Delhi High Court - Orders
Airtec Electrovision Pvt. Ltd vs Sunil Kumar Saluja on 28 January, 2022
Author: Vipin Sanghi
Bench: Vipin Sanghi, Jasmeet Singh
$~2.
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ FAO (COMM) 182/2021 and CAV 62/2021 & CM Nos. 40967-
40968/2021
AIRTEC ELECTROVISION PVT. LTD. ..... Appellant
Through: Mr. Rajiv Bajaj and Karan Prakash,
Advocates.
versus
SUNIL KUMAR SALUJA ..... Respondent
Through: Mr. Kamal Garg, Advocate.
CORAM:
HON'BLE MR. JUSTICE VIPIN SANGHI
HON'BLE MR. JUSTICE JASMEET SINGH
ORDER
% 28.01.2022
1. The appellant has preferred the present appeal to assail the order dated 26.10.2021 passed by the Court of Sh. Gurdeep Singh, District Judge (Commercial Court)-02, West District, Tis Hazari Courts, Delhi in CS (Comm.) No. 329/2021 titled as Airtech Electrovision Pvt Ltd. Versus Sunil Kumar Saluja.
2. By the impugned order, the learned Commercial Court has dismissed the appellant/ plaintiff‟s application under Order XXXIX Rules 1 & 2 CPC to seek an interim injunction against the respondent defendant restraining him from using the trade name and mark "AIRNET".
3. The case of the appellant/plaintiff is that the appellant is engaged in the business of manufacture, promotion and distribution of E-LED Signature Not Verified Digitally Signed By:BHUPINDER SINGH ROHELLA Signing Date:31.01.2022 14:34:34 Television Sets across India under the name and style of "EIRTEC". The appellant/ plaintiff alleged that in June 2021, it came to its notice that the respondent/ defendant was using the trademark "AIRNET" in respect of television sets. The appellant/ plaintiff claimed that the two marks are deceptively similar - both in style, and phonetically as well. The appellant/ plaintiff claimed that its mark is registered, whereas that of the respondent defendant was not registered, since the respondent/ defendant had not pursued its application for registration of its mark.
4. The learned single judge has compared two marks and did not find any phonetic or other similarity in the two marks. Consequently, he rejected the interim application of the appellant/ plaintiff. The relevant discussion in the impugned order reads as follows:-
"6. It is worthwhile to mention that plaintiff has filed application form of defendant which was abandoned dated 9.8.2021 which was filed on 20.3.2018 and mark is shown „proposed to be used‟. He has also filed colour picture of advertisement on TV wherein blue triangle mark of the defendant is mentioned on top of word mark „airnet‟ and „choice of India‟ is written below the mark. „airnet‟ is written in small letter wherein „air‟ is written in blue colour and „net‟ is written in red colour. Picture also shows lady in TV with small other floating pics which she was holding. Plaintiff has also filed colour picture of their mark „Eairtec‟ wherein „e‟ is used in front of „Airtec‟ in the manner of symbol of electronic goods. The wordmark is having 2 crescents above it, out of which one is red and another is blue over the word „Eairtec‟.
7. Ld. Counsel for plaintiff submitted that impugned mark of defendant is phonetically similar with that of plaintiff registered mark. The defendant has copied „air‟ from „Eairtec‟ and also placed similar device whereby dishonestly tried to copy the mark of the plaintiff as well as to take benefit of advertisement Signature Not Verified Digitally Signed By:BHUPINDER SINGH ROHELLA Signing Date:31.01.2022 14:34:34 of plaintiff on which plaintiff has spent huge amount.
8. On the other hand, learned counsel for the defendant submitted that there is no phonetic similarity between the marks as „Air‟ is business name in respect of item on which telecast is done through air and since they are dealing with smart TV. Further „net‟ is mark with respect to networking. They have coined their mark „airnet‟ by mixing two words „air‟ and „net‟. It is further submitted that plaintiff has falsely averred in the plaint that they came to know regarding defendant mark in the month of June, 2021 whereas he has filed objection in 11.7.2018 before the trade mark registry. It is stated that defendant has applied for registration of the trademark but same was abandoned due to ill health of the attorney of the defendant. It is further submitted that word „air‟ is common to trade especially in the trade of electronic goods and there are several mark commencing from „air‟ such as airtel, aircel, airtelink, airstar etc. which are already registered. Further the cost of E-LED TV starts from Rs.7000/- onwards and consumers are more vigilant at the time of buying the product and can easily distinguish between product of the plaintiff and defendant.
