Calcutta High Court
Itc Limited vs Green India Rice Millers And Exporters ... on 12 April, 2017
Equivalent citations: AIR 2019 CALCUTTA 3
Author: Soumen Sen
Bench: Soumen Sen
GA 1091 of 2017
With
CS 58 of 2017
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction
ITC LIMITED
Versus
GREEN INDIA RICE MILLERS AND EXPORTERS PRIVATE LIMITED &
ORS.
BEFORE:
The Hon'ble JUSTICE SOUMEN SEN
Date : 12th April, 2017.
Appearance:
Mr.S.N.Mookerjee, Adv.Sr. Adv.
Mr.Ranjan Bachawat, Adv.
Mr.Debnath Ghosh, Adv.
Mr.S.Roychowdhury, Adv.
Mr.S.Mitra, Adv.
..for the petitioner.
Ms.Maya Kumar, Adv.
Mr.Sahil Bhalaik, Adv.
Mr.Varun Kedia, Adv.
..for the respondents.
The Court: The plaintiff is the registered owner of the word mark 'AASHIRVAAD' in class 30. The plaintiff holds several registration for word device 'AASHIRVAAD' which is evident from the Certificates of Registrations annexed to the petition being annexures c, c1 and c2. Apart from the aforesaid trade mark registrations, the petitioner has 2 also obtained registration and made applications in respect of various trade dresses, get up, packaging, labels bearing the trade mark 'AASHIRVAAD'. The petitioner claims that since the adoption of the mark 'AASHIRVAAD' in the year 2002, the petitioner has been continuously and consistently manufacturing and marketing a variety of products in the food segment in India and abroad through an unparalleled network or authorized distributors, stockists, dealers and retailers. The petitioner has given the turn over of its products including the expenses incurred towards advertisement and promotion of 'AASHIRVAAD' in paragraph 8 to 14 of the petition. The petitioner contends that the petitioner's trade mark 'AASHIRVAAD' has become distinctive of the petitioner's good and it is exclusively associated in the midst of dealers, salespersons, purchasing consumers and all other persons in the relevant trade and mark solely with the petitioner.
In or about January, 2017 the petitioner came to know that the respondent no.1 is marketing and selling rice under the trade mark 'AASHIRWAD' in and around Delhi. The petitioner also came across hoarding in New Delhi advertising rice product under the trade mark 'AASHIRWAD', a spelling variant of the impugned mark. On conducting a search on the website maintained by the Ministry of Corporate Affairs, the petitioner found that the respondent no.1 was incorporated as a company on August 1, 2016 with Mr.Sajjan Kumar Garg 3 (respondent no.3) and Mrs.Sangeeta Garg as Directors of the said company. The record available on the website of the Ministry of Corporate Affairs shows that the proprietorship firm of Sajjan kumar Garg was taken over by respondent no.1 pursuant to an agreement dated December 2, 2016. The search carried out by the petitioner on the internet search engine Google shows that the respondent no.1 is selling rice under the trade mark 'GREEN INDIA' in the wave page 'https://www.indiamart. com/ greenindiaoverseas / profile.html'. The respondent no.1 claims 'GREEN INDIA' to be its flagship brand recognized in India with a strong presence in the market. The aforesaid webpage also indicates that the respondent no.1 deals in other brands like 'Kitchen Champion' besides the impugned mark. The petitioner after further search on the internet ascertained that apart from Green India 'Basmati Rice' which is a principal brand, the said respondents also use other trade marks like 'Kitchen Champion', 'Kinoni' and 'Hans Cook' besides the impugned mark. Though the respondents claim to be using 'AASHIRWAAD' since in the year 1988 on some of its products no trade mark application relating to such mark and/or its spelling variations has been filed by the respondents. The respondents on the contrary, proclaim the trade mark 'Green India' to be their principal and primary page as would be evident from the website of the respondent no.1. The petitioner contends that not 4 only the respondents used/adopted the impugned mark and/or its spelling variations which are phonetically identical to the Petitioner's trade mark 'AASHIRVAAD' for advertising and selling basmati rice, but in their websites and in the online portals www.indiamart.com and www.tradeindia.com, they have has also used the trade mark 'AASHIRVAAD', which is identical to the petitioner's registered trade mark "AASHIRVAAD", to refer to their products. This in itself indicates the malafide intention of the Respondents to mislead the consumers and pass off its goods as those of the Petitioner's.
