Delhi High Court
M/S Ruchi Pvt. Ltd. And Others vs M/S Indian Flame Enterprises And Others on 5 September, 2001
Equivalent citations: 94(2001)DLT796
ORDER Vijender Jain, J.
1. Plaintiffs have filed this application under Order 39 Rule 1 & 2 read with Section 151 CPC, inter alia, praying that plaintiff no.1 is the business of manufacturing and marketing of wide range of food preparations for human consumption including soya flour and other food articles made of soya since 1978 and has been selling and marking the said goods under the trade name RUCHI, which it has used along with trade mark NUTRELA in an artistic label. Plaintiff no.1 adopted the said trademark in the year 1978 and continuously, commercially and in the course of trade used the said trade mark since then till date as its proprietor and through its licensee being plaintiff no.2 under license agreement dated 8.8.1991.
2. It was contended before me by Mr. Bansal, learned counsel for the pliantiff that the plaintiff/applicant has been using the said mark in a distinctive label having distinctive artistic features including artistic get up, make up, colour scheme and lettering style. For that plaintiff also holds copyrights under Registration No. A-26732/80. It has been contended by Mr. Bansal that RUCHI forms an essential key, distinguished and material part of the said Mark RUCHI NUTRELA as also of the copyright. It was further contended that RUCHI is also forming an essential and distinguishing feature of the trading style of plaintiffs 1 and 2. It was further contended that plaintiff no.1 has filed application for registration of the trade mark RUCHI under application no.556001 in Class 30 dated 7.8.1991 and there is likelihood of the registration certificate being issued in favor of the plaintiff. It was contended before me that plaintiffs' goods and business are dependent on the said trade mark and label and plaintiffs have already built a valuable trade under the said trade mark/label and the figure of sale turnover for 1996-97 was Rs. 8,70,67,160.00. It was further contended that the applicant/plaintiff had been advertising the aforesaid goods bearing its mark/label through different medias and substantial money has been spent on such advertisements.
3. It was further contended before me by Mr. Bansal that the plaintiff has acquired proprietary rights in the aforesaid trademark/label and the said mark/label has become sufficiently distinctive in the trade to be capable of protection. The applicant has ben using the same without any interruption or interference from any corner whatsoever.
4. It was further contended that defendant no.1 is engaged in the same business as that of the plaintiffs and defendant no.2 manages the business of defendant no.1 and also sells and markets the impugned goods of the defendant no.1. It is contended that since 1999, the defendants are using and selling their impugned good in a mark/label consisting of the mark RUCHI having artistic feature which are similar to that of the plaintiffs. It has been contended by Mr. Bansal that by using identical and deceptively similar trade name RUCHI which is an essential part of trademark/label of the plaintiff, but also the lettering style, article work, manner of writing, the placement and the impugned label of the defendant is also similar to that of the plaintiffs, which is violation of the plaintiffs' rights. It was contended before me that use of the impugned trademark/label by the defendant is violation of the plaintiff' trademark/label and rights in the mark RUCHI amounting to passing off. It was also contended that it is also in violation of the plaintiffs copyright in the artistic work which is registered. Therefore, the same infringes the right of the plaintiffs. it was further contended that defendants by the impugned adoption of the deceptively similar trademark/label which is deliberate, dishonest, fraudulent and improper and by doing so, defendants want to take advantage of the goodwill and reputation of the plaintiffs. Said action of the defendant is to cause deception and confusion in the markets and to pass of off his spurious and impugned goods as that of the plaintiff. It was contended by mr. Bansal that the defendant by using the word SAHARA along with RUCHI on their impugned trademark cannot claim that the ordinary consumer will not purchase the goods of the defendant thinking it to be of the plaintiffs and the same would not amount to passing off. On the aforesaid submissions, plaintiff has prayed for grant of injunction.
