Delhi District Court
Vikas Gulati vs M/S Focus Optics on 25 May, 2010
IN THE COURT OF SHRI HARISH DUDANI,
ADDITIONAL DISTRICT JUDGE15 (CENTRAL), DELHI
Suit No.36/08/05
Vikas Gulati, trading as
M/s Focus Vision Care,
33/4, DLF, Moti Nagar,
New Delhi - 110 015 ..........Plaintiff
Versus
M/s Focus Optics
Shop No.4, Ground Floor,
J. S. Arcade, D1, Sector28,
Noida - 201 301 (U.P.) ..........Defendant
Date of Institution of Suit : 31.08.2005
Date of Reserving Judgement : 12.05.2010
Date of Pronouncement of Judgement : 25.05.2010
J U D G E M E N T
1. This is a suit for perpetual injunction restraining from infringement of trade mark, trade name, passing off, delivery up and rendition of accounts etc. alongwith cost of Suit No. 36/08/05 1 of 45 the suit filed by the plaintiff against the defendant.
2. The plaintiff has filed the abovenoted suit stating therein that M/s Focus Vision Care is a proprietary concern and Shri Vikas Gulati is the sole proprietor of the plaintiff carrying on the business of manufacturer and merchants of optical goods and opthalmic lenses, optical frames, artificial eyes, optical instruments and machines since April, 1986. Since the inception of aforesaid business, the plaintiff had conceived and adopted a distinctive trade mark FOCUS, which is also corporate name of the plaintiff's trading style as to indicate its connection in the course of trade with aforesaid goods of its manufacture and sale and also as a proprietor thereof. The trade name FOCUS VISION CARE and trade mark FOCUS has been continuously, extensively and uninterruptedly used in the course of trade and, thus, have become to be identified and recognised exclusively belonging to the plaintiff and none else. The plaintiff is the registered proprietor of the Suit No. 36/08/05 2 of 45 trade mark "FOCUS' under no. 479297 dated 01.10.1987 in respect of all types of optical goods excluding lenses included in class 9 under the Trade Marks Act, 1999 and aforesaid trade mark no. 479297 in class9 was got renewed from time to time and same is valid, subsisting and in full force upto 01.10.2008 under the Trade Marks Act, 1999. The trade mark 'FOCUS' of the plaintiff was advertised in the Trade Marks Journal No. 1114 dated 01.11.1995 at page 2180. The trade mark 'FOCUS' device of optical sign with VISION CARE in a label was applied for registration and the Trade Marks Registry had registered the trade mark with the condition that trade mark shall give no right to the exclusive use of the device of optical sign and the expression 'VISIONCARE' and, as such, the trade mark 'FOCUS' was registered under no. 479297 in class 9. It is stated that by virtue of prior in adoption, long and established user with vast publicity given to the trade mark/trade name FOCUS/FOCUS VISION CARE and being registered proprietor of the trade mark FOCUS under Suit No. 36/08/05 3 of 45 no. 479297 dated 01.10.1987, the plaintiff has acquired exclusive, bonafide and statutory right to use the trade name FOCUS VISION CARE and trade mark FOCUS and use of any identical and/or deceptively and confusingly similar trade mark FOCUS and/or FOCUS as corporate name of trading style by somebody else in relation to optical goods, opthalmic lenses, optical frames, artificial eyes, optical instruments and machines and other cognate and allied goods is bound to cause confusion and deception in the minds of purchasing public and trade amounts to infringement of registered mark and passing off the goods and business as that of the plaintiff.
3. It is stated in the plaint that the defendant M/s Focus Optics, Shop No. 4, Ground Floor, J. S. Arcade, D1, Sector28, Noida201301 (U.P) is engaged in the business of manufacturing and marketing of optical goods including optical frames, lenses, instruments etc. and has adopted the trade mark FOCUS and corporate name FOCUS as the trading style and the trade mark FOCUS and/or Suit No. 36/08/05 4 of 45 corporate name FOCUS as trading style of the defendant is exactly identical with and/or deceptively and confusingly similar to the plaintiff's registered trade mark FOCUS and defendant also used trade mark and/or corporate name FOCUS of trading style in the markets of National Capital of Delhi by selling of optical goods including opthalmic lenses, optical frames and instruments in clandestine manner without issuing the cash memos/credit memos with a view to cause deception and confusion. The use of expression FOCUS as a trade mark and/or corporate name FOCUS as trading style is bound to cause confusion and deception amongst the purchasing public and trade. The illegal trade activities of the defendant is causing immense injury to the plaintiff's business and reputation. It is stated in the plaint that the plaintiff for the first time came to know about the case of infringement of registered trade mark and passing off the part of the defendant in the third week of April, 2005 when its attention was drawn about the adoption and use of the trade mark FOCUS and corporate Suit No. 36/08/05 5 of 45 name FOCUS of its trading style FOCUS on the part of defendant in respect of optical goods. The plaintiff immediately got issued a legal notice dated 23.04.2005 through its Advocate. The defendant received the aforesaid notice of the plaintiff and sent the reply dated 04.05.2005 and declined to accept the plaintiff's just and requisite demands. Thereafter, the plaintiff directly approached the defendant with the request to desist forthwith from the use of the trade mark FOCUS and/or corporate name FOCUS of trading style which the defendant refused to desist and, rather, flooded the market with spurious goods in the markets of Delhi i.e. within the jurisdiction of this Court. The defendant is carrying on illegal trade activities by selling of impugned goods bearing the trade mark FOCUS and corporate name of FOCUS of trading style in Delhi in clandestine manner. The defendant has admitted in reply dated 04.05.2005 that they had applied for registration of trade mark FOCUS and/or corporate name FOCUS OPTIC in the Trade Marks Suit No. 36/08/05 6 of 45 Registry, New Delhi within the jurisdiction