Bombay High Court
American Home Products Corporation And ... vs Soul Marketing Pvt. Ltd. And Ors. on 5 June, 2002
Equivalent citations: 2002(4)BOMCR426, 2002(3)MHLJ673
Author: P.V. Kakade
Bench: P.V. Kakade
JUDGMENT P.V. Kakade, J.
1. The plaintiffs have filed this notice of motion seeking certain reliefs against the defendants in the said suit wherein it is averred that the plaintiffs are the Corporation incorporated under the Laws of the State of Delaware and have their principal place of business in United States of America. They are manufacturers of and do business, inter-alia, in medicinal, pharmaceutical preparations, toilet preparations and cosmetics. The plaintiff No. 2 is a Limited Company incorporated under the Companies Act, 1956 and has its office at Bombay, carrying on business of manufacture and sale of medicinal, pharmaceutical preparations, toilet preparations and cosmetics.
According to the plaintiffs, the 1st defendants are distributors of and sell cosmetic products. The 2nd defendant is the Manager/Principal Officer of the 1st defendants. The 3rd defendants are manufacturers of the cosmetics which are marketed by the 1st defendants. According to the plaintiffs, they are registered proprietors in India and abroad of various Trade Marks in respect of medicinal and pharmaceutical preparations, toilet preparations and cosmetics. They are registered proprietor in India of the Trade Mark "Anne French" bearing No. 10446, dated 7.1.1943 registered in respect of toilet lotions, toilet waters, perfumery, lipstick, lip salve, rouge, toilet oatmeal, toilet creams, toilet essences, toilet preparations for hair, toilet preparations for teeth and for artificial dentures, toilet powders, toilet preparations for eyebrows and eyelashes, soaps, etc. Their said manufactured articles fall in Class-3 under the Trade & Merchandise Marks Act, 1958.
2. It is further alleged that, in April, 2000 the plaintiffs came to know that the defendants had started manufacturing and selling various cosmetics, such as, lipsticks, nail polish, compact powder under the mark Annex French and/or Annex which was a flagrant infringement of 1st plaintiffs registered Trade Mark Anne French bearing No. 10446, dated 7.1.1943. According to the plaintiffs, defendants word mark Annex French and/or Annex is visually, phonetically and structurally identical with or deceptively similar to the registered Trade Mark Anne French of the plaintiffs which constitutes an infringement of the proprietory rights of 1st plaintiffs. It is further submitted that the defendants are using word mark Annex French and/or Annex which is deceptively similar to that of the plaintiffs Trade Mark Anne French and the defendants are likely to pass off the defendants cosmetics as and for those of the plaintiffs cosmetics.
For these purposes, the notice of motion is filed inter-alia claiming injunction against the defendants from using in any manner whatsoever the word mark Annex French and/or Annex, which is deceptively similar to the Trade Mark Anne French of the 1st plaintiffs and also for appointment of the Court Receiver and other ancilliary reliefs.
3. The notice was issued to the defendants, to which they have filed the reply. This Court, by order dated 19th October, 2000 considered the issue at ad-interim level and came to the conclusion that partial ad-interim relief was required to be granted to the effect that the defendants were restrained from marketing any product under the word mark Annex French and were directed to dispose of their 6346 bottles of nail polish under the word mark Annex French within four months from the date of the order. However, so far as work mark Annex was concerned, this Court came to the conclusion that, on the basis of available material no case was made out for any ad-interim relief in that regard and, therefore, the ad-interim relief in respect of word mark Annex was refused.
4. On this back ground, the notice of motion came up for final hearing. I have heard the learned counsel for both parties and perused the affidavits filed by them in support of their respective contentions.
It is the basic submission made on behalf of the plaintiffs that word mark Annex is visually, phonetically and structurally identical with or deceptively similar to the registered Trade Mark Anne French of the plaintiffs and, therefore, there was clear infringement of the Trade Mark of the plaintiffs. It is also submitted that, by making use of the said Trade Mark Annex French or Annex, the defendants are passing off or likely to pass of their goods as the goods manufactured by the plaintiffs especially when the cosmetics manufactured by both the companies are available in all sorts of shops, such as, General Provision Stores, Chemists, etc. and the rival cosmetics of the plaintiffs and defendants are likely to be displayed over the same counter.
On the other hand, it was urged on behalf of the defendants that, defendant No. 3, sometimes in the year 1993, independently conceived, invented and adopted Trade Mark Annex for use in respect of cosmetcs preparations being goods falling in Class-3 of the Fourth Schedule under the Trade and Merchandise Marks Rules, 1959. According to the defendants, they had also conducted market survey to know if any deceptive or similar products existed. It is also the case of the defendants that, after the order of this Court dated 19th October, 2000 they have discontinued and withdrawn their nail polish product which was marketed as Annex French and, therefore, they have already complied with the directions of the Court and now they are using the mark Annex on their range of products and not Annex French, as alleged by the plaintiffs. The defendants have further denied that there is any deceptive similarity or likelihood of confusion while both the rival products are displayed for the sale. They have also denied that they are passing off their products as that of manufactured on behalf of the plaintiffs.
5. In the course of their argument, both the parties sought to put reliance on various rulings of Supreme Court as well as High Courts. However, in my view, the latest law on the subject is provided by the ruling of the Apex Court in the case of Cadila Health Care Ltd. v/s Cadila Pharmaceuticals Ltd., . The Supreme Court has laid down certain guidelines under the relevant law and it is held that the test to determine the deceptive similarity is the similarity and not the dissimilarity between the competing marks. Phonetic similarity is not to be ignored when the competing words are written differently. Moreover, the question has to be approached from the point of view of an Indian of average intelligence and imperfect recollection. The Apex Court has further provided that, in an action for passing-off on the basis of unregistered Trade Mark generally for deciding the question of deceptive similarity, the following factors are to be considered:
(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works.
(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing of the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods.
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
It is further observed that the weightage is to be given to each of the aforesaid factors depending upon facts of each case and the same weightage cannot be given to each factor in every case.
6. Therefore, looked into from the focus provided by these guidelines, the question arises whether the defendants word mark Annex is deceptively similar to the plaintiffs Trade Mark Anne French. In my considered view, the vital aspect in this comparison is the word French. In other words, when the word French is removed, then element of deceptive similarity has to be wiped off and there cannot be any confusion in the mind of customer or prospective consumer even if both the products are seen on the counter of the Chemist or General Provision Store as alleged on behalf of the plaintiffs. No doubt that both the parties are dealing in toiletries and cosmetics and the customers in general would be the same who would compare the products. However, in this regard, it cannot be overlooked that plaintiffs Trade Mark Anne French has built goodwill and reputation since the year 1943 and, therefore, it is absolutely not likely that their standard customers would be confused by defendants product under the brand name Annex, especially when the word French is missing. Therefore, I have no doubt whatsoever at this stage that there is any deceptive similarity in the word mark Anne French and Annex so as to issue restrainment orders as prayed for by the plaintiffs.
6. In the result, the notice of motion is partly allowed.
Ad-interim relief granted earlier by order dated 19th October, 2000 by this Court, is made absolute. However, other reliefs claimed by the plaintiffs in the notice of motion, stand rejected.
Notice of motion disposed of accordingly.