5. In support of his contention, learned counsel for the plaintiff, while repelling the contention of learned counsel for the defendant that this Court has no territorial jurisdiction, has cited Glaxo Operations UK Ltd. Middlesex (England) and Ors. Vs. Samrat Pharmaceutical, Kanpur on the proposition that the licensee of the plaintiff is also at Delhi as plaintiff no.2. He further cited P.M. Diesels Ltd. Vs. Patel Field Marshal Industries 1998 PTC (18) 260, where it was held:
"Reverting now to the main question in respect of territorial jurisdiction, it may be noticed that the plaintiff has claimed that Delhi High Court has jurisdiction on three counts. Firstly, in view of Section 62 of the Copyright Act, 1957. Secondly, in view of the fact that the defendants had sought registration of trade mark for sale at Delhi as well and, therefore, the plaintiffs entitled to restrain the threatened sale by defendants at Delhi. Thirdly, it has been claimed that the goods under the impugned mark have been soled at Delhi and the plaintiff's rights violated at Delhi. On the other hand, the defendants claim that Delhi Court has no jurisdiction as plaintiff and defendants, have been residing at Rajkot and both the parties have also been ordinarily working for gain at Rajkot and that no sale has been effected by defendants within the territorial jurisdiction of this Court."
6. It was held that the jurisdiction of the court does not depend upon the defense taken by the defendant and it is the allegations made in the plaint which decide the forum. In M/s Jawahar Engineering Company & Ors. Vs. M/s Jawahar Engineers Pvt. ltd. Sri Rampur, Distt. Ahmedabad, Maharashtra 1983 PTC 207, High Court held as follows:
"Held that an injunction being prohibitive in nature is intended to prevent something that is likely to happen and once the plaintiffs have learnt that the defendants have applied for registration of trade mark in Delhi, they can claim an injunction to prevent any sale of the infringing product in Delhi and this sense the Court will have jurisdiction whether any sale in Delhi has taken place or not. In any case the decisions to the jurisdiction being of a preliminary nature is not open to appeal at the preliminary stage being not a final decision and accordingly the appeal is dismissed with the observations that it will be open to the plaintiffs or the defendants to agitate the question of jurisdiction along with any other claim that they may have after the suit is decided and it will also open to the Court trying the suit to return the plaintiff it is subsequently found that this Court has no jurisdiction as provided in Order 7 Rule 10 CPC."
7. In The Tata Iron & Steel Co. Ltd. Vs. Mahavir Steel & Ors. 1992 (1) Arbitration Law Reporter 417 it was held:
"The question of territorial jurisdiction should not deter the court from considering the application for temporary injunction and the question that the defendants are not established within the jurisdiction of this Court is not such which wholly takes away the jurisdiction of the court to entertain the application. A mere averment that their goods were being sold by the defendants in Delhi is enough at this stage to assume territorial jurisdiction. Even if some others are using trade marks with prefix 'ISCO', an imitation remains an imitation and whether it is down by one or many, it acquires no legitimacy. The trade mark 'FISCO' is deceptively similar to 'TISCO' and there is every likelihood of 'F' being made to appear as 'T'. Injunction was granted."
8. It was further contended by Mr. Bansal that the arguments of the learned counsel for the defendant that the mark/label of the defendant was not similar to that of the plaintiffs if the same is compared as a whole, has no force as the essential and other features of mark if are taken as whole would make the mark deceptively similar to that of the plaintiff. In support of his contention, learned counsel for the plaintiff has cited Parle Products (P) Ltd. Vs. J.P. And Co. Mysore , where Supreme Court observed follows:
"According to Karly's Law of Trade Mark and Trade Names (9th edition, Paragraph 838):
"Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was acquainted. Thus, for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different position, and yet the idea conveyed by each might be simply a game of football. It would be to much to expect that persons dealing with trade marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customer to have been made by the owners of the trade mark they are already acquainted with for reasons of their own."