9. In support of his arguments, Ld. Counsel for defendant has cited judgments in case titled as Micronix India v. J. R. Kapoor 2003 (3) RAJ 100 (Del), Rajesh Jain v. Amit Jain & Other, 2015(1) RAJ 156 (Delhi), Bigtree Entertainment Pvt. Ltd. v. Brain Seed Sportainment Pvt. Ltd. 2017 SCC Online Delhi 12166 and Bhole Baba Milk Food Industries Ltd. v. Parul Food Specialities Pvt. Ltd. 2011 SCC Online Del 4422
10. Coming to the cited judgments firstly. In case of Micronix India (supra), the word „micronic‟ and „microtel‟ were in question. The Hon‟ble High Court held that trademark starts with word „micro‟ which is a generic term as it refers to state of art technology and cannot be monopolised by any person as both parties are in the same trade using micro technology and therefore word or prefix „micro‟ cannot be monopolised.Signature Not Verified Digitally Signed By:BHUPINDER SINGH ROHELLA Signing Date:31.01.2022 14:34:34
11. In case of Rajesh Jain (supra) mark „Blue Valley‟ and „Blue Very‟ were in question where claim of plaintiff is disputed that trademark Blue Valley is well known mark which has attained distinctiveness and secondary meaning to an extent which enables consumers to relate to the mark of the plaintiff‟s goods. The court held one has to bear in mind consumers of the product, which is a hair removal cream, will comprise generally of ladies, who would surely be able to distinguish the marks.
12. In case of Bigtree (supra), plaintiff domain mark „www.bookmyshow.com‟ objected to registration of www.bookmysports.com. Prefix „Bookmy‟ was common expression which was not unique domain is used for hire/booking only. Plaintiff‟s domain has not attained secondary meaning representing plaintiff services only. It was also found that prefix „BookMy‟ was using by many other traders. Hence, application for interim injunction was dismissed.
13. In Bhole Baba (supra) case, injunction order was sought against selling of Ghee using trademark „Krishna‟. The word Krishna was being used by defendant with the words „Parul‟s Lord‟ preceding with word „Krishna‟. It was observed that word „Krishna‟ was used by several manufacturer in the identical goods and therefore plaintiff claim of distinctiveness and monopoly was prima facie not accurate.
14. It is worthwhile to mention judgment of our own Hon‟ble High Court in case titled as Merico Limited v. Agro Tech Foods Limited, 2010 SCC Online Del 3808, which discusses the law on the subject of monopoly of common English word. In the said case, Hon'ble Division Bench faced with registered trade mark "LOSORB" and "LOSORB". Plaintiff got registered the Trademarks "LOSORB" and "LO-SORB" for different products in class-29 viz Oil, Ghee etc. effective from 28.05.2001. The appellant claimed that it coined the word marks which have been registered by it. The registered marks were used in Signature Not Verified Digitally Signed By:BHUPINDER SINGH ROHELLA Signing Date:31.01.2022 14:34:34 relation to edible oil inasmuch as the edible oil contained an ingredient/anti foaming agent by which less or low oil was consumed by the product made by use of the edible oil. The edible oil sold also used the trademarks "Sweekar" & "Saffola"
besides the subject registered trademarks "LOSORB" and LO- SORB". The defendant is selling its edible oil/Sunflower seeds oil under the trademark "Sundrop" and since this edible oil also contains an anti- foaming agent, which in turn, retards the absorption of oil during the process of frying food stuffs, therefore, the packaging also contains the expression "WITH LOW ABSORB TECHNOLOGY". The Hon'ble high Court has examined the case from prospectives of passing off and infringement of trade marks. It was observed that the plaintiff was using trade mark since2001 and which user even as per the stated sales cannot be said to be such user qua a descriptive expression LOW ABSORB that it can be said that the appellant has got such distinctiveness to claim exclusive monopoly of the same as a trademark keeping in mind the observations made above of discouraging appropriation of descriptive words and expressions. Also, the extent of sales i.e. value of sales can sometimes be deceptive in cases such as the present where the appellant also uses other trademarks such as Sweekar & Saffola. It would be a moot point, to be decided after trial, that what is the extent of sales relatable to "LOW ABSORB" only (and even for the registered marks "LOSORB" and "LO- SORB") and not because of the trade marks Sweekar and Saffola and rejected claim of the appellant that it has achieved such distinctiveness that it can claim the benefit of the proviso to Section 9 with respect to the subject word mark which is a descriptive trademark and declined relief of injunction on the ground of passing off.
