Calcutta High Court (Appellete Side)
Kapil Dev Gupta vs R. A. Perfumery Works Private Limited on 25 November, 2022
Author: Harish Tandon
Bench: Harish Tandon
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IN THE HIGH COURT AT CALCUTTA
CIVIL APPELLATE JURISDICTION
COMMERCIAL DIVISION
Present:
THE HON'BLE JUSTICE HARISH TANDON
&
THE HON'BLE JUSTICE SHAMPA DUTT (PAUL)
F.M.A.T 173 OF 2022
WITH
CAN 1 OF 2022
Kapil Dev Gupta
Vs.
R. A. Perfumery Works Private Limited
Appearance:
For the Appellant : Mr. Rivu Dutta, Adv.
For the Respondent : Mr. Subhasis Sengupta, Adv.
Ms. Sushmita Ghosh, Adv.
Mr. Balarko Sen, Adv.
Mr. Parashar Baidya, Adv.
Judgment On : 25.11.2022
Harish Tandon, J.:
The instant appeal arises from an Order no. 20 dated 17.9.2021 passed by the Commercial Court in Title Suit no. 9 of 2020 disposing an 2 application for injunction restraining the appellants or anyone claiming on his behalf from passing of his goods and business as that of the respondent by using the mark "GREEN SIGNAL" and/or any other mark which is identical with and/or deceptively similar to the respondents trade mark "SIGNAL" till the disposal of the suit.
There does not appear to be any dispute that the respondent is using the said mark "SIGNAL" for manufacturing, trading and selling of ZARDA since 1948. Initially, the said mark was used by a partnership firm in the name styled "R. A. Perfumery Works Pvt. Ltd." by two persons namely, Md. Israil and Md. Alam. In order to protect the said mark which the said partnership firm perceived to have acquired good reputation and goodwill in the market, an application was made for registration of the said mark "SIGNAL" under Clause 34 since its use i.e. 23rd July, 1948 and the registration was obtained. Subsequently, one of the partners namely Md. Alam retired from the said partnership firm on and from 11th April, 1989 and the said partnership firm was reconstituted by introduction of one Nusrat Parveen. Thereafter, the said partnership firm decided to alter and modify the nature of their business and decided to manufacture and dealing in ZARDA as a General Merchant and Commission Agent which would be evident from the reconstituted partnership deed entered upon 24th March, 1993. Later on, the said partnership firm was converted into a private limited company w.e.f. 1st July, 1998 and the assets, liabilities as well as the goodwill, including the intellectual properties be transferred to the newly constituted private limited company.
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It is alleged that an application for change of the name in the Trade Mark Registration Certificate was applied under Form 24 which was accepted and necessary orders were passed by the Trade Mark Registry. The plaintiff thus claimed the exclusive right over the mark "SIGNAL" which have acquired distinctiveness in relation to ZARDA which is commonly known as chewing tobacco having acquired great reputation and the goodwill in the market not only on the product but its quality and the fragrance used therein. The respondents claimed to have sold its product under the trade name "SIGNAL", "SIGNAL 350", "SIGNAL 127", "SIGNAL 364" and "SIGNAL ZARDA" in the distinctive packaging containing the unique and prominent colour scheme, colour combination and the design of the logo prominently showing the mark "SIGNAL". The artistic work both on the container as well as the packaging is alleged to be an original artistic work within the meaning of the Copyrights Act, 1957 and being a prior user and adoption of the said artistic work, the respondent acquired a right under the Copyright Act as well.
The appellant is also the registered proprietor of the trade mark "GREEN SIGNAL" in respect of a tobacco, chewing tobacco and smokers' articles under Clause 34 and dealing the said product since 2017. It is a specific stand of the appellant that since its adoption and user the trade mark "GREEN SIGNAL" have acquired a high reputation in the market and its exclusivity associated with the appellant and is well known in the market. It is further alleged that there has been a gross suppression of the fact that one Ramzaan Ali filed an application before the Trade Mark 4 Registry to delete the name of the trade name i.e. R.A. Perfumery Works Private Ltd. and, therefore, the exclusivity over the said mark has been acquiesced and/or abandoned. It is further averred that adoption of the mark "GREEN SIGNAL" is honest and the trader name depicted therein coined after the name of the father of the proprietor of the said trade mark. It is further alleged that there is no similarity in the visual descriptions printed on the container as well as the packaging and there is no likelihood of deception or creating confusion in the mind of the bona fide purchaser on the distinctiveness of the appellant's product.
