Madras High Court
2000 (20) Ptc 595 (International ... vs Ibs Technologies Private Limited) on 3 August, 2011
Author: S.Rajeswaran
Bench: S.Rajeswaran
IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED: 03/08/2011 CORAM THE HON'BLE MR. JUSTICE S.RAJESWARAN A.Nos.1313 and 1314 of 2010 in A.Nos.1099 and 1100 of 2009 in C.S.No.952 of 2009 ORDER
Application No.1313 of 2010 has been filed to vacate the order of interim injunction granted in O.A.No.1099 of 2009 in C.S.No.952 of 2009 dated 28.10.2009.
2. Application No.1314 of 2010 has been filed to vacate the order of interim injunction granted in O.A.No.1100 of 2009 in C.S.No.952 of 2009 dated 28.10.2009.
3. Application No.1099 of 2009 has been filed to grant an interim injunction restraining the respondent by himself or his men, servants, agents, franchises, successors in interest, representatives or any of them from in any manner infringing the Applicant's registered service and/or Trademark "MURUGAN IDLI SHOP" by use of the service and/or Trade marks "SRI MURUGAN IDLI SHOP" or any mark deceptively similar to the Applicant's registered service/Trade Mark or by use of identical or deceptively similar trading style or in any other manner whatsoever.
4. Application No.1100 of 2009 has been filed to to grant an interim injunction restraining the defendant by himself or his men, servants, agents, franchises, successors in interest, representatives or any of them from in any manner infringing the copyright of the plaintiff by use of the trade marks and/or trading style "SRI MURUGAN IDLI SHOP" or any mark deceptively similar to the plaintiff's registered copy right "MURUGAN IDLI SHOP" or in any other manner whatsoever.
5. Application Nos.1099 and 1100 of 2009 were filed by the plaintiffs in C.S.No.952 of 2009 for the aforesaid prayers.
6. C.S.No.952 of 2009: The case of the plaintiff, as stated in the plaint, is as follows:
The plaintiff is a registered Proprietor of "Murugan Idly Shop" under No.1279214 in Clause 42 in respect of providing food and drinks, running a Hotel, Restaurants and Food Outlets. The registration is in currency. Apart from this, the plaintiff had also obtained registration under Clause 30 under No.1207351 for the application dated 18.06.2003 in respect of Idly, Vada, Dosa, Uthappam, Chapathi. The plaintiff also obtained Copy Right for the artistic work associated with the Trade Mark "MURUGAN IDLI SHOP". The Constitution of the plaintiff has been changed from Partnership comprising of Mr.S.Manoharan and Mrs.Umamaheswari as partners to proprietory concern and necessary steps have been taken to amend the records of the Trade Mark Registry to this effect. Mr.Manoharan, the erstwhile partner is the present proprietor of the plaintiff. The plaintiff has been trading under the name of 'MURUGAN IDLI SHOP' from 1993. Prior to this, his mother Mrs.Nayagam started a small Idly Shop in the pavement in the West Masi Street, Madurai. At present, the plaintiff is having nearly a dozen branches in various places located in the cities of Chennai, Madurai and Singapore. They have plans to open up other outlets in the Middle East and other places also. The sales turnover of the plaintiff is about Rs.35 Crores per annum and the advertisement expenditure amounts to Rs.25 lakhs a year. The plaintiff's shop became very popular not only because of the quality Idlies supplied by them, but also the varieties of chutinies provided by them. Besides that, they have a common layout with a uniform Rack for storage of their food items. They are also known for their other varieties of items, namely, Jigardhanda, Sweet Pongal, Idly, Dosa, etc. The software professionals and people from North India staying in Madras are the frequent visitors to their shop. In fact, people are very familiar with the name because of the quality and the tasteful items supplied by them. Various Local Magazines have also published articles about the plaintiff's shop and their business. Thus, the mark of "MURUGAN IDLI SHOP" has become distinctive by long usage and exclusively identified as that of the plaintiff.
7. Further, their Trade Mark and the Copy Right have been popularised by various types of advertisements in Print Media like Dina Thanthi, Dina Malar, Malai Malar, Tamil Murasu, etc., and also in the Electronic Media through Popular Channels which carry out the advertisements of the plaintiff. The Weekly Journals also carry the advertisement of the plaintiff. All these would go to show that the plaintiff has got an excellent reputation and tremendous goodwill.
8. While so, during October 2009, it has come to the knowledge of the plaintiff that the defendant had opened an Enterprise under the name and style of "SRI MURUGAN IDLI SHOP". The defendant is using the same architecture as that of the plaintiff besides serving food items such as Sweet Pongal, Pongal, Idly, Dosa, etc., with various types of chutnies in an attempt to capitalise on the goodwill and reputation of the plaintiff. The mark used by the defendant is also phonetically, structurally and visually similar to the services and trade mark of the plaintiff namely "MURUGAN IDLI SHOP". The trade mark of the defendant is thus deceptively similar to that of the plaintiff. They have started the operation only recently in the year 2009. The members of the trade and the public would certainly get confused by the trade mark of the defendant. It is a deliberate attempt of the defendant to make illegitimate profits at the expense of the plaintiff's reputation and goodwill.
9. It is the further case of the plaintiff that the defendant knowingly commenced the said business by employing four of their erstwhile employees of the plaintiff, namely, M/s.Subramaniam, Jeyamurugan, Karuppaiah and Arjun. With their help and assistance, the defendant have adopted the same service and trade mark "SRI MURUGAN IDLI SHOP" by prefixing "SRI". The people would be easily deceived by the name "SRI MURUGAN IDLI SHOP", which is phonetically, structurally similar to that of the plaintiff. Therefore, the action of the defendant is violative of the plaintiff's trade mark and copy right entitlements.