of this Court. Further, this Court has the special jurisdiction under Section 134 of the Trade Marks Act, 1999 as plaintiff actually and voluntarily resides and carries on business and works for personal gain within the jurisdiction of this Court and, therefore, this Court has the jurisdiction to try this suit. It is prayed that an order for perpetual injunction restraining the defendant through its partners or proprietor, as the case may be, its servants, agents, stockists, assigns and representatives and all others acting for and on its behalf from manufacturing, selling, offering for sale, advertising, directly and indirectly dealing in optical goods, lenses, opthalmic lenses, frames, artificial eyes, instruments, machines and other cognate and allied goods under the trade mark FOCUS and/or any other trade mark, as may be identical with and/or deceptively and confusingly similar to plaintiff's registered trade mark FOCUS under no. 479297 in class 9 and also for perpetual injunction restraining the defendant through its partners or Suit No. 36/08/05 7 of 45 proprietor, as the case may be, its servants, agents, stockists, assigns and representatives and all others acting for and on its behalf from manufacturing, selling, offering for sale, advertising, directly and indirectly dealing in optical goods, lenses, opthalmic lenses, frames, artificial eyes, instruments, machines and other cognate and allied goods bearing the trade mark FOCUS and/or from doing any other thing as may amounts to passing off the defendant's goods and business as that of the plaintiff be passed in favour of the plaintiff and against the defendant. The plaintiff has further prayed for an order for perpetual injunction restraining the defendant through its partners or proprietor, as the case may be, its servants, agents, stockists, assigns and representatives and all others acting for and on its behalf from manufacturing, selling, offering for sale, advertising, directly and indirectly dealing in optical goods, lenses, opthalmic lenses, frames, artificial eyes, instruments, machines and other cognate and allied goods under the trade name FOCUS OPTIC and/or any Suit No. 36/08/05 8 of 45 other trade name, as may be identical with and/or deceptively and confusingly similar to plaintiff's corporate name FOCUS of trading style and/or from committing any other act or acts, which is likely to cause confusion and deception amounting to passing off and also for an order for delivery upon affidavit by defendant to the plaintiff of all offending goods, labels, cartons, wrappers, literatures, blocks, dies, finished and unfinished goods and other incriminating materials bearing the trade mark FOCUS and bearing the corporate name FOCUS of trading style under the possession and control of the defendant for destructions and/or erasure purposes and for an order for rendition of accounts as to ascertain the profits earned by the defendant on sales made of the impugned goods alongwith costs of the proceedings in favour of the plaintiff and against the defendant.
4. The defendant has filed WS and has contested the suit. In the WS, the defendant has taken the objections that the Suit No. 36/08/05 9 of 45 suit is not maintainable as the plaintiff is not the proprietor of the impugned trade mark/trade name FOCUS and/or FOCUS VISION CARE in relation to the goods/business as claimed. No rights exist in the word/mark FOCUS as it is extremely descriptive having regard to its indicating quality and intended purposes of the goods in respect of which it is allegedly used. The impugned word/mark FOCUS is commonly used in relation to the impugned goods and business and can clearly be termed as generic as well. The impugned word/mark FOCUS is an ordinary dictionary word and forms part of the daytoday language usage. The defendant's trade mark FOCUS OPTICS is neither identical with nor deceptively similar to the impugned trade mark FOCUS VISION CARE and/or FOCUS as claimed by the plaintiff and there is no likelihood of any deception or confusion. The trade mark/trade name of the defendant as a whole and in its essential features is neither identical with nor deceptively similar to the impugned trade mark/trade name claimed in the plaint. This Court does Suit No. 36/08/05 10 of 45 not have the territorial jurisdiction to entertain/adjudicate the present suit. The defendant is the owner and proprietress of her said trade mark/trade name FOCUS OPTICS being continuously and regularly used by her in the course of trade in relation to various optical goods including optical frames, lenses, instruments etc. (the said goods) since the year 2003. The said goods and business being carried on by the defendant is a very extensive one and the defendant has built up a valuable trade, goodwill and distinctiveness thereunder. It is denied that the plaintiff is a proprietary firm of said Shri Vikas Gulati and that he is engaged in the manufacture and trade of the impugned goods since April, 1986. It is stated that the plaintiff is not the proprietor of the impugned trade mark/trade name or its alleged registration. As per the trade mark registration certificate itself and its publication in the Trade Marks Journal, the impugned mark stand in the name of Shri Vikas Gulati and Smt. Sharda Gulati. It is denied that the defendant adopted the said trade Suit No. 36/08/05 11 of 45 mark/trade name malafidely and fraudulently by inspiration from the plaintiff's said trade mark/trade name or to encash upon its alleged goodwills an reputations. The defendant has even made an application for registration of the trade mark under application no. 01354775 in Class 9 and the same is pending adjudication and is likely to be allowed in law. It is denied that the plaintiff became aware of the defendant in April, 2005. It is stated that the plaintiff was always aware of the defendant's said goods and business since the year 2003. The defendant's goods and business have been open in the course of trade and not clandestine. Rest of the allegations have been denied by the defendant and defendant has sought dismissal of the present suit.