In a suit filed by the respondent, the application for injunction was taken out and the Trial Court granted the injunction against the appellant after noticing the relevant provisions of the Act as well as the judicial pronouncements with the categorical finding that there has been a many things which are common per se and the mark which is used is phonetically deceptive in nature.
The Counsel for the appellant is critical on the observations of the Trial Court that the basic principles required for granting injunction in a passing off action has been completely ignored and/or overlooked and/or misplaced. According to the learned Counsel for the Appellant neither there is a similarity in the visual getup nor there is any similarity in the packaging and the logo used therein and, therefore, mere using the word "SIGNAL" with the prefix cannot be said to be phonetically similar when it does not aim to deceive the bona fide purchaser and/or consumer because of its unique getup, colour combination and different logo. According to him, the 5 test in passing off action should be first to find out the similarities than of a dissimilarity. It is arduously submitted that the trader name by the use of the word "Perfumery" is common in the trade denoting and distinguishing the product and, therefore, no one can acquire any exclusive right of user of such common word prevalent in the trade.
On the other hand, the learned Counsel for the respondent submits that the mark "SIGNAL" has acquired a good reputation and goodwill in the market and any word prefixing or suffixing the said mark shall create or likely to create confusion in the mind of a bona fide purchaser. It is further submitted that if a mark has acquired the distinctiveness, such mark cannot be allowed to be used; rather to be protected by an order of the Court. It is further submitted that even if the appellant has obtained the registration of a trade mark "GREEN SIGNAL" yet it does not put any fetter in maintaining the passing off action under Section 27(2) of the Trade Marks Act, 1999. It is thus submitted that the respondent is a prior user of the mark "SIGNAL" and it is undeniable that a subsequent user by prefixing a word "GREEN" before the word "SIGNAL" have a dishonest intention to use the said mark and pass off his goods that of the respondent. The reliance is placed upon a judgment of the Supreme Court in Laxmikant V. Patel v. Chetanbhai Shah & Anr. reported in (2002) 3 SCC 65 for the proposition that any word prefixing the distinctive mark shall not create any difference in a passing off action. Such mark has acquired distinctiveness. It is strenuously argued that the injunction being a discretionary relief if 6 exercised in a proper manner, the Appellate Court should not interfere with such order.
On the backdrop of the aforesaid facts, whether the order of injunction passed by the Commercial Court, even in exercise of discretion can be interfered with on the ground of perversity, lack of judicial exercise and misinterpretation of the statutory provisions and the ratio laid down in the various judgments of the Courts.
It is not in dispute that the respondent claimed to have been using the said mark "SIGNAL" prior to the user by the appellant. Though the appellant is very much critical on the assertion of the respondent that the said mark "SIGNAL" is being used since 1948 yet we can safely proceed on the admission on the part of the respondent that the same may have been used since 1982. That itself makes respondent the prior user on the fact that the appellant itself admitted to have adopted the mark "GREEN SIGNAL" since the year 2017 upon obtaining the registration of the said trade mark. It is no longer res integra that the action of passing off is maintainable against the proprietor of the trade mark on the premise of being prior user. It is essentially a suit based on a passing off action and, therefore, the principles underlying the passing off action must pass the muster of the test laid down therefor before the Court passes an order of injunction. The first and foremost test in a passing off action is to ascertain whether the mark used by the subsequent user is deceptively similar to that of the prior user and create or likely to create the confusion in the mind of a man of imperfect recollection that the goods of subsequent user is that of the prior user. In 7 case of an injunction which are to be decided on the well known parameters yet in passing off action one of the test would be whether the subsequent user adopting the identical or similar mark intended to deceive or to create a confusion in the mind of a common man even if such adoption is honest and innocent.
The definition of the trade mark in Trade Marks Act, 1999 can be usefully applied and the meaning has been assigned thereto as a mark capable of being represented graphically and distinguishing the goods and service of one person from those of others. Such definition is wide in the sense that it includes amongst other things the name or the words as well. The name may be used in a grammatical manner as well in an abbreviated form. Unfortunately, a common trend has developed in the trade and/or business on the adoption of the same or identical mark in order to sell his goods or delivered the services under a trade name or style or using the mark with similar words prefix or suffix thereto with an intent to achieve a rapid sell of the goods or the services causing injury to the goodwill and reputation of the other acquired by the said prior user from his labour and skill which he put into it.