10. Any person with the average intelligence would not be able to distinguish between the plaintiff's "MURUGAN IDLI SHOP" and the defendant's "SRI MURUGAN IDLI SHOP". In fact, the plaintiff has always been protecting their marks from the infringers and a suit in C.S.No.99/2006 agianst "OM MURUGAN IDLI SHOP", Bangalore has been initiated by the plaintiff, and this Court granted an injunction and passing off in O.A.Nos.105 and 106/2006. Thereafter, the defenant therein, gave an undertaking that they would not infringe the trade mark of the plaintiff. Therefore, the plaintiff has filed the above suit for the following prayers:
a) A perpetual injunction restraining the defendant by himself or his men, servants, agents, franchises, successors in interest, representatives or any of them from in any manner infringing the Plaintiff's registered service and/or Trademark "MURUGAN IDLI SHOP" by use of the service and/or Trade marks "SRI MURUGAN IDLI SHOP" or any mark deceptively similar to the Plaintiff's registered service/Trade Mark or by use of identical or deceptively similar trading style or in any other manner whatsoever.
b) A perpetual injunction restraining the defendant by himself or his men, servants, agents, franchises, successors in interest, representatives or any of them from in any manner infringing the copyright of the plaintiff by use of the trade marks and/or trading style "SRI MURUGAN IDLI SHOP" or any mark deceptively similar to the plaintiff's registered copy right "MURUGAN IDLI SHOP" or in any other manner whatsoever.
c) The defendant be ordered to surrender to plaintiff for destruction of all name boards, men cards, packing materials, visiting cards, letterheads, printer bills, cartons, sachets and other materials bearing the infringing "SRI MURUGAN IDLI SHOP" or any mark deceptively similar to the plaintiff's registered trade mark and artistic work "MURUGAN IDLI SHOP" label.
11. Along with the suit, the above two applications namely A.Nos.1099 and 1100 of 2009 were filed for an order of interim injunction restraining the defendant from infringing the applicant/plaintiff's trade mark "MURUGAN IDLI SHOP" and from infringing the copyright of the plaintiff, as the continuous use of the defendant's trade mark "SRI MURUGAN IDLI SHOP" would cause irreparable losses and damages and also pecuniary harm to the business, reputation and goodwill of the applicant/plaintiff.
12. This Court on 28.10.2009 granted an order of injunction as prayed for in both these applications and the same is subsisting till date.
13. The defendant entered appearance through counsel and filed two applications namely A.Nos.1313 and 1314 of 2010 to vacate the order of interim injunction granted in Application Nos.1099 and 1100 of 2009 respectively in the above suit on 28.10.2009.
14. The case of the defendant in their common counter affidavit filed in support of both these applications is as follows:
Being the Devotees of Lord Muruga, they started the shop with name of the said God and there is no other ulterior motive to cheat or defraud any one. The word "Sri Muruga" is a very common name almost used by all the Trading Community in South India. Hence, nobody can claim any exclusive rights or claim for making use of the word "Sri Murugan". There are several business establishments such as "Sri Murugan Cloth Merchants", "Sri Murugan Textiles", Sri Murugan Grosseries", "Sri Murugan Furnitures", "Sri Murugan Agencies", etc. Therefore, the name of their shop "SRI MURUGAN IDLI SHOP" is an innocent adoption and no motive could be attached. The respondent is having only on restaurant in Visakapatinam and no other branches in other places. Moreover, from the averments made by the plaintiff it is evident that the plaintiff being a proprietory concern is not holding the valid trademark rights on the date of the filing of the suit. Therefore, the respondent/defendant is bonafidely using the name "SRI MURUGAN IDLI SHOP". The name adopted by the respondent will not in any way mislead the customers. Moreover, the defendant has a shop only in Visakapatinam, Andhra Pradesh, wherein the plaintiff does not have a shop at all. Therefore, their trade name and style is quite different and distinct from that of the plaintiff. Hence, no prima facie case has been made out by the plaintiff to sustain the order of injunction obtained by them and therefore, the injunction granted in both the applications are liable to be vacated forthwith.
15. A common reply affidavit has been filed to the common counter affidavit filed by the respondent/defendant to vacate the order of injunction granted in favour of the plaintiff.
16. While reiterating the averments made in the affidavit and the plaint, the plaintiff would further stated in the reply affidavit that their quality of product and quality of efficient services had connected the mark "Murugan" with his Idli Shop and thus, " MURUGAN IDLI SHOP" became a distinctive mark. The contention of the defendant that the plaintiff does not have a shop at Visakapatinam would not hold water as a registration of the trade mark of the plaintiff is for all over India and the plaintiff is also contemplating to open restaurants in the similar name in all the parts of India. Moreover, admittedly the respondent/defendant is also dealing with the same goods and serivices. Therefore, it is a deliberate attempt on the part of the defendant to take undue advantage of the reputation and goodwill created by the applicant/plaintiff and it is an absolute imitation of copy right belonging to the plaintiff. Hence, the plaintiff prayed for making the order of interim injunction granted already as absolute.
17. I have heard the learned counsel appearing for the applicant/plaintiff and the learned counsel appearing for the respondent/defendant and I have also gone through the records.
