Andhra Pradesh High Court - Amravati
M/S Guaurav Polymers vs M/S Delight Chemicals Private Limited on 20 November, 2020
Author: R. Raghunandan Rao
Bench: R. Raghunandan Rao
HON'BLE SRI JUSTICE R. RAGHUNANDAN RAO
C.M.A.No.209 of 2019
JUDGMENT:
This appeal is filed by the defendant in the suit.
2. The respondent herein had filed O.S.No.16 of 2017 in the Court of the X Additional District Judge, Gurazala for permanent injunction restraining the appellant herein from infringing on the trademarks or passing off trademarks held by the respondent herein and for damages, rendition of accounts under the Trademarks Act, 1999 and infringement of Copy Rights Act, 1957 against the appellant herein.
3. The pleadings in the suit were that the plaintiff, who is incorporated under the Companies Act with it's registered office at Piduguralla, Guntur District has been carrying on the business of manufacture of white lime wash in the country and distributing and selling the same under the flagship brand name Surya and the device mark of "Rising Sun". The plaintiff who had been in business since 1985 had been using the mark "Surya" in collocation with various other words and in a combination with the device "Rising Sun with seven rays".
4. The Unique, uncommon and distinctive features of the trademarks "SURYA" and logo "SUN" are an inventive combination of the following essential elements in its logo:
a) The word "SURYA" in a specific style highlighted in the foreground in huge fonts.
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b) The picture of a rising sun in the background behind the word "SURYA" thus giving the mark a distinctive look.
c) The Tag line "SPARKLING WHITE LIME WASH".
d) The overall length of the mark with its unique features pertaining to the font and colour.
5. It is submitted by the petitioner/plaintiff that they have, under the common law and as a result of extensive prior usage since 1985, vested rights in the Trademark "SUN" as a LOGO, and "SURYA" as a word and to protect the same have already filed Trademark Applications with the concerned Trademark Registry and the same is pending for registration. The petitioner/plaintiff has been using the suffix "SURYA" to all its products till date. The list of trademarks so being used has been set out in the plaint and application.
6. The plaintiff submits that it had also obtained about 24 registrations of various trademarks and as such the right of the plaintiff to such marks are conclusive and indisputable as per Section 31 of the Trademarks Act, 1999.
7. It is the case of the plaintiff that the mark of the plaintiff has come to obtain certain recognition among the general public relating to the standard and quality of the products of the plaintiff on the basis of the high standards maintained by the plaintiff in the manufacturing of its products which is recognized all over the country.
8. The plaintiff claims that its mark "Surya" had come to be associated with quality products of white lime wash, 3 RRR,J CMA.No.209 of 2019 cement, colours, dry cement plasters, dry mortars, wet plasters, architectural coatings etc., to such an extent that it would be treated as a well known mark as defined under Section 2 (zg) of the Trademark Act, 1999.
9. The plaintiff having come to know that the defendant herein was indulging in illegal activity of selling its products by adopting the name "Surya Magical White" in relation to paints, varnishes etc., had filed a criminal complaint with the Superintendent of Police, Raipur in the year 2016 which was not acted upon. This compelled the plaintiff to file a private complaint against the defendant in the Magistrate Court which however came to be pending at the time of the filing of the suit. The plaintiff claimed that since the defendant continued to sell its products in the open market it was forced to approach the Court for the reliefs claimed in the suit as the defendant was infringing and passing off it's mark by copying the plaintiff's mark in the following manner:
1) The drawing of a rising sun.
2) The word "Surya White" by inserting the word "Magical" in between the mark.
3) With exact font styles and colour combinations.
10. The plaintiff complains that the defendant's use of the essential features of the plaintiff mark demonstrates the intent of the defendant to utilise the goodwill of the plaintiff by deceiving the general public.
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11. The defendant entered appearance in the Trial Court and submitted that the Judicial Magistrate of First Class, Raipur, Chattisgarh had rejected the case of the plaintiff by an order dated 19.12.2017 on the ground that the logo of the parties and the colours used in the printing of logo are different. The defendant contended that the plaintiff had approached the Civil Court as it had failed in the Criminal Court and in any event the defendant itself had applied for registration of the trade mark being utilised by the defendant for it's business in the area of Chattisgarh whereas the plaintiff has its business operation mainly in the southern region and as such there is no conflict.