5. The plaintiff has filed replication to the written statement of defendant. In the replication, the plaintiff has reiterated the contents of plaint and has controverted the allegations of the defendant as alleged in the WS. It is submitted that the plaintiff is the first person who conceived and adopted Suit No. 36/08/05 12 of 45 the trade name FOCUS VISION CARE and trade mark FOCUS in respect of optical goods, opthalmic lenses, optical frames, artificial eyes, optical instruments and machines and plaintiff has taken appropriate actions against the persons who tried to infringe the trade mark FOCUS and/or seeking registration of trade mark FOCUS and applications for the registration of the trade mark FOCUS were abandoned not filing of the counter claim. It is stated that the dispute arises for the use of trade mark FOCUS and/or as key portion of trading style and plaintiff have no objection to the use of words OPTICS and/or VISION CARE by the defendant and plaintiff is seeking the relief of injunction against the defendant for the use of trade mark/trade name FOCUS for which the plaintiff is entitled by virtue of long and established user and registered trade mark no. 479297 in class9.
6. From the pleadings of the parties, following issues were framed by my ld. Predecessor on 24.01.2008 Suit No. 36/08/05 13 of 45
1. Whether the plaintiff is the registered owner of the trade mark FOCUS. If so, to what effect? OPP.
2. Whether the defendant is infringing the trade mark of the plaintiff? OPP.
3. Whether the defendant is passing off its goods as those of the plaintiff? OPP.
4. Whether the plaintiff is entitled to the rendition of accounts as prayed? OPP.
5. Whether the plaintiff is entitled for perpetual injunctions as prayed for? OPP.
6. Relief.
7. To prove his case, the plaintiff has examined Shri Vikas Gulati/plaintiff as PW1 and PE was closed on 25.08.2008.
8. In order to prove its defence, defendant examined Smt. Santosh Sharma, proprietor of the defendant as DW1 and DE was closed on 28.02.2009.
Suit No. 36/08/05 14 of 45
9. I have heard the ld. Counsel for parties and carefully perused the record. My findings on the specific issues are as under : Issue No. 1
10. The present suit has been filed by Shri Vikas Gulati trading as Vikas Focus Vision Care and in the plaint, the plaintiff has stated that M/s Focus Vision Care is proprietory concern and Shri Vikas Gulati is the sole proprietor of the plaintiff carrying on an old established business as one of the leading manufacturers and merchants of optical goods, ophthalmic lenses, optical frames, artificial eyes, optical instruments and machines and the plaintiff is in the said business since April 1986. Since inception of aforesaid business, the plaintiff had conceived and adopted a distinctive trade mark FOCUS which is also corporate name of plaintiff's trading style. The trade name FOCUS VISION CARE and trade mark FOCUS has been continuously, extensively and uninterruptedly used in the Suit No. 36/08/05 15 of 45 course of trade by the plaintiff. In the plaint, the plaintiff has further stated that the plaintiff is registered proprietor of the trade mark 'FOCUS' under No.479297 dated 01.10.1987 in respect of all types of optical goods excluding lenses included in class9 and the said trade mark has been renewed from time to time and the same is valid, subsisting and in full force upto 01.10.2008.
11. The contention of the defendant is that although in plaint the plaintiff has pleaded that plaintiff is proprietor of FOCUS VISION CARE and plaintiff is the registered proprietor of trade mark FOCUS vide trade mark No.479297 dated 01.10.1987 in class 9, but copy of the registration certificate of the plaintiff's trade mark which has been filed by the plaintiff shows that the said trade mark No.479297 in class 9 is registered in the name of Shri Vikas Gulati and Ms. Sharda Gulati trading as FUCUS VISION CARE and on that account the plaintiff cannot plead that he is sole proprietor of trade mark FOCUS VISION CARE.
Suit No. 36/08/05 16 of 45
12. The defendant has challenged the plea of the plaintiff that he is registered proprietor of trade mark FOCUS under No.479297 in class 9 on the ground that in the plaint, the plaintiff has stated that the plaintiff is the sole proprietor of the trade mark FOCUS which is also corporate name of plaintiff's trading style but the copy of registration certificate in respect of trade mark No.479297 in class 9 shows that the same is registered in the name of Shri Vikas Gulati and Smt. Sharda Gulati trading as FOCUS VISION CARE.