The word "SIGNAL" has acquired a distinctiveness having been used much prior in time that of the appellant not as a part of the trade name but also the recognition of the respondent as a trader of repute in the mark in the specified class of goods. The enlightening observation of the Apex Court in Laxmikant V. Patel (Supra) can be usefully applied in this regard wherein it is held:
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"7. Though there is overwhelming documentary evidence filed by the plaintiff in support of his plea that he has been carrying on his business in the name and style of Muktajivan Colour Lab since long we would, for the purpose of this appeal, proceed on the finding of fact arrived at by the trial court and not dislodged by the High Court, also not seriously disputed before this Court that the plaintiff has been doing so at least since 1995. Without entering into controversy whether the defendants had already started using the word "Muktajivan" as a part of their trade name on the date of the institution of the suit we would assume that such business of the defendants had come into existence on or a little before the institution of the suit as contended by the defendants. The principal issue determinative of the grant of temporary injunction would be whether the business of the plaintiff run in a trade name of which "Muktajivan" is a part had come into existence prior to commencement of its user by the defendants and whether it had acquired a goodwill creating a property in the plaintiff so as to restrain the use of the word Muktajivan in the business name of a similar trade by a competitor i.e. the defendants." 9
In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. reported in (2020) 5 SCC 73 the Apex Court succinctly stated the broad outline in a passing off action in the following:
"18. We are unable to agree with the aforesaid observations in Dychem case. As far as this Court is concerned, the decisions in the last four decades have clearly laid down that what has to be seen in the case of a passing-off action is the similarity between the competing marks and to determine whether there is likelihood of deception or causing confusion. This is evident from the decisions of this Court in the cases of National Sewing Thread Co. Ltd. [AIR 1953 SC 357], Corn Products Refining Co. case [AIR 1960 SC 142: (1960) 1 SCR 968], Amritdhara Pharmacy case [AIR 1963 SC 449], Durga Dutt Sharma case [AIR 1965 SC 980] and Hoffman-La Roche & Co. Ltd. case [AIR 1965 SC 980]. Having come to the conclusion, in our opinion incorrectly, that the difference in essential features is relevant, this Court in Dychem case [(2000) 5 SCC 573] sought to examine the difference in the two marks "PIKNIK" and "PICNIC". It applied three tests, they being: (1) is there any special aspect of the common feature which has been copied? (2) mode in which the parts are put together differently i.e. whether dissimilarity of the part or parts is enough to make the whole thing 10 dissimilar, and (3) whether, when there are common elements, should one not pay more regard to the parts which are not common, while at the same time no disregarding the common parts? In examining the marks, keeping the aforesaid three tests in mind, it came to the conclusion, seeing the manner in which the two words were written and the peculiarity of the script and concluded (at SCC p. 597, para 39) that "the above three dissimilarities have to be given more importance than the phonetic similarity or the similarity in the use of the word PICNIC for PIKNIK".
19. With respect, we are unable to agree that the principle of phonetic similarity has to be jettisoned when the manner in which the competing words are written is different and the conclusion so arrived at is clearly contrary to the binding precedent of this Court in Amritdhara case [AIR 1963 SC 449] where the phonetic similarity was applied by judging the two competing marks. Similarly, in Durga Dutt Sharma case [AIR 1965 SC 980] it was observed that: (AIR p. 990, para 28) " In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiffs and the defendant's mark is so close 11 either visually, phonetically or otherwise and the court reaches the conclusion that there is an limitation, no further evidence is required to establish that the plaintiff's rights are violated." Though the judgment rendered in Cadila Health Care Ltd. (Supra) is in relation to a medicinal and/or pharmaceutical products but the basic ingredients for granting an injunction in a passing off action is required to be recapitulated from the said report. The Apex Court highlighted the concept of the infringement of the trade mark and/or passing off from the decision of the English Courts to have its applicability in the Indian environment. The Apex Court held that the English Law principles based upon the society prevalent in the England where the literacy is very high cannot be adopted and applied without any caveat to an Indian society where the literacy is very low. It is highlighted that India is a country united with diversity and different languages are spoken in different parts of the country and the knowledge of English language may be perceived to be abysmally low. The Apex Court further observed that in the perspective of the Indian society and the law, the passing off action has to be decided keeping in mind where the purchaser of such goods in India may not have a perfect recollection of the English words in which the trade mark is written and a slight difference may not have created a gulf of difference as it may sound phonetically the same. It is thus held that if the two products are likely to create a confusion that one product is that of another either due to 12 similarity in the marks or other surrounding factors, it is a fit case where the Court should protect the prior user of the mark in the following:
"33. The decisions of English Courts would be relevant in a country where literacy is high and the marks used are in the language which the purchaser can understand. While English cases may be relevant in understanding the essential features of trade mark law but when we are dealing with the sale of consumer items in India, you have to see and bear in mind the difference in situation between England and India. Can English principles apply in their entirety in India with no regard to Indian conditions? We think not. In a country like India where there is no single common language, a large percentage of population is illiterate and a small fraction of people know English, then to apply the principles of English law regarding dissimilarity of the marks or the customer knowing about the distinguishing characteristics of the plaintiff's goods seems to overlook the ground realities in India. While examining such cases in India, what has to be kept in mind is the purchaser of such goods in India who may have absolutely no knowledge of English language or of the language in which the trade mark is written and to whom different words with slight difference in spellings may sound phonetically the same. While dealing with 13 cases relating to passing off, one of the important tests which has to be applied in each case is whether the misrepresentation made by the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product for another due to similarity of marks and other surrounding factors. What is likely to cause confusion would vary from case to case. However, the appellants are right in contending that where medicinal products are involved, the test to be applied for adjudging the violation of trade mark law may not be on a par with cases involving non-medicinal products. A stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer. While confusion in the case of non-medicinal products may only cause economic loss to the plaintiff, confusion between the two medicinal products may have disastrous effects on health and in some cases life itself. Stringent measures should be adopted specifically where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to the identity of the product itself could have dire effects on the public health.14
By passage of time test of similarities over the dissimilarities has been accepted and applied in the intellectual property rights or more particularly, in a trade mark dispute. There is no fetter on the part of the Court to adopt the principle of armchair by keeping the two goods before it and to find out the similarities in the trade marks and to ascertain whether there is any chance of deception and/or confusion that may be created in the mind of a man of imperfect recollection. In the event there is an overwhelming similarity in both the trade marks and the dissimilarities are insignificant, such product is likely to create confusion that one is passing the goods of the another as it is a good of the prior user who acquired the reputation and goodwill in the market.
In the instant case, the word "GREEN" prefixed with the well known mark "SIGNAL" acquired by the respondent shall be capable of creating a confusion in the minds of the consumer for the simple reason that the ZARDA or the chewing tobacco is primarily used in such part of the country where imperfect recollection can be perceived. The chewing tobacco is prevalent in the section of the societies where English language is not known nor the difference in the spelling or by prefixing a word can be said to be different. Even if the colour combinations used in the container as well as the packaging with the different logo cannot make the two products distinct from another as the trade mark "SIGNAL" has acquired a distinctiveness and phonetically used in the same manner. In the perspective of the same when we have held that the word "SIGNAL" as acquired distinctiveness 15 whether the order impugned in the instant appeal is amenable to be interfered with.
The injunction is a discretion exercised by the Court on the well known parameters and the Appellate Court should be slow and circumspect in interfering with such discretionary order unless such discretion, so exercised, is perverse and not judiciously made. The support can be lent to the observations made in Laxmikant V. Patel (Supra) wherein the Apex Court held:
"17. We are conscious of the law that this Court would not ordinarily interfere with the exercise of discretion in the matter of grant of temporary injunction by the High Court and the trial court and substitute its own discretion therefor except where the discretion has been shown to have been exercised arbitrarily or capriciously or perversely or where the order of the courts under scrutiny ignores the settled principles of law regulating grant or refusal of interlocutory injunction. An appeal against exercise of discretion is said to be an appeal on principle. The appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the court below 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 16 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 (see Wander Ltd. v. Antox India (P) Ltd. and N.R. Dongre v. Whirlpool Corpn.). However, the present one is a case falling within the well- accepted exceptions. Neither the trial court nor the High Court have kept in view and applied their mind to the relevant settled principles of law governing the grant or refusal of interlocutory injunction in trade mark and trade name disputes. A refusal to grant an injunction in spite of the availability of facts, which are prima facie established by overwhelming evidence and material available on record justifying the grant thereof, occasion a failure of justice and such injury to the plaintiff as would not be capable of being undone at a later stage. The discretion exercised by the trial court and the High Court against the plaintiff, is neither reasonable nor judicious. The grant of interlocutory injunction to the plaintiff could not have been refused, therefore, it becomes obligatory on the part of this Court to interfere."
In view of the discussions made hereinabove, we do not find that it is a fit case where the interference is called for. The appeal is thus dismissed.
No order as to costs.
17Urgent photostat certified copies of this judgment, if applied for, be made available to the parties subject to compliance with requisite formalities.
I agree. (Harish Tandon, J.) (Shampa Dutt (Paul), J.)