18. From the documents filed on the side of the plaintiff, it would be seen that they have obtained the Registration Certificate for "MURUGAN IDLI SHOP" on 18.06.2003. The trademark of the plaintiff has also been duly published in the Trade Mark Journal with the goods and descriptions, namely, Idly, Vada, Dosa, Uthappam, Chapathi and other preparations for human consumption and there is no area restriction shown thereon. The Registration is valid upto 18.06.2013. The plaintiff had also obtained the Trade Mark Registration Certificate in Clause 42 on 16.04.2004 for "MURUGAN IDLI SHOP". The Government of India has also issued a certificate for copy right for the artistic work of "MURUGAN IDLI SHOP" on 02.03.2006. The plaintiff also has obtained on 13.01.1994 a certificate of registration under the Tamil Nadu General Sales Tax Act in the name of Mr.Manoharan of "MURUGAN IDLI SHOP", to show that they have been in business from 1993 onwards. On 24.02.2006, the plaintiff has applied to the Registrar of Trade Marks, Bombay to record the change of proprietorship of the Registered Trade Mark with regard to name of Mr.Manoharan as the Sole Proprietorship of "MURUGAN IDLI SHOP". The plaintiff has also given proof of their advertisements made in various Print Medias regularly in the name of "MURUGAN IDLI SHOP". So also the advertisements carried out in the Print Media have also been established by filing the proof of the invoices on various journals. The plaintiff has also filed the advertisements made in various periodicals in the name of "MURUGAN IDLI SHOP". The articles in some of the papers, periodicals, both English and Tamil have also been enclosed to reiterate their stand that they have their own reputation and goodwill in the market as "MURUGAN IDLI SHOP". The various purchases and sales bills of the plaintiff produced would also show that they have been in the business since 1993, much prior to the defendant and they have been supplying and doing service in the name of "MURUGAN IDLI SHOP" from then onwards. The plaintiff has also produced the copies of the photographs of the defendant's name board "SRI MURUGAN IDLI SHOP" to show, how the defendant is dishonestly and deceptively following the trade mark of the plaintiff "MURUGAN IDLI SHOP" by prefixing the word "SRI". In view of the above materials, the learned counsel for the plaintiff prays for making the order of injunction absolute and cited the following judgments in support of his submissions:
1.2000 (20) PTC 595 (International Business Services Group (P) Ltd., and another vs. IBS Technologies Private Limited)
2.AIR 2002 SC 275 (Laxmikant V. Patel vs. Chetanbhat Shah and another) 3.2008 (37) PTC 536 (Mad) (B.Kishore Jain vs. Navaratna Khazana Jewellers) 4.2006 (2) MLJ 839 (Bala Arichandra Tex., represented by its partners and others vs. Bharat Arichandra Tex., represented by its Proprietress and others)
5.AIR 1969 MAD 126 (The Andhra Perfumery Works Joint Family Concerns vs. Karupakula Suryanarayaniah and others)
6.PTC (Suppl)(1)258 SC (K.R.Chinna Krishna Chettiar vs. Ambal and Co., Madras and another) 7.2005 (31) PTC 502 (Mad) (Gangotree Sweets and Snacks Private Limited vs. Shree Gangotree Sweets, Snacks & Savouries, Trichy) 8.2007 (35) PTC 548 (Karnataka) (Adiga's Abhiruchi and others vs. Adiga's Fast Food) 9.2005 (30) PTC 113 (Delhi) (M/s.Bikanervala vs. M/s.New Bikanerwala)
10.MANU/TN0891/2007 (S.Sudhakar and Shri Lakshmi Agro Foods Private Limited, rep. By its Managing Director, Mr.S.Sudhakar vs. S.S.P.Durairaj (Firm) and Mr.Durairaj,Person-in-charge, S.S.P. Durairaj (Firm))
19. Per contra, the learned counsel for the respondent/defendant while reiterating the averments contained in the counter affidavit submits that as a devotee of Lord Murugan, they are within the right to use the name and nobody can claim any proprietory in their name over the name of Murugan which is the most popular God in Southern India and in particular Tamil Nadu.
20. The learned counsel further contended that they have only one restaurant, that too, in Visakapatinam, Andhra Pradesh, wherein the plaintiff is not at all running any restaurant at all, it is not open to the plaintiff to go before this Court and to contend that by running the business, the defendant is infringing their trade mark and causing losses.
21. Percontra, the learned counsel for the defendant in support of his submissions relied on the following judgments:
1.AIR 1968 II MLJ 14 (Kimberly Clark Corporation vs. Bay's Chemicals)
2.AIR 1970 SC 2062 (F.Hoffimann-La Roche and Co., Ltd., vs. Geoffrey Manners and Co. Private Limited)
3.AIR 1963 SC 449 (Amritdhara Pharmacy vs. Satya Deo Gupta)
4.AIR 1984 Bombay 218 (M/s.Hiralal Prabhudas vs. M/s.Ganesh Trading Company and others)
5.AIR 1965 SC 980 (Kaviraj Pandit Durga Dutt Sharman vs. Navaratna Pharmaceutical Laboratories) 6.2006 (4) TNLJ 101 (M/s.Aravind Laboratories, 7, Chakrapani Street, West Mambalam-600 033 vs. M.a.Rahim, trading as: Jamuna Product, Karaikudi-1) 7.2010 CIJ 164 (CLJ) (M/s.N.Ranga Rao and Sons vs. Koya's Perfumery Works) 8.1998 (2) LW 646 (Indo-parma Pharmaceutical Works Ltd., having its Corporate Office at 201-203, Saffron Ambawadi, Ahmedabad-308 006 and registered office at 204, Neelkanth Commercial Centre, 2nd Floor, Shar Road, Andheri (E), Mumbai-400 048 vs. Citadel Fine Pharmaceuticals Ltd., 265, T.T.K. Road, Madras-600 018.)
22. I have considered the rival submissions carefully with regard to facts and citations.
23. Even though the issue involved in the above applications are very simple and the only question to be decided is whether the interim injunction granted in favour of the plaintiff is to be continued or not. As both the counsel took pains to argue the matter elaborately by citing a lot of judgments, I am referring to those judgments before proceeding further.
24. In 2000 (20) PTC 595 (cited supra), this Court held as follows:
"13(4) The trend of judicial opinion is that reputation or goodwill in business generally attaches with the trade name adopted by a party. Such reputation or goodwill would be protected by the Court. Copying of the name by a competitor is likely to cause an injury to its business. If a person uses a name which is likely to deceive and divert the business of someone else to him or is likely to cause confusion in the mind of the persons likely to deal with such competing business, then the impugned action or intended action would be prevented by the courts on the same principles which are applicable to ordinary cases of passing-off relating to the sale of goods. Innocence of the defendant is no defence. The law applies with more rigour when the defendant is an inanimate person such as a company and when name consists of a coined word.