The adoption and use of the impugned mark and/or any of its spelling variations by the Respondents which is identical and/or deceptively similar to Petitioner's registered trade mark 'AASHIRVAAD' amounts to infringement of the Petitioner's statutory rights in the said trade mark which have been continuously and extensively used by the Petitioner since the year 2002. The Petitioner's rights are being violated.
The Petitioner states that the impugned mark and/or spellings variations are slavish and colourable imitations of the Petitioner's immensely popular trade mark "AASHIRVAAD". Such adoption is clearly designed to sail as close as possible to the Petitioner's immensely popular and reputed brand/trade mark "AASHIRVAAD" with the deliberate intention to create an impression that there is a nexus 5 between the Petitioner's products and that of the Respondents. The Respondent is hereby seeking to pass off its goods as those of the Petitioner's and to illegally and wrongfully trade upon the enormous goodwill and reputation, which has accrued to the trade mark "AASHIRVAAD" of the Petitioner.
Mr. S. N. Mookerjee, learned senior counsel appearing on behalf of the petitioner submits that there is an infringement of registered trademark of the petitioner. Learned senior counsel has referred to section 29 of the Trademark Act, 1999 and submits that the use of Trademark 'AASHIRWAD' is similar, if not identical to the registered word mark of the plaintiff and the identity and/or similarity of goods are covered by the registration of the plaintiff's mark. Apart from the phonetical similarity between the two marks, there has been a substantial similarity with the word mark 'AASHIRVAAD' and use of the said mark by the defendant is likely to cause confusion on the part of the public since the goods are sold through the same channel. Mr. Mookherjee has relied upon an unreported judgement of this Court in Panghat Sarees Pvt. Ltd. versus "Panghat" & Ors., G.A. No.3120 of 2015, G.A. No.3120 of 2014, C.S. No.358 of 2014 dated 14th October, 2015 for the proposition that if the defence of prior use is taken it is incumbent upon the defendants at the interlocutory stage to 6 show that there has been an extensive and continuous use of the said mark prior to the registration of the mark of the plaintiff.
Per contra, Ms. Maya Kumar learned counsel appearing on behalf of the respondents submits that initially one Kailash Garg used to run a provisional store where he used to sell rice under the brand name 'AASHIRWAD', thereafter the said business was taken over by the respondent No.3 and subsequent takeover agreement dated 2nd December, 2016 disclosed in the petition would show that the defendants are selling their Basmati Rice under the trade name 'AASHIRWAD' continuously since 1988. In fact, respondent no.1 had taken over the lease of M/s. Green India Overseas which was a proprietorship concern of the defendant no.3 with effect from 1st October, 2016 prior thereto the defendant nos.2 and 3 were carrying out on business under the trade mark 'AASHIRWAD' which would be evident from the invoices and balance sheet of the defendant no.2 which would be disclosed if an opportunity is given to file an affidavit.
It is submitted that the word 'AASHIRWAD' is a common dictionary word and is not liable for registration. Learned counsel has referred to advertisements and/or products using phonetically similar trademark with spelling variations and submits that these disclosures show that the plaintiff has no right over the said mark. The learned counsel has relied upon a Single Bench Judgement of the Bombay High 7 Court in International Foodstuffs Co. v. Parle Products Pvt. Ltd. reported in 2016 SCC OnLine Bom 2038 for the proposition that the phonetical similarity is not only test to be applied in such a case. It is submitted that the defendants are not selling the products to the retailers. The products are sold in 25 kg packets to the wholesalers who in turn sell rice to the retailers after opening the packets and/or packages unlike the sale of the products by the petitioner to retailers and/or directly to consumers in small packages of 5 kg or 8 kg. It is further submitted that the plaintiff is not selling Basmati rice under the trademark 'AASHIRVAAD' and as such the question of any confusion would not arise as the packages of the defendants is clearly and prominently display the name of the defendants. The learned counsel has referred to a judgement of the Hon'ble Supreme Court in Skyline Education Institute (India) Private Limited versus S.L. Vaswani and another reported in (2010) 2 Supreme Court Cases 142 for the proposition that when the mark devoid of any distinctive character and it is found that the said mark is being used widely by various identities and/or companies no injunction should be granted. It is submitted that the word 'AASHIRVAAD' is a common dictionary word and being used by many companies across the country as part of their trade name or business activity and, accordingly, the plaintiff cannot claim any absolute right over and in respect of the said word mark 8 'AASHIRVAAD' and, accordingly, is not entitled to any order of injunction. It is submitted that the defendants are using the said mark since 1988 and hence the balance of convenience lies in favour of the defendants and against the plaintiff.
