. You will not hesitate to hold that his use of it is likely to decide or cause confusion. But if he had no such intention, and was completely honest, then you will look carefully to see whether it is likely to deceive or cause confusion before you find him guilty of infringement.TM No. 23/17 Page No. 18/29
Secondly, 'to deceive' is one thing. To 'cause confusion' is another. The difference is this: when you deceive a man, you tell him a lie. You make a false representation to him & thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but you still do it, & so you deceive him. But you may cause confusion without telling him a lie at all, & without making any false representation to him. You may indeed tell him the truth, the whole truth & nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because be has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so."
31. While examining the question of misrepresentation or deception, comparison has to be made between the two trademarks as a whole. Rules of Comparison was explained by Justice Parker in the following words:
"You must take the two words. You must judge of them, both by their look & by their sound. You must consider the goods to which they are to be applied. You must consider the nature & kind of customer who would be likely to busy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trademark for the goods of the respective owners of the marks. If, considering all those circumstances, you TM No. 23/17 Page No. 19/29 come to the conclusion that there will be confusion - that is to say, not necessarily that one man will be injured & the other will gain illicit benefit, but that there will be conclusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case."
32. Following Rules of Comparison can be culled out from various pronouncements of the Courts from time to time.
I. Meticulous Comparison not the correct way.
II. Mark must be compared as a whole.
III. First Impression.
IV. Prima Facie view not conclusive.
V. Structural Resemblance.
VI. Similarity in Idea to be considered.
33. In this process, first, plaintiff is required to prove the following:
(i) The business consists of, or includes selling a class of goods to which the particular trade name applies;
(ii) That the class of goods is clearly defined & is distinguished in the public mind from other goods;
(iii) Because of the reputation of the goods, there is goodwill in the name;
(iv) The Plaintiff is a member of the class selling the TM No. 23/17 Page No. 20/29 goods is the owner of goodwill which is of substantial value;
(v). He has suffered or is likely to suffer damage.
34. While comparing the few marks in order to see as to whether there is likelihood of confusion or not, following words of wisdom of the Supreme Court in Laxmikant V. Patel v. Chetanbhai Shah and Another, (2002) 3 SCC 65: 2002 (24) PTC 1 (SC) also need to be kept in mind:
"10. A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by limitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion TM No. 23/17 Page No. 21/29 and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury."
35. We would like to quote from the following passage from the book "The Modern Law of Trade Marks" authored by Christopher Morcom, butterworths 1999, which finds approval by the Supreme Court in Ramdev Food Products Ltd. (supra):
"The concept of distinguishing goods or services of the proprietor from those of others was to be found in the requirements for a mark to be registrable. Essentially, whatever the wording used, a trade mark or a service mark was an indication which enabled the goods or services from a particular source to be identified and thus distinguished from goods or services from other sources. In adopting a definition of 'trade mark' which simply describes the function in terms of capability of 'distinguishing the goods or services of one undertaking from those of other undertakings' the new law is really saying precisely the same thing."
37. The perusal of the judgment of the learned Single Judge would further demonstrate that 'Anti-dissection Rule' is discussed and applied holding that such a dissection is generally not permissible and can be applied only in exceptional cases. After taking note of the law on subject, the dissection of marks as suggested by the appellant is termed as 'artificial one'.
TM No. 23/17 Page No. 22/29We would do nothing but to extract the said discussion from the impugned order as we are in agreement with the same.
"23. No fault can also be found with the approach of the IPAB in comparing the two completing marks as a whole. That is in fact the rule and the dissection of a mark is an exception which is generally not permitted. The anti dissection rule is based upon a common sense observation of customer behaviour as explained in McCarthy on Trade Marks and Unfair Competition [J Thomas McCarthy, IV Ed., Clark Boardman Callaghan, 2007] under the sub-heading "Comparing Marks:
Differences and Similarities'. The treatise further states:
"23.15 .... The typical shopper does not retain all of the individual details of a composite mark in his or her mind, but retains only an overall, general impression crated by the composite as a whole. It is the overall impression created by the mark from the ordinary shopper's cursory observation in the marketplace that will or will not lead to a likelihood of conclusion, not the impression created from a meticulous comparison as expressed in carefully weighed analysis in legal briefs."