15(4). If a person uses a name which is likely to deceive and divert the business of someone else to him or is likely to cause confusion in the mind of the persons likely to deal with such competing business, then the action of the defendant of the passing off would be prevented by the courts. In that context, either innocence or the bonafide use under Section 34 of the Trade and Merchandise Marks Act cannot at all be the defence. It is well settled that no company is entitled to carry on business in a manner so as to generate a belief in the minds of public that it is connected with the business of another company. As pointed out earlier, the courts have held, where there is probability of confusion in business, an injunction will be granted even though the defendant adopted the same name innocently."
25. In AIR 2002 SC 275 (cited supra), the Hon'ble Supreme Court held as follows:
"10. A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.
13. In an action for passing off it is usual, rather essential, to seek an injunction temporary or ad-interim. The principles for the grant of such injunction are the same as in the case of any other action against injury complained of. The plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction. According to Kerly (ibid, para 16.16) passing off cases are often cases of deliberate and intentional misrepresentation, but it is well-settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. Christopher Wadlow in Law of Passing Off (1995 Edition, at p.3.06) states that the plaintiff does not have to prove actual damage in order to succeed in an action for passing off. Likelihood of damage is sufficient. The same learned author states that the defendants state of mind is wholly irrelevant to the existence of the cause of action for passing off (ibid, paras 4.20 and 7.15). As to how the injunction granted by the Court would shape depends on the facts and circumstances of each case. Where a defendant has imitated or adopted the plaintiffs distinctive trade mark or business name, the order may be an absolute injunction that he would not use or carry on business under that name. (Kerly, ibid, para 16.97)."
26. In 2008 (37) PTC 536 (Mad) (cited supra), a learned judge of this Court while considering Rule 59 of the Trade Mark Rules 2002, Sections 33, 35 and 137 of the Trade Marks Act, 1999, held as follows:
"24. It was next contended on behalf of the respondent/defendant that he is carrying on business in a remote place situate at a distance of about 200 kilometres from the place where the applicant/plaintiff is operating. In other words, the contention of the respondent/defendant is that the geographical separation enables him to the use of the mark without causing in roads into the market of the applicant/plaintiff.
25. But the same contention cannot also be accepted in view of the fact that the Registrar of Trade marks himself is empowered to restrict the use of the trade mark with reference to the geographical limitations. Admittedly, the certificate of registration obtained by the applicant/plaintiff does not contain any such restriction relating to geographical location. Therefore, an artificial limitation cannot now be created by this Court, which would virtually amount to curtailing a right conferred upon the applicant/plaintiff by the statute.
27. In 2006 (2) MLJ 839 (cited supra), a Division Bench of this Court observed as under:
"22. In the light of the above stand taken by the plaintiff, there is no point in saying by the defendants that there are other business concerns, using the name 'Arichandra', as their trade mark.
23. As correctly pointed out by the trial Court, in this case, the word 'Arichandra', adopted by the defendants, is identical in spelling, phonetic, font style and size, to that of the plaintiff's trade name. It cannot be stated that these two trade names of the plaintiff and the defendants are distinct. On the other hand, to our eyes, they are quite similar and sufficient enough to cause great confusion to the buyers.
25. As correctly pointed out by a Division Bench of this Court in Andhra Perfumery Works Joint family Concerns v. Karupakula Suryanarayaniah and others (supra), the word 'Ganesh', indicating the deity, was objected; the reason for using the name 'Ganesh' is, its auspicious commencement of all undertakings in Hinduism and, as such, it is wrong to create a monopoly in respect of such a term for one particular proprietor. This Court had correctly observed that, in that event, there are several other names of the same deity such as Vigneswara, Vinayaka etc., which could be appropriately used by the persons, desiring to associate their goods with the favour of the deity.
26. In this case also, if the name 'Arichandra' is used for indicating honesty and uprightness, the defendants could very well choose some other names such as 'Rama', a mythological name, or 'Mahatma Gandhi', a historical name, for indicating the said attributes. Instead of adopting those names, the defendants have used the word 'Arichandra', with the same style and other unique features, exactly similar to that of the plaintiff's trade mark. Further, the defendants/appellants have pleaded, pending appeal, that they changed the font size of the word 'Arichandra'. This means that the defendants themselves admitted that they used the word 'Arichandra' with same style, font size etc."
28. In AIR 1969 MAD 126 (cited supra), a Division Bench of this Court held as follows:
"18. We shall deal, in a more condensed form, with the citations which have been placed before us from Kerly on Trade Marks (8th Edition, page 246), Halsbury's Laws of England (Third Edition) Volume 38, Paragraphs 869 and 894 and Dr. Venkateswaran on Trade Marks Act (1963 Edition), these last passages being cited from a number of pages of the work. In the present case, the diffculty is partly that, in a context of this character, one has to be careful to see that a circular argument does not emerge. Certainly, if there is some evidence on record which shows that the Trade Mark or the word "GANESH", with or without the variance of prefixes or suffixes, was used by about forty traders in that area, as the appellant claims, then it would be common to the trade; that may be so, ab initio. If that is the interpretation, then the attempt of the respondent firm to register this mark, on the basis of their business in Agarbathies built up from 1953 to 1960, must necessarily fail. When a word is publici juris, like the word 'DURBAR' which the respondent firm disclaimed, there can be no registration, for there cannot be distinctiveness. This is a question of fact, as Kerly points out (paragraph 3, page 119). If, on the contrary, the word had attained distinctiveness as the mark of the respondent firm, this distinctiveness may be lost. But, unless it is lost, it is entitled to recognition. The loss may be due to abandonment, acquiescence in successful piracy on a large scale, or a volume of common user, which is public and which destroys distinctiveness. The Mark may be publici juris in a particular branch of the trade only (Kerly, pages 245-246). The occurrence of a few fraudulent infringements, without the knowledge of the proprietor, will not make the mark common to the trade (Dr. Venkateswaran's Treatise, pages 659 to 661). Again, mere disuse for a short period, may not amount to abandonment. When rectification is attempted, the onus is on the applicant to show that the Mark had lost its distinctiveness. There are several authorities, including passages in Kerly, which need not be quoted again here, clearly to the effect that mere surreptitious user, sporadic user, piracy in a concealed manner against which action was taken or attempted by the proprietor, when the piracies came to light, cannot possibly destroy the distinctiveness earlier achieved.