Section 2(m) of the Act gives an inclusive definition of 'mark'. 'Mark' includes amongst others 'word'. Section 2(h) defines "deceptively similar". It states that a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that the other mark as to be likely to deceive or cause confusion. Under Section 29 a registered trade mark is infringed, if -
(a) the mark is identical and is used in respect of similar goods or services; or
(b) the mark is similar to the registered trade mark and there is an identical or similarity of the goods or services covered by the trade mark; or
(c) the trade mark is identical and is used in relation to identical goods or services;
and that such use is likely to cause confusion on the part of the public or is likely to be taken to have an association with the registered trade mark.
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This clause further lays down that in cases falling in category (c) above, there will be a legal presumption of likelihood of confusion on the part of the public.
The ingredients of Section 29(1) are as follows:-
1. The plaintiff's mark is registered.
2. The defendant's mark is identical with, or deceptively similar to the plaintiff's registered mark.
3. The defendant's use of the mark is in the course of trade in respect of goods/ services covered by the registered trade mark.
4. The use by the defendant is in such manner as to render the use of the mark likely to be taken as being use as a trade mark.
5. The defendant's use of the mark is not by way of "permitted user" and accordingly unauthorized infringing use.
The function of a trade mark is to distinguish the goods of one person from others.
As was said by UPJOHN, J., "A man infringes the mark of another if he seizes upon some essential feature of the plaintiff's mark. That essential feature may be ascertained by the eye or by the ear in this sense, that goods bearing that mark may be 10 likely to become known by a certain name . . . . Furthermore evidence is admissible to establish what is or has become an essential feature, but evidence is not essential if the Court feels satisfied on inspection in coming to the conclusion that some particular feature is a distinguishing feature of the Mark allegedly infringed". (Cluett Peabody & Co. Inc. Vs. McIntyre Hogg Marsh & Co. Ld.; 1958 RPC at 351) A trade mark is undoubtedly a visual device; but it well- established law that the ascertainment of an essential feature is not to be by ocular test alone. Since words can form part, or indeed the whole, of a mark, it is impossible to exclude consideration of the sound or significance of those words. Thus it has long been accepted that, if a word forming part of a mark has come in trade to use to identify the goods of the owner of the mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader, for confusion is likely to result. It is sufficient to refer to the words of Lord Cranworth L.C., in Seixo v. Provezende (1866 LR 1 Ch. 192) 'If the goods of a manufacturer have, from the mark or device he has used, become known in the market by a particular name, I think that the adoption by a rival trader of any mark which will cause his goods to bear the same name in the market, may be as much a violation of the rights of that rival as the actual copy of his device'. The likelihood 11 of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole".
The function of the trade marks is to identify the source of manufacture of goods. It is an indicia of origin. In the market the chief value of the trade mark is its power to stimulate sales. In law, the fundamental theory upon which the interest in the trade mark is protected is that a trade mark identifies the goods coming from a particular source, and that an infringing designation tends to divert customer from that source by falsely representing that other goods come from it. (See Ellora Industries v. Banarasi Dass gupta; AIR 1980 Del 254).
The defendants also cannot take advantage of prior user as available to them under Section 34 of the Act as the defendants are unable to produce any evidence at this stage even though the matter was adjourned on an earlier occasion to enable the defendants to come prepared with all documents. The few scrapes of papers 12 produced on behalf of the defendants at the time of hearing only shows certain scribbles in Hindi which is insufficient for this Court to form even a prima facie opinion that in the year 1988 the defendants have adopted the trade mark on the 'AASHIRVAAD' in relation to goods and/or services in mentioned in class 30.