"In litigation over the alleged similarity of marks, the owner will emphasize the similarities and the alleged infringer will emphasize the differences. The point is that the two marks should not be examined with a microscope to find the differences, for this is not the way the average purchaser view the marks. To the TM No. 23/17 Page No. 23/29 average buyer, the points of similarity are the more important that minor points of difference. A court should not engage "technical gymnastics" in an attempt to find some minor differences between conflicting marks. However, where there are both similarities and differences in the marks, there must be weighed against one another to see which predominate."
24. The dissection of the marks as suggested by learned counsel for UBPL is an artificial one. He wanted 'ZID' which was the generic part of the marks to be substituted by some other word like 'TIS' or 'BES' and then the two marks to be compared. This submission is based on the decision in Astrazeneca UK Limited where 'Mero' was identified as the generic part of the mark derived from the active pharmaceutical ingredient. In the first place, no such submission appears to have been made before the IPAB. Secondly, the type of dissection suggested, i.e. separating 'FOR' and 'ZID' and then replacing 'ZID' with 'another word 'TIS' before comparing the marks does not appear to be permissible in law. As already noticed it is not just the generic part 'ZID' that is common to both marks. The further prefix 'OR' too is common. In other words, 'ORZID' is common to both marks. No parallel can there be drawn with the facts in Astrazeneca UK Limited. A person of average intelligence and imperfect recollection seeking to buy CEFTAZIDIME injection would hardly undertake any 'dissection' exercise, much less in the manner TM No. 23/17 Page No. 24/29 suggested by learned counsel for UBPL, to discern the fine distinction between the marks. Also, unlike a consumer durable product, the variations in the size of font, colour scheme, trade dress of the label for a medicine would not make much of a difference. In the considered view of the Court, the IPAB has applied the correct test in coming to the conclusion that FORZID is deceptively similar to ORZID."
28. A perusal from the bare eye of both the trademarks established that plaintiff uses OZONE in a particular distinctive and unique manner. The "O" has been designed as an artwork by the plaintiff company. Further, the plaintiff also uses this in his various bills filed on the record. On the other hand, the defendant's trademarks OX ZONE and OXONE contain exactly the similar font of 'ZONE' as of plaintiff's trademark OZONE and similar style. The defendant prima-facie has not able to show any documentary proof that defendants are independent, distinctive user of the trademark OX ZONE and OXONE. Prima-facie it appears from the material on record that mark OX ZONE and OXONE is deceptively similar to the mark of plaintiff OZONE. Therefore, defendant is guilty of dishonesty for using the deceptively similar trademark of plaintiff in the identical hardware products including Door & Window Fittings, Door Closers, Door Stoppers, Hinges, Piano Hinges, Butt Hinges, Hangers, Handles, Tower Bolts, Al drops, Floor Springs, Locks & Cathers etc.. The above said hardware products being used, purchased and utilized by the Carpenters, generally infer of average intelligence so keeping in view their level of TM No. 23/17 Page No. 25/29 intelligence and nature of the above said products, there is every likelihood of deception of trademark OZONE and OX ZONE and OXONE. Not only this, there would be likelihood of deception in the trade members as well.