28. Before leaving these appeals, we may refer to one argument, that the word 'GANESH' applies to the Lord Ganesa who is the deity of auspicious commencement of all undertakings in Hinduism, and hence that it would be wrong to create a monopoly in respect of such a term, for one particular proprietor. But it was never pretended that the word 'GANESH' cannot become distinctive for respondent firm's Agarbathis, or that it is not registrable, We need only observe, without proceeding further into this aspect, and leaving the issue quite open, that there are several other names of the deity (Vigneswara, Vinayaka etc.) which could be appropriately used by persons, desiring to associate their goods with the favour of the deity, if the Mark and device, which are thus invented, do not otherwise infringe any Prior registered device under the Trade Mark Law."
29. In PTC (Suppl) (1) 258 (SC) (cited supra), the Hon'ble Supreme Court observed as follows:
"10. Mr. Sen stressed the point that the words Ambal and Andal had distinct meanings. Ambal is the consort of Lord Siva and Andal is the consort of Ranganatha. He said that in view of the distinct ideas conveyed by the two words a mere accidental phonetic resemblance could not lead to confusion. In this connection he relied on Venkateswaran's Law of Trade and Merchandise Marks,_ 1963 ed., page 214, Kerly's Law of Trade Marks and Trade Names, 9th ed., page 465, art. 852 and the decision Application by Thomas A. Smith Ltd., to, Register a trade mark(1913) 30 RPC 363. In that case Neville, J. held that the words "limit" and "summit" were words in common use, each conveying a distinctly definite idea; that there was no possibility of any one being deceived by the two marks; and there was no ground, for refusing registration. Mr. Sen's argument loses sight of the realities of the case. The Hindus in the south of India may be well -aware that the words Ambal and Andal represent the names of two distinct goddesses. But the respondent's customers are not confined to Hindus alone. Many of their customers are Christians, Parsees, Muslims and persons of other religious denominations. Moreover, their business is not confined to south of India. The customers who are not Hindus or who do not belong to the south of India may not know the difference between the words Andal and Ambal. The words have no direct reference to the character and quality of snuff. The customers who use the respondent's goods will have a recollection that they are known by the word Ambal. They may also have a vague recollection of the portrait of a benign goddess used in connection with the mark. They are not likely to remember the fine distinctions between a Vaishnavite goddess and a Shivaite deity.
11. We think the judgment appealed from is right and should be affirmed. We are informed that the appellant filed another application no. 212575 seeking registration of labels of which the expression "Radha's Sri Andal Madras Snuff" forms a part. The learned Registrar has disposed of the application in favour of the appellant. But we understand that an appeal is pending in the High Court. It was argued that there was no phonetic similarity between Sri Ambal and Radha's Sri Andal and the use of the expression Radha's Sri Andal was not likely to lead to confusion. The Divisional Bench found force in this argument. But as the matter is sub-judice we express no opinion on it."
30. In 2005 (31) PTC 502 (Mad) (cited supra), a learned Judge of this Court held as follows:
"18. The question for consideration is therefore, 'whether the business of the respondent-defendant carried on at Tricky in selling sweets, savouries and chats could be said to have infringed the applicant-plaintiffs right of its registered trade mark?' and whether it will amount of 'passing off the goods in which applicant-plaintiff is carrying on its business of sweets, savouries and chats under its registered trade mark "Gangotree"?
29. With the above principles in mind, when the case on hand is analyzed, when the registration of the trade mark "Gangotree" with its emblem attached with it is not in dispute and its only disclaimer is the Swasthik mark, it will have to be held that the use of the word "Gangotree" in any form by the respondent-defendant would amount to the infringement of a statutory right of the trade mark user and similarly the business carried on by the respondent-defendant under the name and style of "Shree Gangotree" would certainly amount to passing off of the goods, namely, sweets, savouries and chats of that of the applicant-plaintiffs business under the name and style of "Gangotree". The respondent-defendant cannot be allowed to contend that mere use of the word "Gangotree" in its business place alongwith the word "Shree" no infringement has taken place. It is common ground that the business of both the parties is only on sweets, savouries, chats and other food items. In fact, the sample packages placed before the Court at the instance of the respondent-defendant disclose that both are in the business of sweets and chats. When the basic principles set out in "Kerly's Law of Trade Marks and Trade Names - Thirteenth Edition" namely, "the resemblance between two marks must be considered with reference to the ear as well as to the eye" is applied, it will have to be held in no uncertain terms that any customer, who intends to buy such special kind of sweets, savouries and chats, is bound to be well carried away by the name "Gangotree" used by the respondent-defendant for that of the applicant-plaintiff. It cannot be disputed that the applicant-plaintiff has been the user of the name "Gangotree" for more than a decade. Therefore, it must have by now gained a set of its own customers in this particular area of business, namely, 'sweets, savouries and chats' and the respondent's venture which came to be started in the last quarter of 2004, is certainly bound to create atleast a fading impression as though its products are also that of applicant-plaintiff, by virtue of the use of the same name "Gangotree" for its business place as well as in its packages, etc. The applicant-plaintiff having acquired a statutory right, by virtue of its registered trade mark is certainly entitled to seek for its protection of its infringement in any form. Equally its rights as against any body's attempt to even pass off such goods also entitled to be protected. When according to the applicant-plaintiff, it is the user of word "Gangotree" right from the year 1990, it is entitled to claim that such user has created a presumptive right in its favour under Section 31 of the Trade Marks Act and consequently, the whole burden would shift on the respondent-defendant to dislodge that presumption which may even be available to the respondent-defendant by approaching the appropriate Forum by invoking the provisions contained in Chapter VII of the Trade Marks Act, 1999. Until such remedies are invoked in a successful manner, it will have to be held that infringement of the trade mark of the applicant-plaintiff in any manner and the action of passing off indulged in by the respondent-defendant in the form in which it is alleged and shown as on date would entitle the applicant-plaintiff to seek for injunction as prayed for."