9. For the similar proposition of law counsel for the plaintiff also cited B.K. Engineering Company, Delhi Vs. U.B.H.I. Enterprises (Regd.), Ludhiana and another , M/s. Hiralal Prabhudas Vs. M/s. Ganesh Trading Company, and others , K.R. Chinna Krishna Chettiar Vs. Sri Ambal & Co. and Anr. , Ruston and Hornby Ltd. Vs. Zamindara Engineering Co. , where Supreme Court held as under:
"In the present case the High Court has found that there is deceptive resemblance between the wore 'RUSTON' and the word 'RUSTAM' and therefore the use of the bare word 'RUSTAM' constituted infringement of the plaintiff's trade mark 'RUSTAM'. The respondent has not brought an appeal against the judgment of the High Court on this point and it is, therefore, not open to him to challenge that finding. If the respondent's trade mark is deceptively similar to that of the appellant the fact that the word 'INDIA' is added to the respondent's trade mark is of no consequence and the appellant is entitled to succeed in its action for infringement of its trade mark."
10. He further cited Coolways India Vs. Princo Air Conditioning and Refrigeration 1993 (1) Arbitration Law Reporter 401 and on the basis of the Coolways India's case (supra), Mr. Bansal has contended that at this stage what is to be seen is whether plaintiff has acquired a reputation, goodwill in the mark which he is using in trade of its goods interruptedly for quite some time and the defendants are attempting to pass off their goods under that mark.
11. Mr. H.P. Singh, learned counsel for the defendants has contended that the suit has neither been field nor verified by a competent person. It was also contended by Mr. Singh that the trademark RUCHI is not registered and only an application for registration has been given and the same is pending before Registrar of Trade mark. Therefore, no injunction can be granted in relation to the trade name RUCHI.
12. It was contended by Mr. Singh that this Court has no territorial jurisdiction. It was further contended that it is NUTRELA which is the trade mark of the plaintiff and not RUCHI. RUCHI is a common name and can be used by all and sundry. Mr. Singh has contended that as the registration of the plaintiff pertains to NUTRELA and not RUCHI, the use by the defendant of mark SAHARA RUCHI is neither improper nor illegal. However, it was admitted by Mr. Singh that they are using the said mark SAHARA RUCHI since April 1999. It was contended that defendant no.1 is a small company and is being prosecuted by plaintiffs to stifle competition and entire effort of the plaintiff was to harass defendant no.1 company. It was contended by Mr. Singh that the plaintiff have field an application before Chief Judicial Magistrate, Indore under Section 93, 91 and 104 of Code of Criminal Procedure. Having miserably failed to get any order in their favor, the plaintiffs in order in circumvent the law have filed the present suit in this Court. It was further contended that defendant no.1 is not using the trade mark SAHARA RUCHI in Delhi. It was further contended that list of documents field by the defendants would demonstrate that so many other companies have asked for registration under the name RUCHI and the, same are pending. Therefore, the plaintiff cannot claim that they can exclusively use the word RUCHI. In support of his contention, Mr. Singh has cited Brooke Bond India Ltd. Vs. Balaji Tea (India) Pvt. Ltd. 1990 IPLR 266, Lalli Enterprises Vs. Dharam Chand & Sons 2000 PTC 443, a single Judge decision, in support of his contention that this Court has no territorial jurisdiction. He has further cited Prabartak Commercial Corporation Ltd. Vs. The Chief Administrator Dandakaranya Project and Anr. 1991 (1) Arbitration Law Reporter 283 to somewhat similar effect.