12. The plaintiff filed I.A.No.173 of 2017 for an interim direction restraining the defendant and persons working through the defendant from committing any act of trademark infringement. This application was allowed on 12.10.2018. Aggrieved by the same, the defendant herein had preferred C.M.A.No.1355 of 2018 before this Court and the same was allowed by this Court by an order dated 15.02.2019 on the ground that none of the documents presented before the trial Court had been marked as required by a Judgment of the Division bench of this Court and remanded the matter back to the Trial Court to conduct a denovo enquiry into the matter. Thereafter, the trial Court after marking Exs.P1 to P8 for the plaintiff herein and Exs.R1 to R6 for the defendant herein had allowed the injunction application by order dated 03.06.2019.
5 RRR,J CMA.No.209 of 2019 Aggrieved by the said order the defendants have filed the present appeal.
13. Sri Ashwin Kumar, learned counsel for the appellant submits that there is no similarity between the trademark of the appellant and the respondent and the Criminal Court had already given such a finding; the appellant operates in Chattisgarh while the respondent operates only in South India and there is no pleading that sales of the appellant have been affected in Chattisgarh; the appellant is seeking to obtain a trademark on the name "SURYA" which is not permitted as the said word "SURYA" is a generic word which cannot be made into a trademark, and relied upon the judgments in Surya Agro Oils Ltd Vs Surya Coconut Oil Industries1 and Rajeev Malhotra Vs Amit Home2; the trademark of the appellant and the trademark of the respondent differ significantly as can be seen from a comparison of the trademark of the appellant and the trademark of the respondent set out at pages 167 to 170 of the paper book and which had been marked as Ex.R.5. Sri Ashwin Kumar also relied upon the judgements in J.R. Kapoor Vs Micronix India 1994 Supp (3) SCC 215 and N.R.Dongre Vs Whirlpool Corporation and another, 1996 (5) SCC 714.
14. Sri Ram Kumar, the learned Counsel for the Respondent herein submitted that the judgement under appeal is a well considered judgement which has applied the 1 AIR 1995 Delhi 72 2 1996 (16) PTC 704 (Del) 6 RRR,J CMA.No.209 of 2019 parameters to be considered to grant an injunction in such cases and relied upon the following judgements to support the case of the Respondent:
1. Midas Hygiene Industries Pvt. Ltd Vs. Ashok Bhatia and others 2004 (28) PTC 121 SC.
2. Ruston & Hornsby Ltd Vs Zamindara Engineering Company AIR 1970 SC 1649.
3. Neon Laboratories Limited Vs. Medical Technologies Limited and Ors 2015 (64) PTC 225
4. Sayeed Mohideen Vs P. Sulochana Bai (2016) 2 SCC 683 ::
2016 (66) PTC 1 SC
5. Cadila Healthcare Ltd. Vs. Cadila Pharmaceuticals Limited, 2001 PTC 541 (SC)
6. Surya Roshni Ltd. Vs M/s Electronic Sound Components, AIR 1995 DEL 920.
15. In Midas Hygiene Industries Pvt. Ltd Vs. Ashok Bhatia and others3, the Hon'ble Supreme Court was concerned with the question of delay in bringing an action for protection of trade mark and had held that delay in bringing an action is not sufficient to defeat a grant of injunction. In Neon Laboratories Limited Vs. Medical Technologies Limited and Ors4, the Hon'ble High Court was considering the issue of first user and whether the proprietor of registered trade mark would have the right to prevent the use of identical or similar mark by a user who had commenced prior to the date of registration of the proprietor. The Hon'ble Supreme Court had held that the 3 2004 (28) PTC 121 SC 4 2015 (64) PTC 225
7 RRR,J CMA.No.209 of 2019 proprietor would not have a right to prevent such use as first user .
16. In the present case, it does not appear that there is any dispute that the plaintiff/respondent herein is the first user. In any event, this Judgment may not be relevant as the question before the Court is only whether there is a case of infringement of passing of trade mark registered in favour of the defendant/appellant.