31. In 2007 (35) PTC 548, Karnataka (cited supra), the Karnataka High Court held as follows:
"13. Having considered these aspects of the matter and having come to the conclusion that there is a triable issue and a prima facie case has been made out by the plaintiff with regard to infringement of the trade mark of the plaintiff the next question that would arise is as to whether in the present facts and circumstances of the case, the tripod test should be followed by the Court below before granting the injunction. It is in this regard both the learned counsel have relied upon the decision of this Court in the case of M/s.M.K.A. Enterprises v. M/s.Suchita Industries (MFA 4424/07) to contend that from the view point of the plaintiff nothing more is required to be considered and from the view point of the defendant that other two issues relating to balance of convenience and irreparable loss also would have to be considered by the Court below which has not been done in the present case. A careful perusal of the cited order passed by this Court has provided instances wherein the said test is required to be followed and in cases where it is not required. This Court had come to the conclusion that when the case putforth by the plaintiff is of infringement of a deceptively similar trade mark keeping in view the success rate of the plaintiff, the other questions also require consideration. While adverting on the matter further this Court had taken certain instances with regared to the nature in which such consideration is required and after considering the decision of the Hon'ble Supreme Court in the case of Midas Hygiene Industries (P) Ltd., v. Sudhir Bhatia ((2004) 3 SCC 90) in the Laxman Rekha and Magic Laxman Rekha had come to the conclusion that insofar as certain services provided if the trade name infringes another trade name even with a prefix or a suffix, the same would amount to infringement and no other consideration is required since the protection provided under the Act by way of injunction in rem would only get formalised by way of injunction in personum. It is with regard to certain packaging products this Court was of the view that a further consideration may be necessary in the facts of each case if the original name and deceptively similar name appear phonetically or visually similar. If this decision is kept in view to consider the present facts and circumstances of the case, both the plaintiff as well as the defendants are in the business of catering and preparing vegetarian food articles and as such if the defendant runs such another outlet indicating the very same name of the plaintiff merely by prefixing or suffixing certain other name which is similar to the trade mark of the plaintiff, the question of balance of convenience and irreparable loss would not arise since a common customer would believe that the same is a sister concern or another outlet of the original outlet viz., one being run by the plaintiff.
14. In any event, in a matter of this nature, it would ultimately be difficult to assess the damage that may be suffered by the plaintiff since if at all the defendant adapting the similar trade name as that of the plaintiff does not provide tasty and proper service of food articles, the same would also affect the business of the plaintiff wherever they are carrying on since the same would spread by word of mouth and such a loss cannot be quantified. Further on the other hand if the defendant makes a profit by taking advantage of the name of the plaintiff, that portion of the gain made by the defendant cannot be assessed in a case of this nature. While considering this aspect and if the convenience of the defendant is also looked into, in a business of this nature where food articles are preapred and supplied, since the defendants have started the outlet only in the year 2006 preventing the defendant from using the name does not mean stopping of their business, but only forcing them to change the name of the outlet which would mean that they would be entitled to continue with the very same business. But with a different name which would not infringe the plaintiff's name. Their success or otherwise in the business would depend on the quality of the food stuff they would provide and the same need not depend on the name they have adapted for their business. Even from this angle, there would be no inconvenience or loss that would be caused to the defendants and as such the said aspects do not require a detailed consideration in the nature which is made while grant of temporary injunction in a normal circumstances.
15. In this background, a perusal of the order passed by the Court below on 13.09.2006 impugned in this appeal would indicate that the Court below has referred to the contentions putforth by both the parties and considering that the trade mark has been infringed has proceeded to grant the order of injunction as prayed for. That being so the said order is neither capricious nor perverse so as to call for interference in an appeal of limited jurisdiction under Order 43 Rule 1 of CPC.
Accordingly, the appeal is devoid of merit and the same is rejected. Parties to bear their own costs."
32. In 2005 (30) PTC 113 DEL (cited supra), the Delhi High Court held as follows:
"28. The legal preposition which flows from the above decisions is that:
a) A trade mark/trade name, even if it contains or refers to a geographical name, but if it conveys a distinct and specific meaning in common parlance as to indicate the origin of the person or the product and the said mark has assumed a secondary signifi cance, the same can constitute valid trade mark/trade name and is capable of protection under the Trade Mark Act as well as under the common law against passing off by a defendant.