13. Learned counsel for the defendant has contended that two trade names are totally different and are not similar. In support of his contention, he has cited Peshawar Soap & Chemicals Ltd. Vs. Godrej Soap Ltd. 2001 PTC 1, where the following was observed:
"(a) The true and appropriate test is whether an ordinary purchaser of normal memory, purchasing with common caution, who could not be expected to make a close and careful examination of the products in juxtaposition, was likely to be induced or confused into buying the wrong product. The commercial reality is that newcomers most often arrange incentives of myriad natures to get the retailer to promote its product. The customers' purchasers choice is undermined by stratagems such as the purveyor implying that the products are the same; it would be sanguine to expect that the shopkeeper will explain the differences in the source of the two products and/or put both products before the confused or unaware client in order to help him to take his decision. (b) Even though a disclaimer may have ben recorded, this would not disentitle such a party to complain of imitation in a passing-off action. (c) Acquiescence, or laches or failure to object would disentitle a challenge to a similar mark since the rival would have built-up a reputation and clientele and that then apple-cart of balance of convenience ought not to be upset. (d) Acquiescence would also lend legal legitimacy to exclusive user of a descriptive word, which if contemporaneously challenged would call for cancellation. (e) Use of a prefix to the same mark is no justification for permission to use two identical or similar marks. (f) User of the mark is of pre-eminent importance and would override the rights of the owner of a registered mark who had not entered the market till the time its competitor did."
14. Lastly relying on S.M. Dyechem Ltd. Vs. Cadbury (Inda) Ltd. 2000 PTC 39, Mr. Singh has contended that the leading character of the mark is not RUCHI and on critical comparison of the two marks numerous points of differences emerge. it was further contended that on the basis of the aforesaid authorities of the Supreme Court it was contended that once SAHARA has been used along with RUCHI there is no cause for passing off made out by the plaintiff for grant of injunction and there is no question of confusion and deception. To the similar effect the learned counsel for the defendant cited Uniply Industries Ltd. Vs. Unicorn Plywood Pvt. ltd. & Ors. 2001 PTC 417.
15. I have given my careful consideration to the arguments advanced by learned counsel appearing for both the parties. I am bound by the decision of a Division Bench of this Court with regard to the territorial jurisdiction that the jurisdiction of the court does not depend upon the defense of the defendant and it is the allegations made in the plaint which decide the forum. In P.M. Diesel's case (supra) the plaintiff claimed the jurisdiction of this Court on three counts. Firstly, in view of Section 62 of the Copyright Act, 1957. Secondly, in view of the fact that the defendants had sought registration of trade mark for sale at Delhi as well and, therefore, the plaintiff was entitled to restrain the threatened sale by defendants at Delhi. Thirdly, it has been claimed that the goods under the impugned mark have been sold at Delhi and the plaintiff's rights violated at Delhi. In the circumstances, the Court held that the jurisdiction of Court does not depend upon the defense taken by the defendant and it is the allegations made in the plaint which decide the forum. In the present case, the plaintiff in paragraph 20 of the plaint has stated:
"This Hon'ble Court has the territorial jurisdiction to try and adjudicate the instant suit. Both the plaintiffs and the defendants work for gain in Delhi. The defendants are soliciting business and selling its impugned goods bearing the impugned trade mark/labels in Delhi and are also causing them to be sold in Delhi. The plaintiffs are also selling, marketing and work for gain in their said goods under its said trade mark/labels in Delhi as also from its afore-mentioned Zonal office in Delhi. This Hon'ble Court has the jurisdiction to try and entertain the suit under Section 62 of the Indian Copyright Act, 1957. Defendants have also field a trade mark registration application under trade mark application No. 818823 dated 11.9.1998 (as per the documents placed by them in the aforesaid criminal proceedings). It appears that the said application has been field for registration on an all-India basis which obviously includes registration for Delhi and the defendant no.1 has sought registration in Delhi as well. The defendants are also selling their impugned goods bearing the impugned trade mark/label in Delhi in a clandestine manner and without issuing formal sale bills and invoices."