In this regard the observation of the Division Bench of the Madras High Court in Amaravathi Enterprises versus Karaikudi Chettinadu reported at 2008 (36) PTC 688 (Mad.) paragraph 21 where Their Lordships have held that when a defence of prior user is taken, burden lies on such trader/ manufacturer to prove the continuous use of the said trade name and in that regard the volume of sales also assumes significance is apposite.
The defendants have failed to establish even prima facie continuous use of the said trade name and volume of sales prior to 2001 when the petitioner filed the application for registration of the word as well as device mark 'AASHIRVAD' or even thereafter.
In Skyline (supra) the Hon'ble Supreme Court was considering an action for passing off and not an infringement of a trade mark. The plaintiff in the said case did not have the required approval or affiliation whereas the defendants are affiliated to statutory bodies. It was noticed in the said judgment in paragraph 26 that the word 'skyline' is being used by various companies/ or organizations as also 13 for describing different types of institutes/institutions. The voluminous record produced by the respondents before the Hon'ble Supreme Court also shows that in India as many as 117 companies including computer and software companies and institutions are operating by using the word 'skyline' as part of their name/nomenclature.
In International Foodstuffs (supra) the defendants has relied upon paragraphs 18 and 22 which read:
"18. The word 'London' is disclaimed, says Mr.Tulzapurkar, and as to the word 'Dairy' it can never independently enjoy any protection. It is very much a common word. It is public juris; of public right. No protection attaches to it. Even taken as a whole, he submits that this is not a mark that can ever claim protection. Again, this may be a submission that is extremely broad in its implications at this prima facie stage. I do not think it is necessary to go quite that far just yet. I think it is sufficient to accept that the plaintiff's registration and rights are in any case restricted to the only goods on which it has used them, i.e., ice- cream, and, should it be able to show so, to others that are commonly linked with ice-cream (such as other ice-cream preparations of some kind or the other). I do not think, however, that this can be extended to every single item in Class 30. That would take within its sweep all manner of goods such as sugar confectionery, candies, biscuits, pasta. Macaroni, noodles, baking powder, spaghetti, mayonnaise, vinegar, coffee, tea, rice, artificial coffee, bread, pastry and so on. The Charminar 14 principle, if I might be permitted a coinage of my own, from Vazir Sultan must apply here.
22. I will assume, for the Plaintiff, that that the words "London Dairy", when used in relation to ice-cream, might connote the goods of the Plaintiff and the Plaintiff alone. But that is not what the Defendants do. That is not what they do at all. They do not vend or manufacture ice-cream. They vend nothing like it. They are manufacturing a good that falls in the same Class but is entirely distinguishable in every word and in every way except the phonetic. That is surely not enough. What of the visual similarity ? The structural ? The attendant circumstances? The lack of any meaningful reputation or goodwill ? The want of demonstration of deceit or misrepresentation? The very many differences in colour, trade dress, the goods themselves and their pricing ? Is a court to ignore all these only because of a phonetic similarity ? No law says that all this must be ignored, or that a solitary test of pronounciation will suffice to defeat all else that weighs against."
The word 'London' was disclaimed. In any case, it is not the mere phonetic similarity but the trade dressing as well as get-up that are required to be taken into consideration. Phonetic similarity also cannot be ignored. The said judgment has been relied upon essentially to impress upon this Court that phonetic similarity is immaterial inasmuch as the plaintiff is not selling 'Basmati Rice' and accordingly, the protection cannot be extended to every single item in class 30 15 when the fact remains that the plaintiff is not at all selling rice under the trade name 'AASHIRVAAD'.
The said judgment is distinguishable on facts.
Turning to the two marks, it is obvious that the two marks are phonetically similar and operates in the same field. On the first impression, it is obvious that there is every likelihood of deception or confusion by the user of the mark of the respondent. It is not the requirement of law that the plaintiff would be required to establish actual deception. It is now well-settled that the Court while considering the likelihood of deception or confusion must make allowance for imperfect collection. The trade channels are same. It is often said that an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes. The question of deception and confusion has to be approached from the point of view of an unwary purchaser. The marks must be looked at from the first impression of a person of average intelligence and imperfect recollection and must be compared as a whole microscopic examination being impermissible. The statute does not require actual deception or confusion in order to found an action based on infringement. It is also significant to mention that the defendant is also using the alphabet "AA" being first two letters of the impugned word mark "AASHIRWAD" which is similar to the registered word mark of the plaintiff "AASHIRVAAD" in which the first two 16 alphabets are "AA". There is no explanation offered for using the alphabets 'AA' as the first two letters apart from the phonetic similarity of the two marks.