29. Bearing in mind the legal proposition emerging from the above referred authorities, I may now proceed to examine the ultimate question as to whether the mark of the plaintiff 'BIKANERVALA' is entitled to protection because of its exclusive adoption and long user by the plaintiff and whether the plaintiff is entitled to an interim injunction. In the opinion of this Court once the plaintiff has been able to show prima facie that the plaintiff has coined and adopted his trademark 'BIKANERVALA' since 1981 i.e. for more than 20 years and has been manufacturing and selling its edible goods for human consumption and its turnover being quite large during past few years, he has made out a prima facie case in its favour. The defendant has started using an identical trademark/tradename since 2004 only with a prefix 'NEW' which is visually, structurally and phonetically similar to the mark/tradename of the plaintiff. It has also been established that the trademarks/tradenames like 'Kabuliwala', 'Rohtakwala' etc . despite being referrable to geographical terms are good trademarks and have, in fact, been registered with the Registrar of Trademarks. On that analogy and otherwise also, therefore, it can be safely held that the plaintiff's trademark/tradename 'BIKANERVALA' is a good mark and entitled to protection. The defendant could not render any possible explanation as to why it has adopted and started using the word 'NEW BIKANERVALA' and in the absence of any plausible explanation forthcoming, it may be presumed that the defendant has done so with a malafide and deceitful intention and with a view to tired upon the goodwill and reputation of the plaintiff relatable to the said trademark and with the sole intention of passing off its own goods as that of the plaintiff's goods. The balance of convenience also lies in favour of the plaintiff rather than in favour of the defendant and in case interim injunction is not granted in favour of the plaintiff, the defendant may continue to pass on its goods as the good of the plaintiff which is bound to occasion into irreparable loss and injury to the plaintiff.
30. The net result of the above discussion is that plaintiff's application deserves to be allowed and the defendant is required to be restrained by means of an ad interim injunction and the plaintiff is entitled to interim injunction till the disposal of the suit. Accordingly, the application of the plaintiff is allowed and till the disposal of the suit the defendant, its servants, stockists, distributors, agents and retailers are hereby restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in food articles for human consumption under the impugned trademark and infringing artistic work 'NEW BIKANERVALA' as appearing in annexure-B to the plaint or under any other deceitful similar trademark or artistic work as that of the plaintiff's mark 'BIKANERVALA'. Needless to say that observation made herein above are only for the purpose of disposal of the application and may not be taken an expression of opinion on the merits of the suit. Application stands disposed of."
33. In MANU/TN/0891/2007 (cited supra), the learned judge of this Court held as follows:
"9. The main suit has been filed for bare injunction by one of the joint trade mark holder, S.Sudhakar along with the company which has got the main object of taking over the business of 'Shree Lakshmi Agro Foods', a partnership firm carried on by the first applicant along with others. Any one of the joint trade mark holders can file the suit to protect the registered trade mark from the threat of infringement. It is not necessary In a suit for bare injunction that, all the trade mark holders should be arrayed as a party. Therefore, I hold that the first applicant along with the company has every right to lay this application seeking the relief of injunction.
10. It is established that the first applicant along with others jointly have got certificate of registration of trade mark 'UDHAIYAM' with the device sun rays. The applicants also have shown by filing the certificate issued by the Chartered Accountant that they had incurred huge amount in advertising the trade mark. Their sales turn over would show that the applicants have got a reputation amongst the public for the trade mark which has been registered. It is admitted in para 10 of the common counter affidavit filed by the first respondent "the device of rising sun is predominantly shown in gunny bags of 50 kgs, 100 kgs, etc., along with the mark "ARVEE". The device of rising sun in those packing materials are found prima facie to be deceptively similar to the device of rising sun used in the packages of the applicants. Therefore, such deceptive use will have to be injected or otherwise, the consumers will be the victim of deception. But, on a comparison of the packing materials employed by the applicants bearing the trade mark "UDHAIYAM" and the consumer packages used by the respondents bearing the mark 'ARVEE', it is found that the sun rays in the trade mark of the applicants have been projected prominently whereas the (sic) in the consumer packages, used by the respondents is found insignificant. Further, the device of sun rays registered by the applicants do not tally with the device of sun rays found in the consumer packages of the respondents. The main feature found in the trade mark of the applicants is the device sun rays whereas the mark 'ARVEE1 has been projected as a prominent one with the emblem having different type of sun rays in the background in the consumer packages of the respondents.
11. The mark found in the trade mark of the applicants is 'UDHAIYAM' whereas the mark found in the trade mark of the respondents is 'ARVEE'. Therefore, the mark found in the trade mark of the applicants and the respondents are totally different. But the applicants agitate over the device of sun rays as it is allegedly used in the consumer packages of the respondents. The Court will have to see whether the purchasers of the goods would be deceived on seeing the sun rays found in the consumer packages of the respondents.
12. The respondents have shown before the court that the device of sunrise or sun rays, is a very common device of the trade. Therefore, the applicants cannot claim exclusive monopoly over the device of sun rays. But, if the device of sun rays used- by the respondents are deceptively similar to the device of sun rays or sunrise registered by the applicants, then the court will have to interfere to protect the proprietorship of the trade mark registered by the applicants. The applicants cannot claim a sole domain over the common device of sun rays as it is not the invention of the applicants. But, the court is bound to curtail the use of sun rays resembling the trade mark of the applicants in order to avoid deception and confusion in the mind of the public. This court has already taken a decision that the use of the rising sun in the gunny bags predominantly by the respondents would create confusion in the mind of the public as it is used similarly to the device of the applicants."
34. The above judgments are cited on behalf of the plaintiff and now, let me consider the following judgments cited by the learned counsel for the defendant:
35. In AIR 1968 II MLJ 14 (cited supra), a Division Bench of this Court observed as follows:
"For a very important reason, we are unable to agree. We think, that the learned-Judge (Venkatadri, J.) was right in deciding the main issues in favour of the respondent-firm. As we stressed earlier, an issue of this character cannot be viewed in the abstract, or merely with regard to what happened in other cases, where other similar names or trade marks were before the Court. The issue has to be decided applying the leading principles to the specific facts of the instant case, viewed in their totality. One remarkable feature of the present case is that the section of the public, which may be taken as likely to patronise this particular category of goods, is a limited section, with very distinctive characteristics. It is, beyond doubt, a sophisticated section of feminine society, with a flair to considerable literacy qualification. This is no speculation on our part. It is based on the actual record, and on the several affidavits that have been produced signed by ladies who are customers of Kotex products, on behalf of the appellant-firm. There is no doubt whatever that this particular category of goods has not pervaded levels of the public, below the particular social stratum evidenced by the affidavits. We can certainly take judicial notice of such an obvious fact. It is true that these ladies, who belong to a sophisticated and educated section of the public and who would appear to be of the higher middle class, if not actually affluent, have sworn that, sometimes, they sent their maid-servants for purchasing products of this description. But even so, we think that it is most unlikely that the customers of this kind of goods, who must be necessarily ladies accustomed to relatively high standards of living, will coach up their maid-servants to utter the phonetic word Kotex in the right manner, when demanding the product.