16. For the aforesaid it would be clear that it is the averment of the plaintiff that the plaintiff and the defendant work for gain in Delhi. The defendants are soliciting business and selling its impugned goods bearing the impugned trade mark/labels in Delhi. The pliantiff is also selling and marketing its goods under the said trademark/labels in Delhi and the jurisdiction of this Court is also invoked under Section 62 of the Indian Copyright Act. it has also been contended by counsel for the plaintiff that the pliantiff has also filed a trademark registration application under trade mark application No. 818823 dated 11.9.1998 for the registration of this trademark on All India basis, which includes registration for Delhi. Therefore, the authorities cited by learned counsel for the defendant is of no help in view of the a Division Bench of this Court in P.M> Diesel's case that for the purposes of considering an application for grant of temporary injunction and forming a prima facie opinion, the Court is required to look into the allegations made in the plaint and the jurisdiction of the Court does not depend upon the defense of the opposite party.
17. Brooks Bond India Ltd. Vs. Balaji Tea (India) Pvt. ltd.'s case (supra) is a decision of madras High Court, in which it was held that the Madras High Court did not have jurisdiction on the ground that the defendant was comparatively weak party to litigation and it was very inconvenient for it to defend the suit effectively by coming every time to Madras all the way from Madhya Pradesh and Section 62(2) of the Copyright Act was enacted in the interest of authors, painters and others who being economically weak, were not ordinarily able to litigate at various places where their infringers may be residing or operating. Said decision does not apply to the facts and circumstances of this case.
18. Therefore, I hold that this Court has territorial jurisdiction to entertain the suit.
19. Let me now deal with the second limb of the arguments of the learned counsel for the defendant with regard to the question of similarly. In M/s Hiralal Prabhudas's case (supra) the question of similarity came up for consideration of the Bombay High Court where it was held:
"In deciding the question of similarity of two marks, the following well established principles re to be observed:- (i) marks are remembered by general impressions or by some significant detail rather than by a photographic recollection of the whole, (ii) overall similarity is the touchstone, (iii) marks must be looked at from the first impression of a person of average intelligence and imperfect recollection, (iv) overall structure, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied, (v) marks must be compared as a whole, microscopic examination being impermissible, and (vi) the broad and salient features must be considered for which the marks must not be placed side by side to find out differences in design. In addition, the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances must also be taken into consideration.
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In the present case, all the features and various placements in the respondents' label were the same as those in the appellants' label except on the respondents' label the words "Himatlal Special Bidi" were written, whereas in the appellants' label the words "Hiralal Chhap Bidi" appeared.
Applying the test that the marks must be looked at from the first impression of a person of average intelligence and imperfect recollection, it was held that the respondents' label was deceptively similar to the appellants' labels and was likely to deceive or cause confusion. "Hiralal" and "Himatlal" are both common Indian names. The great deal of phonetic similarity in these two words taken in conjunction with the otherwise similarity in the get-up of the offending label with the appellants' labels would undoubtedly confuse an ordinary purchaser of average intelligence and imperfect recollection and who may even by illiterate.
20. Reliance placed by counsel for the defendant on S.M. Dyechem Ltd.'s case (supra) and Uniply Industries Ltd. Vs. Unicorn Plywood Pvt. Ltd.'s case (supra), will also not help the case of the defendant. In Cadila Health Care Ltd. Vs. Cadila Pharmaceutical Ltd. 2001 PTC 300, a Bench of three Judges of the Supreme Court laid down the following factors for deciding the question of deceptive similarity:
(a) The nature of the marks i.e. whether the marks are word marks of label marks or composite marks, i.e. both words and label works.
(b) The degree of resembling between the marks, phonetically similar and hence similar in idea.
(c) The nature of the good sin respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods, and
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
21. For deceptive resemblance two important questions have to be borne in mind:- (1) who are the person whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging where such resemblance exists. Let us apply these facts to the facts of the case under consideration. It is not disputed before me that the two names "RUCHI'S NUTRELA' and 'SAHARA'S RUCHI' are in use in respect of same description of goods namely food prepared for human consumption from Soya flour. Such packets are purchased by common people in the towns as well as in village, literate and illiterate. To such a man, the overall structural depiction and use of RUCHI's which, in the case of the plaintiff ha been put in green colour on the top of NUTRELA and which in the case of defendant has been in green colour by putting SAHARA and in place of NUTRELA, the defendant has used RUCHI in a manner so as to, in my opinion, would likely to deceive or cause confusion. Unwary purchaser of average intelligence and imperfect recollection is bound to be deceived. As unintending purchaser go more by overall structural and colour similarity in the nature of the food product which has been purchased previously or which has been sold. The colourable imitation would also bring an action for passing off. In Cadila Health Care Ltd.'s case (supra) the Court held that as follows:-
"It is important that the marks must be compared as wholes. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion.