13. Plaintiff Shri Vikas Gulati appeared in the witness box as PW1 and he adduced evidence by way of affidavit Ex.PA. In para 1 of the affidavit Ex.PA, Shri Vikas Gulati has stated that he is sole proprietor of M/s Focus Vision Care. In para 2 of the affidavit Ex.PA, PW1 Shri Vikas Gulati has stated that initially the plaintiff was a partnership concern consisting of two partners namely Ms. Sharda Gulati and Shri Vikas Gulati by way of Deed of Partnership dated 01.02.1986 and Smt. Sharda Gulati retired from the Suit No. 36/08/05 17 of 45 plaintiff's firm vide Deed of Dissolution dated 28.4.1992. It is to be noted that in the plaint, the plaintiff has no where stated that initially the plaintiff was partnership firm consisting of two partners i.e. Smt. Sharda Gulati and Shri Vikas Gulati and the said partnership was dissolved on 28.04.1992. But in the evidence, the plaintiff has stated so in his affidavit Ex.PA. The contention of the defendant is that in the plaint, the plaintiff has no where stated that the plaintiff was a partnership firm and subsequently the same was dissolved on 28.04.1992 and as said fact has not been pleaded, no evidence can be lead on the fact which is not pleaded. Learned counsel for defendant has relied on the decision in Messrs. Trojan & Co. v. RM. N.N. Nagappa Chettiar, AIR 1953 SC 235 wherein it was held that decision of a case cannot be based on grounds outside the pleadings of the parties and it is the case pleaded that has to be found and without an amendment of the plaint the Court was not entitled to grant the relief not asked for. The plaintiff has not explained that if its case Suit No. 36/08/05 18 of 45 was that initially the plaintiff was a partnership firm consisting of Shri Vikas Gulati and Smt. Sharda Gulati and the trade mark No.479297 in class 9 was registered in the name of said partnership firm and subsequently vide Deed of Dissolution dated 28.04.1992 the said partnership was dissolved and the plaintiff Vikas Gulati was given rights to use the said trade mark then why said fact was not pleaded in the plaint.
14. In Bhagat Singh & others vs. Jaswant Singh, AIR 1966 SC 1861 the Hon'ble Supreme Court held that where a claim has been never made in the defence presented, no amount of evidence can be looked into upon a plea which was never put forward. In view of decisions in Messrs. Trojan & Co. v. RM. N.N. Nagappa Chettiar (supra) & Bhagat Singh & others vs. Jasant Singh (supra) I find force in the contention of learned counsel for the defendant that plea which has been raised by plaintiff for the first time in its evidence that initially the plaintiff was partnership concern consisting of two partners namely Shri Vikas Suit No. 36/08/05 19 of 45 Gulati and Smt. Sharda Gulati and the said partnership was dissolved vide Deed of Dissolution dated 28.04.1992 cannot be looked into, as said fact has not been pleaded.
15. Another contention of learned counsel for the defendant is that the plaintiff has pleaded that the partnership firm consisting of Smt. Sharda Gulati and Shri Vikas Gulati was dissolved vide Deed of Dissolution dated 28.04.1992 and plaintiff has filed on record copy of Deed of Dissolution but the said Deed of Dissolution has not been proved in accordance with law. The contention of learned counsel for the plaintiff is that the plaintiff has filed copy of Deed of Dissolution dated 28.04.1992 on record and at the time of recording of evidence of PW1, the plaintiff had produced the original of the same.
16. The contention of learned counsel for the defendant is that Deed of Dissolution dated 28.04.1992 has not been proved in accordance with law. The plaintiff has filed on record, photocopy of Deed of Dissolution dated 28.04.1992 Ex.PW1/1. The said copy of Deed of Dissolution dated Suit No. 36/08/05 20 of 45 28.04.1992 Ex.PW1/1 has not been attested by any authority which could prove that the signatures appearing on the same were appended by parties and witnesses who have signed the same in the presence of said attesting authority. As per Ex.PW1/1, the same was signed by Smt. Sharda Gulati and Shri Vikas Gulati in the presence of two witnesses. In the cross examination specific suggestion was given to PW1 to the effect that no such person were in existence on 28.04.1992 and signatures have been forged on the Deed of Dissolution Ex.PW1/1. However, the plaintiff has not examined any of the witnesses as appearing on Ex.PW1/1 in order to prove that the said Deed of Dissolution Ex.PW1/1 was executed in their presence. Apart from himself, the plaintiff has not examined other partner Smt. Sharda Gulati in order to prove that Deed of Dissolution Ex.PW1/1 was executed by her and it bears her signature and by way of said Deed of Dissolution, the plaintiff Shri Vikas Gulati who was to continue the business, was given the rights to use trade Suit No. 36/08/05 21 of 45 mark under No.479297 in class 9 which was registered in the name of said partnership firm.
17. It is also to be noted that the plaintiff has contended that he has become sole proprietor of the trade mark FOCUS after dissolution of partnership form on 28.04.1992 but the plaintiff has not adduced any evidence to the effect that after dissolution of partnership firm they informed the Trade Mark Registry about dissolution of the partnership and the plaintiff has acquired proprietary right in respect of the Trade Mark No.479297 in class 9. The plaintiff has filed copies of renewal certificates issued by the Trade Mark Registry which are Ex.PW1/4 & Ex.PW1/5. As per certificate Ex.PW1/4, the Trade Mark bearing No.479297 dated 01.10.1987 was renewed for a period of seven years from 01.10.1994 and as per certificate Ex.PW1/5, the trade mark No.479297 in class 9, was renewed for a period of seven years from 01.10.2001. However, the plaintiff has not adduced evidence to the effect that after dissolution of partnership in the year 1992 the trade mark which was Suit No. 36/08/05 22 of 45 renewed from 01.10.1994 & 01.10.2001 vide letters Ex.PW1/4 & Ex.PW1/5 was renewed in the name of plaintiff alone.