17. In Sayeed Mohideen Vs P. Sulochana Bai5, the issue that came up before the Hon'ble Supreme Court was whether the proprietor of a registered trade mark can maintain an action of passing off against the proprietor of another registered trade mark in view of the interplay between the language of Section 27(2) and Section 28(3) of the Act. The Hon'ble Supreme Court after an analysis of the provisions of the Act had held that an action for passing of word still be available to the aggrieved party.
18. In Cadila Healthcare Ltd. Vs. Cadila Pharmaceuticals Limited6, the Hon'ble Supreme Court went into the question of the scope of a passing of action, vis a vis an action for infringement. In Surya Roshni Ltd. Vs M/s Electronic Sound Components7, the Delhi High Court considered the case of passing of between the trade mark 5 (2016) 2 SCC 683 :: 2016 (66) PTC 1 SC 6 2001 PTC 541 (SC) 7 AIR 1995 DEL 920 8 RRR,J CMA.No.209 of 2019 "Bhaskar" with the trade mark "Surya" and held that there was a likelihood of confusion in the mind of the buyer and as such, an injunction would have to be granted.
19. In Ruston & Hornsby Ltd Vs Zamindara Engineering Company8, the Hon'ble Supreme Court had held that an action for infringement is a statutory right dependent upon the validity of the registration of the mark under the Act and no case of actual deception or any actual damage needs to be proved.
20. In view of the judgements cited by both the sides, a brief review of the law relating to Trade marks may be necessary.
21. Trademark law was initially governed by the principles of common law. Cases of infringement of trade marks and cases of passing off were determined on the basis of section 54 of the Specific Relief Act, 1877, until the advent of the Trade Marks Act, 1940, which was replaced by The Trade and Merchandise Marks Act, 1958. The 1958 Act was replaced by the present Trade Marks Act,1999 ( referred to as The Act) which holds the field today.
22. The Act regulates the recognition of Trade Marks, their registration and protection. We are presently concerned with the protection of trade marks, which is defined in Section 2(1) (zb) as follows:
8
AIR 1970 SC 1649 9 RRR,J CMA.No.209 of 2019 "Trade Mark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and
-
(i) in relation to ChapterXII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark;
and
(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted use, to use the mark whether with or without any indications of the identity of that person, and includes a certification trade mark or collective mark.
23. The above definition makes it clear that the primary purpose of a trade mark is to indicate the source of the goods/services that are being sold in the market. Wherever, there is confusion over the source of the goods/services or there is an attempt to deceive the buyers about the source of the goods/services, by use of an identical or similar Trade mark, the law would assist the proprietor of the trade mark to protect his identity as the only supplier of the said goods/services.
24. A seller/supplier of goods/services, over a period of time, by dint of hard work and good business practices gains a name in the market, and among the buyers, that his goods/services have a certain assurance as to quality. The seller, to encash on the goodwill created, places a distinct or distinguishing mark on his goods/services to enable the buyer to know that he is the source of the goods or services being 10 RRR,J CMA.No.209 of 2019 offered. Over time, this mark, which is called a trademark, by usage and acceptance in the market, becomes an easy way for buyers to identify the goods/services of the proprietor of the trade mark. Another way for such a trade mark to come into existence is when, a seller with the intention of ensuring high quality or other special features in his goods/services, creates a mark and registers the same to protect the future goodwill his goods/services will generate. As the purpose of the Trademark is to distinguish the goods/services of the proprietor, the trademark must be distinctive and recognisable as the trademark of the proprietor.
25. Other sellers by inadvertence or by deliberate design, may choose to place identical or similar marks on their goods or services. This could cause the buyer, genuinely believing that the goods of the Defendant are the goods of the Plaintiff, to the purchase goods/services of the Defendant, which would cause loss, to the Plaintiff, in terms of loss of sale as well as reputation if it is found that the purchased goods/services are not of the quality to which buyers are accustomed when they purchase goods/services of the Plaintiff.
26. In such situations, the Act provides for relief to the Proprietor of the Trademark by way of an action for infringement of Trademark or an action of passing off. Both are actions to protect trademark but there are certain significant differences between the two actions.