15. As regards infringement of trade marks, Hon'ble High Court observed that LOW ABSORB and LO-SORB has not achieved secondary meaning. It was observed that on this aspect one immediately feels that it is an aspect of concern with respect to the claim of the plaintiff that if partly tweaked descriptive words and expressions of English language are Signature Not Verified Digitally Signed By:BHUPINDER SINGH ROHELLA Signing Date:31.01.2022 14:34:34 claimed to be coined words, the same would result in a grave and absurd situation because a nontweaked word being a completely descriptive word will in fact be deceptively similar to the tweaked descriptive English language word or expression of which registration is obtained. Meaning thereby that because of success in getting registered a minor modification of a descriptive word or expression of the English language, a person who gets registration can prevent a purely descriptive use of a normal word or expression as found in English language dictionary on the ground that it would be identical with or deceptively similar to a registered trademark- a position which is found in the present case. Such a position, in our opinion, cannot at all be countenanced and must be struck down with a heavy hand.
16. It was further observed that once the person, against whom a suit is filed on the ground of infringement of a trademark which is in fact a descriptive word, then, if a defendant is using his word mark as a trademark prominently in addition to the descriptive word mark which the plaintiff claims to be his trademark, nothing further is required to show the bonafides of the defendant against whom infringement of a registered trademark is alleged. In facts of the present case, we have already adverted to in detail the prominent use by the respondent of its independent trademarks 'Sundrop', and, the fact that expression 'LOW ABSORB' is being used only as part of the sentence which reads 'WITH LOW ABSORB TECHNOLOGY' and hence dismissed.
17. The „Eairtec‟ is registered mark / device mark of the plaintiff and „airnet‟ is mark of the defendant regarding which an application for grant of registration was filed before competent authority however, same was abandoned. The plaintiff has claimed that there are phonetic similarly between the two marks, which to my mind is incorrect. Although there are similarity in pronouncing the word „eair‟ and „air‟ however, there is no similarity in word „tec‟ and „net‟ and when the entire word is pronounced, it makes difference. Apart from Signature Not Verified Digitally Signed By:BHUPINDER SINGH ROHELLA Signing Date:31.01.2022 14:34:34 same, in the trade mark of defendant, a triangle is used on the top of the work mark „airnet‟ whereas 2 crescents are used in the mark of plaintiff and also „e‟ is written in style of electronic goods. Therefore there is no phonetic similarity between mark of plaintiff „eairtec‟ and mark of defendant „airnet‟ as noted above.
18. Further both plaintiff as well as defendant are in the business of manufacturing, promotion and distribution of e- LED television sets. Word „air‟ is descriptive in nature which is being used especially in the trade of electronic goods as part of their trade mark and the word „net‟ is used for networking. Further there are other user as well which are using word „air‟ as part of their trademark such as Airtel and Aircel, which is registered in their favour. Therefore there cannot be monopoly over the words which are descriptive in nature.
19. The Hon'ble High of Delhi in celebrated judgment in case of Merico (supra) observed as under:-
10. In view of the judgment of the Division Bench in the Cadila Healthcare Ltd. (supra), and with which we respectfully agree, the appellant in the facts of the present case can have no exclusive ownership rights on the trade mark "LOW ABSORB". The expression "LOW ABSORB" is quite clearly a common descriptive expression/adjective. The expression "LOW ABSORB" is not a coined word and at best it is a combination of two popular English words which are descriptive of the nature of the product as held by the Division Bench in Cadila Healthcare Ltd.