18. The contention of learned counsel for the defendant is that the plaintiff has claimed himself to be trading under name Focus Vision Care and the defendant is trading under name M/s Focus Optics and the same is not deceptively similar to the impugned trade mark Focus Vision Care and moreover, mark Focus is commonly used in relation to the impugned goods and lenses and can be termed as generic and it is also an ordinary dictionary word and forms part of the day to day language and the plaintiff cannot claim proprietary right on the mark FOCUS.
19. The case as set out by the plaintiff in para 2 of the plaint is that the plaintiff has conceived and adopted a distinctive trade mark FOCUS which is also corporate name of plaintiff's trading style. Thereafter, in the same para the plaintiff has further stated that trade mark FOCUS VISION CARE and trade mark FOCUS has been continuously, Suit No. 36/08/05 23 of 45 extensively and uninterruptedly used in the course of trade by the plaintiff. In para 3 of the plaint, the plaintiff has stated that trade mark FOCUS device of Optical sign with VISION CARE in a label was applied for registration and the Trade Mark Registry had registered the trade mark with the condition that Trade Mark shall give no right to the exclusive use of the device of optical sign and the expression 'VISIONCARE' and as such the trade mark FOCUS was registered under No.479297 in class 9.
20. Hence, as per aforesaid contention of the plaintiff, the plaintiff claims himself to be owner of trade mark FOCUS and case of the plaintiff is that trade name of plaintiff is Focus Vision Care. In para 5 of the affidavit Ex.PA also the plaintiff has stated that the plaintiff has acquired statutory rights in the trade mark FOCUS and trade name FOCUS VISION CARE. As per copy of registration certificate filed on record trade mark of the plaintiff which is registered is composite mark consisting of device of optical sign with word Focus Vision Care. PW1 stated in the cross Suit No. 36/08/05 24 of 45 examination that he has seen copy of advertisement Ex.PW1/D1 whereby his trade mark had been advertised vide No.479297 and PW1 admitted that registration of his trade mark does not entitle them to exclusive use of the device of optical sign and the expression VISION CARE. PW1 stated in the crossexamination that he is running an Eye Care and Optical Centre under the said trade name Focus Vision Care.
21. In J.K. Oil Industries v. Adani Wilmar Limited, 2010 (42) PTC 639 (Del.) our own Hon'ble High Court held: "7.1 Section 2(1)(m) defines a "mark" to include, amongst others, a device, brand, heading and label. The expression "trade mark" has been defined in Section 2(1)(zb) to mean: a mark capable of being represented graphically and, which is capable of distinguishing the goods or services of one person from those of the others and may include shape of goods, their packaging and combination of colours. Section 17 confers on the proprietor of a registered trade mark which consists of several matters, exclusive right to use of the trade mark taken as a "whole". Sub section (2) of Section 17 makes it clear that Suit No. 36/08/05 25 of 45 notwithstanding anything contained in sub section (1) of Section 17: where a trade mark contains (a) any part which is not the subject matter of a separate application by the proprietor for the registration of a trade mark; or (b) which is not separately registered by the proprietor as a trade mark; or (c) which contains any matter which is common to the trade or is otherwise of a nondistinctive character - the registration of the mark shall not confer any exclusive right in respect of the matter which forms only a "part" of the "whole" of the trade mark, which is registered. Section 28 articulates the rights which are conferred on the proprietor of a registered mark; which of course, is subject to the other provisions of the Trade Marks Act. Section 29 sets out what would constitute infringement of a registered trade mark. Section 30 refers to the "limits on the effect of a registered trade mark". Subsection 2(b) of Section 30 specifically alludes to the fact that a mark is not infringed if, the trade mark is used in relation to goods and services bearing in mind the conditions and limitations subject to which it is registered. The statutory effect of acquiescence for a continuous period of five years by the proprietor of the registered trade mark is set out in Section 33 of the Trade Mark Act.
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8.A conjoint reading of the aforesaid provisions would clearly bring to for the following:
(i) A mark in the form of a label can be registered; which is the situation obtaining in the instant case.
(ii) A trade mark registration confers on the proprietor exclusive right to use the trade mark as a "whole"; which is in the instant case is in form of a label.
(ii) There is no exclusivity conferred on the registered proprietor if he chooses to use only part of the whole of such registered mark and such "part" is neither a subject matter of the separate application for registration filed with the Registrar nor is it registered separately: and,
(iv) Lastly, the registered proprietor may be able to protect a "part" of a registered trade mark if he is able to show it is not common to trade nor that it has obtained a distinctive character."