29. Admittedly, the alleged use of the trademark OX ZONE and OXONE by the defendant is subsequent to the documented/registered use of trademark OZONE by the plaintiff. The sale products of the plaintiff under the above said trademark for the year 2003-2004 was Rs.3406978/- and grew up to Rs.1252161352/- by the year 2011-12 when the defendant allegedly started using the trademark. Further when the defendant got registered OX ZONE and OXONE trademark, the plaintiff has huge investment towards promotional expenses alone since 2003. It is apparent that the plaintiff has propriety of adoption/use of the trademark OZONE with unique feature and well accustomed with the customers, trade members and public at large on the day defendant adopted and commenced use in relation to the identical goods i.e. Door & Window Fittings, Door Closers, Door Stoppers, Hinges, Piano Hinges, Butt Hinges, Hangers, Handles, Tower Bolts, Al drops, Floor Springs, Locks & Cathers etc.. The defendant being involved in the same trade, ought to have been aware of the trade of the plaintiff and its products available in the market under the trade name OZONE, which is clear as per the documents filed by plaintiff i.e. bills dated 15.12.1999, 24.12.1999, 15.11.2000, 20.04.2000, 10.08.2004 and 13.10.2005. It is clear that adoption of a deceptively similar trademark and use of deceptively similar trade dress dishonestly shown the TM No. 23/17 Page No. 26/29 malafide intention of the defendant. The very adoption is tainted with dishonesty, no amount of use can cleanse the dishonesty. Therefore, there is no doubt that defendant knowingly adopted and used a deceptively similar mark OX ZONE and OXONE on an identical trade dress and packaging with distinctive feature of the plaintiff trademark in relation to identical products i.e. Door & Window Fittings, Door Closers, Door Stoppers, Hinges, Piano Hinges, Butt Hinges, Hangers, Handles, Tower Bolts, Al drops, Floor Springs, Locks & Cathers etc.
30. The defendant has no right to use the plaintiff's trademark in any manner in relation to its impugned goods and business or for any other specifications of goods and business whatsoever being in violation of the plaintiff's right. The use by defendant by its impugned adoption and user of impugned trademark is violative of the plaintiff's right in its said trademark OZONE with the word "OX" in the similar font. Therefore, there is a prima-facie case of passing off and enabling efforts to pass off their goods and business as that of the plaintiff. Further, the defendant was well aware of the plaintiff's right, goodwill, reputation, benefits and user etc. with a unique feature in the trademark of plaintiff OZONE. In these circumstances, prima-facie it is established that the defendant has adopted the impugned trademark dishonestly fraudulently and out of positive greed with a view to take advantage and to trade upon the established goodwill, reputation and proprietary rights of the plaintiff.
TM No. 23/17 Page No. 27/2931. On the basis of above observation and discussion, in the present facts and circumstances of the case, the plaintiff has made out a strong prima-facie case and plaintiff is the prior user of the trademark. Balance of convenience also lies in favour of the plaintiff and against the defendant as plaintiff has invested huge amount in acquiring goodwill and reputation in the trade. Therefore, plaintiff is also bound to suffer irreparable loss and injury due to deceptive impugned trademark of the defendant. Hence, the application under Order 39 Rule 1 & 2 read with Section 151 CPC is allowed accordingly. Thereby, defendants, their partners or proprietor, their servants, wholesalers, retailers, dealers, distributors and vendors are restrained from using trademarks OXZONE and OXONE and using domain name www.oxzoneindia.com or any other trademark, domain name, corporate name, trade name which may be identical or deceptively similar to the trademarks OZONE or domain name www.ozone-india.com in any manner for the purpose of selling, marketing, distributing, exporting, importing, offering to sell, advertising, directly or indirectly, any products particularly hardware products including Door & window fittings, Door Closers, Door stoppers, Hinges, Piano Hinges, Butt Hinges, Hangers, Handles, Tower Bolts, Al drops, Floor Springs, Locks & Cathers etc. which is amounting to infringement of the plaintiff's trademarks and copyright as well as passing off, till the decision of the main suit.
TM No. 23/17 Page No. 28/2932. Nothing expressed herein above shall tantamount to expression of opinion on the merits of the case.
Announced in the open court today the 23rd August, 2018.
(Sanjay Kumar) ADJ-02,West/Delhi 23.08.2018 TM No. 23/17 Page No. 29/29