In Hindustan Embroidery Mills Pvt. Ltd. v. K. Ravindra & Co., reported at 1974 (76) Bom LR 146 it was held that -
"It is not the practice to consider the validity of the registration of a trade mark on motion for interlocutory injunction taken out by the persons who has got the mark registered in his name. While a mark remains on the register (even wrongly), it is not desirable that others should imitate it."
The judgment of a Single Bench of the Delhi High Court in Walter Bushnell Pvt. Ltd. & Ors. Vs. Miracle Life Sciences & Anr. reported at 2014 (59) PTC 339 (Del) lays down that when the defendant has not challenged the registered trade mark of the plaintiff and there is no materials on record to show that it is a generic name, the Court must recognize that a registered trade mark holder is enjoying an exclusive and statutory rights which should be adequately protected. In the instant case, no application has been filed by the defendant before the Registrar for cancellation of the trade mark adopted by the plaintiff. It was held in Walter (supra) that unless the trade mark challenged by the defendant is cancelled or ratified it is not 17 the practice to infringe the same in an action for infringement of the trade mark.
The learned single Judge has quoted with approval the views expressed in Express Bottlers Service Pvt. Ltd. that to establish the plea of common use, the use by the other persons should be shown to be substantial. The mere use of the name is irrelevant because a registered proprietor is not expected to act on filing suits or proceedings against infringers who are of no consequence.
There is nothing on record to show that the defendant has filed any application for rectification of the trademark of the plaintiff. Even if an application is filed, mere pendency of an application for rectification would not be a ground to hold that the person who is having his trade mark registered has no right to seek ad interim injunction.
In Gold Star Co. Ltd. v. Gold Star Industries & Ors. reported at 1995 PTR 78 it was held that "what would happen to the rectification proceedings nobody can predict. As of today prima facie evidence establishes plaintiff's exclusive rights regarding the trade mark... Plaintiff cannot be deprived the fruit of registered trade mark nor can the defendant be allowed to use the trade mark of the plaintiff for passing off its goods... If the defendants are allowed to use the trade mark of the plaintiff it would adversely affect the business of the plaintiff, internationally as well as in India".
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Similar was the view expressed by the Delhi High Court in the case of Avis International Ltd. v. Avi Footwear Industries reported at AIR 1991 Del. 22.
The respondents also resist the application on the ground of delay or laches. The plaintiff stated in the petition that they became aware of the existence and presence of the respondents' trademark "AASHIRWAD" in and around Delhi in January, 2017 and immediately thereafter has filed this suit and has taken out this interlocutory application. Accordingly, it cannot be said that there has been any delay. In any event, delay does not defeat grant of injunction in case of infringement of a registered trademark. In Midas Hygiene Industries P. Ltd. Vs. Sudhir Bhatia reported at 2004 (3) SCC 90 it was held that "the law on the subject is well settled. In cases of infringement either of the trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest."
Under such circumstances, in view thereof, there shall be an order of injunction of restraining the respondents, their men, servants, agents or assigns and all others acting for and on their behalf from infringing the registered trademarks of the petitioner being trade mark 19 nos. 1063649, 1087266 and 1092701 by manufacturing, marketing, selling, distributing, advertising, exporting, offering for sale, and in any other manner, directly or indirectly, dealing in any product in packets, sachets, containers, boxes, cartons, etc. bearing the trade marks 'AASHIRWAAD', 'AASHIRWAD', 'ASHIRWAD', 'AASHIRVAAD', 'AASHIRVAD', and/or 'ASHIRVAAD', or any other trade name and/or trading style containing the said words in any manner whatsoever for the period of twelve weeks or until further order whichever is earlier.
Affidavit-in-opposition shall be filed within three weeks from date; reply thereto, if any, may be filed within a week thereafter. The matter shall appear under the heading 'Motion Adjourned' after five weeks.
(SOUMEN SEN, J.) dg2