22. The case of the plaintiff as set out in para 3 of the plaint is that the plaintiff is registered proprietor of trade mark FOCUS under No.479297 in class 9 and the plaintiff had applied for registration of the trade mark FOCUS device of Optical sign with VISION CARE and the Trade Marks Registry had registered the trade mark with the condition Suit No. 36/08/05 27 of 45 that Trade Mark shall give no right to the exclusive use of the device of optical sign and the expression 'VISIONCARE'. The case as made out by the plaintiff in para 2 of the plaint is that the plaintiff is the adopter and user of the trade mark FOCUS and corporate name FOCUS of its trading style FOCUS. However, the plea which has been raised by the defendant is that the plaintiff has no right in trade mark FOCUS and mark of the plaintiff which is registered is a composite mark consisting of device of optical sign with VISION CARE in a label and the mark which is being used by the defendant is Focus Optics and there is no similarity between the two marks and the plaintiff cannot claim ownership only on part of its mark which is registered. As per copy of certificate of registration which is filed on record as Ex.PW1/3, the mark of the plaintiff which is registered consists of device of optical sign with FOCUS VISION CARE in a label. The plaintiff claims ownership over the mark FOCUS. However, as per certificate Ex.PW1/3, the mark of the plaintiff which is Suit No. 36/08/05 28 of 45 registered is a composite mark consisting of device of optical sign with FOCUS VISION CARE in a label, hence, it is not open for the plaintiff to plead that he can exclusively use part of the whole of the registered trade mark No.479297 in class 9.
23. The contention of learned counsel for the defendant is that the plaintiff shall be able to protect a part of the registered trade mark only if the plaintiff can show that it is not a common to trade and it has obtained distinctive character, however the plaintiff has failed to prove the same. The defendant has further contended that the plaintiff is only maintaining shop in the name of Focus Vision Care and its products have not acquired any distinctive character. PW1 stated in the crossexamination that they deal in all optical related goods, spectacles, sunglasses, frames, etc. PW1 further stated in the crossexamination that he has not filed any original documents to show that he has ever used trade mark FOCUS in respect of the optical goods. PW1 further stated in the crossexamination that he has not filed Suit No. 36/08/05 29 of 45 any original document which may show that he has sold any goods under the trade name FOCUS VISION CARE. Thereafter, PW1 was put a specific suggestion in his cross examination to the effect that he is running a shop under the trade name FOCUS VISION CARE for selling opticals to which he replied that he is running an Eye Care and Optical Centre under the said trade name. PW1 further stated in the crossexamination that it is correct that in his affidavit Ex.PA, he has mentioned that they are manufacturers. Thereafter, PW1 stated in the cross examination that they not manufacturers but they are service providers and they got engraved or embossed their trade name and trade mark on the spectacle cases, contact lens cases etc. Thereafter, PW1 further admitted in the crossexamination that they have not got registered their trade mark as service mark.
24. The mark of the plaintiff which is registered under No.479297 in class 9 is device of optical sign with FOCUS VISION CARE in a label. However, PW1 admitted in the Suit No. 36/08/05 30 of 45 crossexamination that they are not manufacturers but they are service providers and they have not got registered their trade mark as service mark. The plaintiff has not filed any documents on record which could prove that they have been selling any goods under trade mark FOCUS VISION CARE. The plaintiff has also not filed figures of the amount they have spending on the publicity of their products or their services and that the trade mark FOCUS of the plaintiff has acquired distinctive character and that the same is associated with the goods and services as provided by the plaintiff.
25. In Pfizer Products Inc. v. Rajesh Chopra & Ors., 2007 (35) PTC 59 (Del.) it was observed: "57........................................................................ ....(vii)Use of the trademark does not mean user by affixing the word on the goods. It could be in the form of advertisements in magazines, T.V. etc. It would be with regard to goods exported out of India. With advancement of technology Suit No. 36/08/05 31 of 45 and globalization after 1991, use of trade mark can take place in different ways.................................................
(xi) Object of the Act is to protect the right and not to be a source of monopoly. It is also to protect bona fide interests of traders from harassment by registered owners of a trade mark, apart from protection of public fraud, fraud by infringers of genuine trademark.
26. In para 1 of the plaint, the plaintiff has set out a case that the plaintiff is carrying on business as one of the leading manufacturers and merchants of optical goods and opthalmic lenses, optical frames, artificial eyes, optical instruments and machines. However, in the cross examination PW1 stated that they are not manufacturers and they are service providers and they got engraved or embossed their trade name and trade mark on the spectacle cases, contact lens cases, etc. The plaintiff has not proved that they are using trade mark FOCUS for any Suit No. 36/08/05 32 of 45 product being manufactured by them and the plaintiff has also not proved that services being rendered by plaintiff under mark FOCUS have acquired distinctive character.
27. By way of present suit the plaintiff has prayed for decree of permanent injunction for restraining the defendant from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in optical goods, lenses, ophthalmic lenses, frames, artificial eyes, instruments, machines & other cognate and allied goods bearing the trade mark FOCUS and/or from doing any other thing as may amounts to passing off the defendant's goods and business as that of plaintiff and or any other trade name, as may be identical with and /or deceptively and confusingly similar to plaintiff's corporate name FOCUS under No.479297 in class 9. However, as per registration certificate Ex.PW1/3, mark of the plaintiff which is registered under said No.479297 in class 9 is not only word focus but it is composite mark consisting of device of optical sign with VISION CARE in a label.
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28. The plea as raised by the defendant is that the FOCUS is descriptive word having regard to its indicating quality and intended purposes of the goods in respect of which it is allegedly used and is commonly used in relation to the impugned goods and it is an ordinary dictionary word and forms part of the daytoday language usage and the plaintiff cannot create monopoly in respect of the said word.