(supra) case that such adoption naturally entails the risk that others in the field would also be entitled to use such phrases. Low Absorb is not an unusual syntax and the same can almost be said to be a meaningful part sentence or phrase in itself. The expression "LOW ABSORB" surely and immediately conveys the meaning of the expression Signature Not Verified Digitally Signed By:BHUPINDER SINGH ROHELLA Signing Date:31.01.2022 14:34:34 that something which absorbs less, and when used with respect to edible oil, it is descriptive in that it refers to less oil being absorbed or low oil being absorbed. Similar to the expression "Sugar Free"
being not an unusual juxtaposition of two English words the expression "LOW ABSORB" equally is not an unusual juxtaposition of words in that the same can take away the descriptive nature of the expression. The expression "LOW ABSORB" is used in the functional sense for the character of the product viz. edible oil. With respect to the unregistered trade mark "LOW ABSORB" we are of the firm opinion that in essence the expression "LOW ABSORB" only describes the characteristic of the product edible oil and ordinarily/normally incapable of being distinctive. We are also of the view that it is high time that those persons who are first of the blocks in using a trade mark which is a purely descriptive expression pertaining to the subject product ought to be discouraged from appropriating a descriptive expression or an expression which is more or less a descriptive expression as found in the English language for claiming the same to be an exclusive trade mark and which descriptive word mark bears an indication to the product's kind, quality, use or characteristic, etc. This in our view is in accordance with the spirit of various subsections of Section 9 and Section 30 besides also Section 35 of the Act. The very fact that in terms of Section 9 of the Act, in cases falling therein, there is an absolute ground for refusal of registration of the trade mark, the same clearly is an indication of ordinarily a disentitlement from claiming exclusive ownership of a descriptive expression as a trade mark. We are in this entire judgment for the sake of convenience only using the expression „descriptive expression‟ or „descriptive word‟ or Signature Not Verified Digitally Signed By:BHUPINDER SINGH ROHELLA Signing Date:31.01.2022 14:34:34 „descriptive trade mark‟ „descriptive‟, etc. but these expressions are intended to cover cases with respect not only to a descriptive word mark used as a trade mark but to all word marks used as trade marks which refer to kind, quality, intended use or other characteristics, etc. of the goods, and also other ingredients of Sections 9(1)(b) and Section 30(2)(a).
41. The following conclusions thus emerge:-
(i) A mark which is sought to used as a trade mark, if, is one falling under Section 9 (1)(a) to (c), then the same ordinarily ought not to be afforded protection as a trade mark
(ii) Before the marks which fall under Section 9(1) (a) to (c) are given protection as a trade mark, the distinctiveness must of an undisturbed user of a very large/considerable number of years, with the emphasis being on discouragement on appropriation of such marks which fall under Section 9(1)(a) to (c).
(iii) A civil Court in a suit filed for infringement of a registered trade mark is entitled (if there is no earlier judgment which has achieved finality in cancellation proceedings) to consider the validity of registration for the purpose of passing an interlocutory order including of grant or refusal of an interim injunction--once the objection as to invalidity of registration is taken up in the pleading/written statement.
(iv) A trade mark which falls under Section 9(1)(a) to (c) cannot be registered on proposed to be used basis. Evidence on distinctiveness with respect to trade marks falling under Section 9(1)(a) to (c) should be the evidence of user evidencing distinctiveness as on the date of application Signature Not Verified Digitally Signed By:BHUPINDER SINGH ROHELLA Signing Date:31.01.2022 14:34:34 for registration or at the best of evidence up to the date of registration.
(v) In infringement actions the Court is entitled to consider the evidence of distinctiveness up to the date of registration for the purpose of passing any interlocutory order and not evidence showing distinctiveness post registration. However, in cancellation proceedings evidence of distinctiveness post registration of the trade mark can also be considered.
(vi) Even if there is finality to registration of a trade mark, yet the defendant in infringement action can take statutory defences under Sections 30 to 35 to defeat the infringement action.
20. Therefore these words cannot be appropriated by anyone as they are common words commonly used and as such no one can claim monopoly over these words. Further the consumers of the E-LED Televisions are literate who can distinguish between „airnet‟ and „eairtec‟
21. As already observed that these words which has not acquired secondary meaning with respect to product of plaintiff and therefore plaintiff cannot claim monopoly over these words. The ratio of Merico judgment (supra) squarely applies to the fact in hand. Accordingly I am of the opinion that plaintiff has failed to show that he has prima facie good case and balance of convenience rests in his favour. Accordingly, the application under Order 39 Rule 1 & 2 CPC is dismissed.