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27. What would amount to infringement is defined under section 29 of the Act, which is extracted below:
Section 29. Infringement of registered trademarks:
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of :
(a) its identify with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which:
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade 12 RRR,J CMA.No.209 of 2019 name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he__
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by an advertising of that trade mark if such advertising:
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to the distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.
28. As can be seen from the definition of "Infringement" there would be a case of infringement where there is similarity in the trade mark or where trademarks are identical, leading to confusion in the mind of the buyer that the goods being purchased by him under the offending trade mark are the goods being produced or sold by the proprietor of the original trade mark. In cases where the trademarks are not identical but have 13 RRR,J CMA.No.209 of 2019 some similarity, the test of infringement is the same as in an action for passing off, in other words, the test of the likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing of actions.
29. As far as passing off is concerned, the same has not been defined under the Act and its meaning and ambit has to be understood from various judicial pronouncements. The House of Lords, in the case of Reckitt & Colman v. Borden9, had adverted to the three components of passing off in the following words:
"The law of passing off can be summarized in one short general proposition - no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such action has to prove in order to succeed. These are 3 in number:
First, he must establish a goodwill or reputation attached to the goods or services which he supplies, in the mind of the purchasing public by association with the identifying get-
up (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognized by the public as distinctive specifically of the plaintiff's goods or services.9
(1990) RPC 341 (HL) ( paras 16-67, 16-77) 14 RRR,J CMA.No.209 of 2019 Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that the goods or services offered by him are the goods or services of the plaintiff.
Thirdly, he must demonstrate that he suffers or in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or service is the same as the source of those offered by the plaintiff."
30. Put another way, the plaintiff has to demonstrate that (a) the plaintiff has acquired goodwill, in the market, for goods/services sold in the market under the trademark and (b) the defendant has used a trademark which will cause deception or confusion in the minds of the buyers or at the very least sought to make a representation about the source of goods which is false and this has caused or is likely to cause buyers to buy the goods/services of the defendant under the impression that these are the goods/services of the plaintiff. This would require the Plaintiff to adduce proof relating to his sales , the reputation that the plaintiff has acquired by such turnovers and the identification, by the buyers, of the goods/services of the plaintiff through the trademark. Unless this factual foundation is laid, by way of pleading and evidence, the Plaintiff cannot expect relief from the courts.
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31. The primary question, shorn of the peripheral issues, that generally needs to be answered by the court in a trademark case, filed as an action of passing off or an action for infringement, is this:
Whether a buyer would get confused between the goods of the Defendant and the plaintiff because of the usage of the offending trademark by the defendant.
32. Coming to the facts of the case, the main suit and the interlocutory applications have been filed both as an action for passing off and as an action for infringement. As far as the action for passing off is concerned, the Plaintiff/respondent herein has not chosen to produce any evidence of the quantum and length of sales, the reputation and goodwill built up by the plaintiff with the buyers of such products in Chattisgarh or elsewhere. There is no pleading that the Plaintiff/Respondent herein is selling it's products in Chattisgarh or that it's trademark is now considered by the buyers in Chattisgarh to be source of excellent quality. In the absence of any of these facts, the action for passing off cannot be looked into and would fail.
33. The action by the plaintiff/respondent herein for infringement of trademark remains for consideration. In an action, for infringement, the plaintiff has to demonstrate that his trademark is registered; the trademark of the defendant is similar enough to the trademark of the plaintiff, to create confusion in the minds of the buyers; the trademarks of the plaintiff and the defendants are in relation to the same category 16 RRR,J CMA.No.209 of 2019 of goods; and the use of the trademark by the defendant is unauthorised. In the present case the trademark of the plaintiff is registered, both the parties are selling goods which are falling in the same category. The only question that remains is whether they are creating confusion in the minds of the buyers.