29. Plaintiff claims himself to be dealing in optical goods and ophthalmic lenses, optical frames, artificial eyes, optical instruments and machines and the plea of the plaintiff is that the defendant be restrained from using mark FOCUS. The dictionary meaning of word FOCUS is "main or central point of something". In physics word FOCUS stands for the point where rays of light or sound which are moving towards each other meet. If word FOCUS is used in relation to camera or microscope it means that for focusing such device i.e. camera or microscope, one has to move the device on the lens so that one can see a clear Suit No. 36/08/05 34 of 45 picture. A student of optics would take the word FOCUS for convergence of light with the help of lens on a particular point in order to get clear picture or image. An ophthalmologist would use word FOCUS for getting a clear picture of any object on retina by way of use of lenses. In the present case, the plaintiff claims to be using word FOCUS in relation to optical goods. Word FOCUS in relation to optical goods would be laudatory in nature as same would convey that the product being marketed under brand FOCUS would be of such high quality that they would form clear and sharp image of any object in eyes.
30. Our own Hon'ble High Court in Rich Products Corporation & Anr. vs. Indo Nippon Food Ltd., 2010 (42) PTC 660 (Del.) held :
32.6 The rights conferred by registration of a mark are encapsulated in Section 28 of the Trade Marks Act. Section 28 provides that subject to other provisions of the Trade Marks Act the registration of the mark shall confer on the owner exclusive right of use of the trademark in relation to the goods or Suit No. 36/08/05 35 of 45 services in respect of which the mark is registered, and consequently enable a registered proprietor to obtain necessary relief in the event of infringement of his trademark, in the manner provided in the Act. This is subject to the mark being a valid. The validity of the mark in an action for infringement can be enquired into either by the court or the statutory authority depending on where and at which stage the action is pending. [See Lowenbrau AG & Anr. v. Jagpin Breweries Ltd. & Anr., 157 (2009) DLT 791]. The right to exclusive use of a registered mark conferred upon the owner of such a mark is subject to conditions and limitations to which the registration is subjected to. In the context of the present case in my view subsection (2) of Section 28 of the Trade Marks Act would bring within its ambit any disclaimers which are set out at the time of registration of the mark. (emphasis supplied)
36. Since lengthy submissions were made by both sides with respect to whether or not "WHIP TOPPING" is a generic and/or descriptive expression, it may be necessary to briefly touch upon this aspect of the Suit No. 36/08/05 36 of 45 matter. The word "generic" ordinarily would mean that which has character of or belongs to a genus or class (see New Shorter Oxford English Dictionary, Edition 1993 at page 1074); whereas the word "descriptive" would mean that which seeks to describe, characterized by description, consist of or concern with description or observable things or qualities (see New Shorter Oxford English Dictionary, Edition 1993 at page 644). Whether a word or expression is "generic" or "descriptive" or both is dependent on the facts and circumstances arising in a particular case.
It is quite possible that a word or expression which is "generic", i.e. which refers to a genus or a class is also descriptive as the word by itself characterize the qualities of the product. The line dividing the two in certain cases may get blurred. The word "whip" by itself means, in the context of the present case, a light fluffy desert made with whipped cream or beaten eggs (see New Shorter Oxford English Dictionary, Edition 1993 at page 3670), while the word "topping"
means a top layer or garnish put on food (see New Shorter Oxford English Suit No. 36/08/05 37 of 45 Dictionary, Edition 1993 at page3342).
Similarly, the word "cream" means part of liquid that gathers at the top; froth etc. or a liquid rich in droplets or particles of the dispersed phase that forms a separate (especially upper) layer in an emulsion or suspension when it is allowed to stand or is centrifuged (see New Shorter Oxford English Dictionary, Edition 1993 at page
543). The words "Whip Topping", when juxtaposed would, in my view, be representative of toppings or garnishes for food items which have cream like quality. Therefore, it is, in my opinion, both "generic" as well as "descriptive" of the product. The submission of Mr. Gupta that the words "WHIP TOPPING" is distinctive because it relates to a nondairy product is not substantiated by any evidence on record which would demonstrate that the words "WHIP TOPPING" are associated only with a cream which is not dairy based.
31. In Rhizome Distilleries P. Ltd. & Ors. vs. Pernod Ricard S.A. France & Ors., 2010 (42) PTC 806 (Del.) (DB), our own Hon'ble High Court held :
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15. Very recently, the Division Bench of this Court in Cadila Health Care Ltd. v.