22. While considering the effect of S.M. Dyechem's case, the Court further held:
"We are unable to agree with the aforesaid observations in Dyechem's case (supra). 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."
23. In Ruston and Hornby Ltd.'s case (supra) it was held that in a passing off action, the question is whether the defendant is selling its goods so marked as to be designed or calculated to lead purchases to believe that they re the plaintiff's goods. In the said case, the High Court found that there was deceptive resemblance between the word 'RUSTON' and 'RUSTAM' and, therefore, held that the use of the bare word 'RUSTAM' constituted an infringement of the plaintiff's trade mark 'RUSTON'. The Supreme Court held that if the respondent's trade mark was deceptively similar to that of the appellant's, the fact that the word 'INDIA' was added to the respondent's trade mark was of no consequence. That was the case where the Court held that it was an infringement of the trade mark of the plaintiff.
24. On perusal of the documents filed on record, it appears that the defendant has not only copied the colour scheme but the manner in which RUCHI has been written on the bags containing NUTRELA and the colour scheme of the defendants plastic bags is deceptively similar. The products of the plaintiff may be purchased by both the villagers and persons living in towns as well as literate and illiterate. Man of average intelligence and imperfect recollection can definitely be misled.
25. In a country like India where large percentage of the population is illiterate and small factions of the people know English, one thing which has to be kept in mind is that the purchaser of such goods who may be led to a garden path by merely showing the colour scheme and the name of RUCHI on the defendant's goods so as to allow the defendant to pass off the goods manufactured by the defendant as that of the plaintiff. The fact that the plaintiff is using the trade mark NUTRELA which is registered in conjunction with RUCHI, the use of the word RUCHI along with SAHARA in relation to cognate goods would cause deception. More so in view of the fact that the nature of the goods and the business of the parties are the same. The label of the defendant is identical and deceptively similar to the label of the plaintiff visually,k structurally and in basic idea.
26. Therefore, the true test would be whether an ordinary purchaser purchases with common caution, not expected to make a close and careful examination of the products, was likely to be induced or confused into buying a wrong product. The use of word RUCHI along with SAHARA, RUCHI being an essential part of trade mark/label of the plaintiff used in conjunction with NUTRELA and the manner of using of the colour scheme and manner of placement of impugned label clearly show that the defendants want to take advantage of the goodwill and reputation of the plaintiff. If that is so, the court should not be reluctant in safeguarding the reputation and goodwill which are attached to trade name or trade style in comparison to a person who has come recently in the market and wants to pass off its goods as that of the plaintiff which has acquired reputation and goodwill. Balance of convenience would also be in restraining such a user of impugned trademark/trade name.
27. In view of the above discussion, I restrain the defendants, its agents, servants representatives, dealers and distributors from using, manufacturing, selling, offering for sale, advertising or displaying directly or indirectly or dealing in any manner in food made out of Soya chunks and soya based products of similar nature as has been manufactured by the plaintiff under its trade mark NUTRELA and label bearing the word RUCHI with the same colour scheme or any other colour scheme which is identical or deceptively similar to the trade mark plaintiff's trade mark RUCHI till the disposal of the suit.
28. Nothing said earlier would be an expression on the merit of the case.
29. Application stands disposed of.
Suit No. 1775/200030. List this matter before Joint Registrar for admission/denial of documents on 28.11.2001.
31. Thereafter matter be listed in Court for framing of issues.