34. The claim of the plaintiff/respondent herein is that the plaintiff/respondent herein has a trade mark in the name "Surya". The word "Surya" is a generic word and is a word which is used to connote the "Sun". In these circumstances, the plaintiff/respondent herein cannot contend that he has a trade mark on the name "Surya". In a similar situation, the Hon'ble High Court of Delhi in the Judgment reported in Surya Agro Oils Ltd Vs Surya Coconut Oil Industries10 and Rajeev Malhotra Vs Amit Home 11had held that the word "Surya" cannot be monopolised by any person. However, in the present case, the contention of the plaintiff/appellant herein is that the mark is "Surya" written in a specific style with a specific foreground and background.
35. Even though, there cannot be a trade mark in the name "Surya" there could always be a trade mark in a particular stylistic way of using the word "Surya". In the present case, the trademarks exhibited by the plaintiff/respondent herein had been the words "Surya Cem or Surya Agriline" etc. Therefore, 10 AIR 1995 Delhi 72 11 1996 (16) PTC 704 (Del) 17 RRR,J CMA.No.209 of 2019 the trade mark would have to be construed as a collocation of both the words Surya and Cem or Surya Lime or mortar etc.
36. Keeping the aforesaid in mind, a perusal of the trade mark of the plaintiff/respondent and the trade mark of the defendant/appellant would show that there are differences in the manner in which the word "Surya" is depicted in these two trademarks. Further, the trade mark of the plaintiff/respondent herein is always associated with a rising sun in the background with stylised Sun rays emanates from the Sun whereas the trade mark of the defendant/appellant herein shows the word "Surya" being placed under stylised roof of a hut or house. Further, there is a difference in the manner in which, the word "Surya" is written in both these trademarks. In the present case, the trade mark which is sought to be enforced relates to product of white wash. The trade mark of the plaintiff/respondent herein is "Surya Cem" whereas the trademarks of the defendant/appellant herein show the words "Surya Blue, Surya Ujala and Surya Astha". The other words used are "Surya Magical white".
37. In these circumstances, it cannot be said that the trademarks of the plaintiff and the defendant are identical or totally similar. However, the Hon'ble Supreme Court in the case of Ruston & Hornsby Ltd Vs Zamindara Engineering Company12 had held that in any action for infringement where 12 AIR 1970 SC 1649 18 RRR,J CMA.No.209 of 2019 the defendant's trade mark is not the exact mark on the register but something similar to it, the test of infringement is the same as in an action for passing of in other words, the test of the likelihood of confusion or deception arising from similarity of marks is the same both in infringement and in passing of actions.
38. This would bring us to the question as to what would be the test for ascertaining the likelihood of such confusion. In Parle Products (P) Ltd. Vs J. P. & Co. Mysore13, the Hon'ble Supreme Court had held as follows:
"In order to come to the conclusion whether one mark......"
39. As can be seen from the above discussion, there are dissimilarities between the two trademarks Even though, the marks are not identical, it cannot be said that there is no similarity between the marks. The test to be applied for deciding this question would be to look at it from the eyes of the average buyer who would be looking to buy the product and try and visualise whether such a buyer would get confused between the two marks. In the present case, there is a possibility of a buyer going to the shop and asking for Surya cem and get confused by the mark of the defendant and accept the product of the defendant as it would be sold as Surya Blue or Surya ujala. As held by the High Court of Delhi in the case 13 AIR 1972 SC 1359 :: (1972) 1 SCC 618 ( page 489 of the book) 19 RRR,J CMA.No.209 of 2019 of Surya Agro Oils Ltd Vs Surya Coconut Oil Industries14, it would have to be held that there is every likelihood of members of the general public or buyers of the products in question being confused and the plaintiff/appellant herein would be entitled to an injunction as granted by the trial Court.
40. Before parting with the case, it would be necessary to observe that all observations made in this order are only prima facie observations and the trial Court shall not take any of these observations into account while dealing with the suit.
41. In these circumstances, the C.M.A is dismissed without costs.
Miscellaneous Petitions, if any, pending in this C.M.A shall stand closed.
__________________________________ JUSTICE R.RAGHUNANDAN RAO Date : 20-11-2020 RJS 14 AIR 1995 Delhi 72 20 RRR,J CMA.No.209 of 2019 THE HON'BLE SRI JUSTICE R.RAGHUNANDAN RAO C.M.A.No.209 of 2019 Date : 20-11-2020 RJS