Gujarat Cooperative Milk Marketing Federation Ltd., MANU/DE/2282/2009 :
2008 (36) PTC 168 [Del] upheld the decision of a Single Judge of this Court refusing an injunction against the use of the word "Sugar Free'. The Plaintiff is the manufacturer of the artificial sweetener sugar free, where as the Defendant had stated that its ice creams were sugar free or free of sugar. It was held that exclusivity could not be claimed in respect of ordinary words (or if we may say descriptive words) which are publici juris. The Division Bench also quoted with the approval the decision of the High Court of Bombay in Asian Paints Limited v. Home Solutions Retail (India) Ltd., 2007 (35) PTC 697 [Bom], wherein the learned Single Judge had declined an injunction holding that the words 'Home Solutions' are to be commonly found. Jural opinion, therefore, is an averse to granting exclusivity to ordinary words. Our esteemed and learned Brother, Mukul Mudgal, J., had noted that 'Sugar Free' is neither a coined word nor an unusual juxtaposition of two English words Suit No. 36/08/05 39 of 45 especially when such expressions are commonly used. Although the Bench expressed their reservations for the decision of the European Court of Justice in Proctor & Gamble v. Office of Harmonisation in the International Market (OHIM), (2002) RPC 17 (famously known as "Baby Dry Case"), it was noted that the proprietary character could be accorded to expressions which are syntactically unusual. In other words, there must be something unique to the choice of the word; it should neither be descriptive nor laudatory since everyone would be entitled to use such word(s). It would be wise, therefore, for any trader or manufacturer to use a coined or unique word if he expects proprietary right over and a consequent injunction to issue in respect of the user of such trademarks by rivals. If a new venture dealing in computers adopts the name 'Apple', we would expect Courts not to hesitate to grant an injunction against its user by third parties since the choice of the word 'Apple' has no connection whatsoever with computers. Obviously, if a party adopts the mark 'Imperial Apples' in connection with Suit No. 36/08/05 40 of 45 the apple trade, Courts would be loathe to grant an injunction for either word.
24. It is our analysis that no exclusive or proprietary rights can be claimed by either of the parties before us in respect of the word IMPERIAL which is not only in common parlance to be found in every dictionary, but also is laudatory in nature as it alludes to royalty or grandeur. With respect, we are not convinced that IMPERIAL refers only to royalty, empowering only such persons to take litigative umbrage. Illusions of royalty and grandeur are one of the sentiments resulting from imbibing spirits, and, therefore, IMPERIAL may justifiably be seen as descriptive.
32. In view of aforesaid discussion, no exclusive proprietary can be claimed by plaintiff in respect of word FOCUS which is not only in common parlance to be found in every dictionary but also is laudatory in nature regarding product in question i.e. optical goods and moreover, the mark which is registered under No.479297 in class 9 is not only Suit No. 36/08/05 41 of 45 word FOCUS but i.e. composite mark consisting of optical sign with FOCUS VISION CARE in a label. This issue is accordingly decided in favour of the defendant and against the plaintiff.
Issues No.2 & 3
33. Since both these issues involve common discussion of facts and law, hence, for the sake of brevity both these issues are being taken up together. The case as set out by the plaintiff is that he is registered proprietor of trade mark FOCUS under No.479297 in class 9 and the defendant is infringing his trade mark and the defendant is passing off its goods as that of plaintiff under trade mark FOCUS OPTIC. As per certificate of registration No.479297 in class 9, the plaintiff is not a registered proprietor of only word FOCUS but the trade mark of plaintiff registered under No.479297 in class No.9 is composite word consisting device of Optical sign with FOCUS VISION CARE in a label. In findings on Issue No.1 above it has Suit No. 36/08/05 42 of 45 been held that the plaintiff has failed to prove that he is registered proprietary of trade mark FOCUS. Moreover, PW1 admitted in the crossexamination that the plaintiff is not manufacturing goods under trade mark FOCUS VISION CARE. On one hand the plaintiff/PW1 stated that they are not manufacturing any goods under trade mark FOCUS and on the other hand the plaintiff has not produced any goods which have been produced/sold by defendant under trade mark FOCUS. The plaintiff has not succeeded in proving that the defendant is infringing trade mark FOCUS or the defendant is passing off its goods as those of plaintiff. Both these issues are decided in favour of the defendant and against the plaintiff. Issues No.4 & 5
34. Since both these issues involve common discussion of facts and law, hence, for the sake of brevity both these issues are being taken up together. By way of present suit the plaintiff has prayed for decree of permanent injunction Suit No. 36/08/05 43 of 45 for restraining the defendant from manufacturing, selling, offering for sale, advertising, directly and indirectly dealing in optical goods, lenses, opthalmic lenses, frames, artificial eyes, instruments, machines and other cognate and allied goods and for passing off defendant's goods as that of plaintiff. However, in the findings on the aforesaid issues, it has been held that the plaintiff has failed to prove that the plaintiff is registered proprietor of the mark FOCUS under No.479297 in class 9 and the mark of the plaintiff which is registered under No.479297 in class 9 is consisting of the device of optical sign and the expression FOCUS VISION CARE and the plaintiff has also not succeeded in proving that the defendant is infringing trade mark of plaintiff and the defendant is passing off its goods as that of the plaintiff. Accordingly, plaintiff is not entitled to decree of rendition of accounts and relief of perpetual injunction as prayed. Both these issues are accordingly decided in favour of the defendant and against the plaintiff.
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Issue No.6 (Relief)
35. In view of aforesaid discussion and findings on the above issues, the plaintiff is not entitled to the reliefs as prayed. The suit of the plaintiff is dismissed. Parties are left to bear their own costs. Decree sheet be prepared accordingly. File be consigned to Record Room.
(Announced in the open Court (HARISH DUDANI)
on 25th Mary, 2010) ADDL. DISTT. JUDGE15 (CENTRAL)
DELHI
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