22. No order as to cost.
23. In view of above, application stands disposed off.
24. Nothing mentioned herein above shall tantamount to an expression on merit of the case."
Signature Not Verified Digitally Signed By:BHUPINDER SINGH ROHELLA Signing Date:31.01.2022 14:34:345. The submission of Mr. Bajaj - learned counsel for the appellant/ plaintiff is that the marks "EAIRTEC" and "AIRNET" are both phonetically similar. The learned Commercial Court has not found merit in this submission, and we entirely agree with the conclusion drawn by him.
6. We do not find any phonetic similarity in the two marks. Just because the initial alphabets in the appellant/ plaintiff‟s marks are "EAIR", which would sound same as "Air", which are the first three letters in the mark of the respondent/ defendant, it does not make the two marks phonetically similar. Both the marks have to be read and spoken as a whole, and when done so, "EAIRTEC" and "AIRNET" not only are written and spelt differently, but also sound different. It is unlikely that there would be confusion in the mind of the common man, in mistaking "EAIRTECH" for "AIRNET", and vice-versa. The manner in which two marks are being actually used by the parties, are also very different. The appellant has placed on record the manner in which it is using its mark, which is as follows:-
7. On the other hand, the manner in which the respondent defendant is Signature Not Verified Digitally Signed By:BHUPINDER SINGH ROHELLA Signing Date:31.01.2022 14:34:34 using the mark is as follows:-
8. There is no way that anybody can get confused between two marks upon seeing the manner in which they have been used. The appellant/ plaintiff uses, primarily, capital/ uppercase letters to write/ print its mark, with the opening letter „E‟ being written in a stylised form, which resembles the mark used to denote the European Currency Euro. On the other hand, the respondent/ defendant uses only lower case letters to write/ print its mark airnet. The logos accompanying the two word marks are also very different. Even, the taglines are different inasmuch, as, under "EAIRTEC", words "the electronic hub" are printed, whereas, under the word mark "AIRNET", Signature Not Verified Digitally Signed By:BHUPINDER SINGH ROHELLA Signing Date:31.01.2022 14:34:34 words "Choice of India" are printed.
9. We, therefore, do not find any merit in the present appeal.
10. Even otherwise, it is not for the appellate Court to interfere with every interim order passed by the Trial Court, unless the same appears to be seriously in conflict with law, or is found to cause grave prejudice to the aggrieved party.
11. In this regard, we may refer and rely upon the judgment of the Supreme Court in Wander Ltd. v. Antox India (P) Ltd., 1990 Supp SCC 727, wherein the Supreme Court has observed:
"13. On a consideration of the matter, we are afraid, the appellate bench fell into error on two important propositions. The first is a misdirection in regard to the very scope and nature of the appeals before it and the limitations on the powers of the appellate court to substitute its own discretion in an appeal preferred against a discretionary order. The second pertains to the infirmities in the ratiocination as to the quality of Antox's alleged user of the trademark on which the passing-off action is founded. We shall deal with these two separately.
14. The appeals before the Division Bench were against the exercise of discretion by the Single Judge. In such appeals, the appellate court will not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle. Appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court was reasonably possible on the material. The Signature Not Verified Digitally Signed By:BHUPINDER SINGH ROHELLA Signing Date:31.01.2022 14:34:34 appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the trial court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of discretion. After referring to these principles Gajendragadkar, J. in Printers (Mysore) Private Ltd. v. Pothan Joseph [(1960) 3 SCR 713 : AIR 1960 SC 1156] : (SCR 721) "... These principles are well established, but as has been observed by Viscount Simon in CharlesOsenton & Co. v. Jhanaton [1942 AC 130] „...the law as to the reversal by a court of appeal of an order made by a judge below in the exercise of his discretion is well established, and any difficulty that arises is due only to the application of well settled principles in an individual case‟."
The appellate judgment does not seem to defer to this principle."
12. For the aforesaid reasons, we do not find any merit in the present appeal, and the same is, accordingly, dismissed. Any observations made by us hereinabove shall not prejudice to the case of either parties at the trial of the suit.
VIPIN SANGHI, J JASMEET SINGH, J JANUARY 28, 2022/kd Signature Not Verified Digitally Signed By:BHUPINDER SINGH ROHELLA Signing Date:31.01.2022 14:34:34