It is likely that these ladies will send slips with the written Word, in making a demand for this class of goods. It is most unlikely that if Blotex napkins are supplied for Kotex, such ladies will accept them, thinking that the goods are identical. Certainly, the goods may be accepted as the best possible substitute, or as a distinct trade product serving the same purpose. But that is not the test. It is whether the casual or relatively unwary customer of the particular class of goods, is likely to be deceived or confused by the deceptive phonetic or orthographic similarity, into accepting goods of one brand for the other, under the erroneous impression that they are identical. In our view, such a possibility can be totally ruled out in this case, considering the class of persons who would be the customers in respect of these goods and what can be reasonably expected of them."
36. In AIR 1970 SC 2062 (cited supra), the Hon'ble Supreme Court observed as follows:
"11. In Parker-Knoll Ltd, v. Knoll International Ltd., 1962 RPC 265 at p.274, Lord Denning explained the words "to deceive,' and the phrase "to cause confusion" as follows:
"Secondly, 'to deceive' is one thing. To 'Cause confusion' is another. The difference is this: When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any ,fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so." The tests for comparison of the two word marks were formulated by Lord Parker in Pionotist Co., Ltd.'s application(1906) 23 RPC 774 at p.777 as follows:
"You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion--that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods--then you may refuse the registration, or rather you must refuse the registration in that case."
It is necessary to apply both the visual and phonetic tests. In Aristoc Ltd. v. Rysta Ltd., 1945 RPC 65 at p.72, the House of Lords was considering the resemblance between the two words "Aristoc" and "Rysta". The view taken was that considering the way the words were pronounced in English, the one was likely to be mistaken for the other. Viscount Maugham cited the following passage of Lord Justice Luxmoore in the Court of Appeal, which passage, he said, he completely accepted as the correct exposition of the law :.
"The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of section 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused; It is the person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The Court must be careful to make' allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants".
It is also important that the marks must be compared as whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. Thus in Lavroma case, Tokalon Ltd., v. Davidson and Co., 32 RPC 133 at p.136. Lord Johnston said':
".' ..... we are not bound to scan the words as we would in a question of comparatio literarum. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop."
37. In AIR 1963 SC 449 (cited supra), the Hon'ble Supreme Court held as follows:
"7. It will be noticed that the words used in the sections and relevant for our purpose are "likely to deceive or cause confusion." The Act does not lay down any criteria for determining what is likely to deceive or cause confusion. Therefore, every case must depend on its own particular facts, and the value of authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion. On an application to register, the Registrar or an opponent may object that the trade mark is not registrable by reason of cl. (a) of S. 8, or sub-sec. (1) of S. 10, as in this case. In such a case the onus is on the applicant to satisfy the Registrar that the trade mark applied for is not likely to deceive or cause confusion. In cases in which the tribunal considers that there is doubt as to whether deception is likely, the application should be refused. A trade mark is likely to deceive or cause confusion by the resemblance to another already on the Register if it is likely to do so in the course of its legitimate use in a market where the two marks are assumed to be in use by traders in that market. In considering the matter, all the circumstances of the case must be considered. As was observed by Parker, J. in Re Pianotist Co.'s Application, (1906) 23 RPC 774, which was also a case of the comparison of two words-
"You must take the two words. You must Judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks". (p.777) For deceptive resemblance two important questions are: (1) who are the persons whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that it differs from the mark on goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection. (See Kerly on Trade Marks, 8th edition, p. 400.)
38. In AIR 1984 BOM 218 (cited supra), the Bombay High Court held as follows:
"5. What emerges from these authorities is (a) what is the main idea or salient features, (b) marks are remembered by general impressions or by some significant detail rather than by a photographic recollection of the whole, (c) overall similarity is the touchstone, (d) marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection, (e) overall sturcture phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied, (f) the purchaser must not be put in a state of wonderment, (g) marks must be compared as a whole, microscopic examination being impermissible, (h) the broad and salient features must be considered for which the marks must not be placed side by side to find out differences in design and (i) overall similarity is sufficient. In addition indisputably must also be taken into consideration the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances."
39. In AIR 1965 SC 980 (cited supra), the Hon'ble Supreme Court held as follows:
"29. When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be "in the course of trade", the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide S. 21). A point has sometimes been raised as to whether the words "or cause confusion" introduce any element which is not already covered by the words "likely to deceive" and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words "likely to deceive". But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks-the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiffs mark. The purpose of the comparison is for determining whether the essential features of the plaintiff's trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.
30. The mark of the respondent which he claims has been infringed by the appellant is the mark 'Navaratna Pharmaceutical Laboratories', and the mark of the appellant which the respondent claimed was a colourable imitation of that mark is 'Navaratna Pharmacy. Mr. Agarwala here again stressed the fact that the 'Navaratna' which constituted an essential part or feature of the Registered Trade Mark was a descriptive word in common use and that if the use of this word in the appellant's mark were disregarded, there would not be enough material left for holding that the appellant had used a trade mark which was deceptively similar to that of the respondent. But this proceeds, in our opinion, on ignoring that the appellant is not, as we have explained earlier, entitled to insist on a disclaimer, in regard to that word by the respondent. In these circumstances, the trade mark to be compared with that used by the appellant is the entire registered mark including the word 'Navaratna'. Even otherwise, as stated in a slightly different context:
"Where common marks are included in the trade marks to be compared or in one of them, the proper course is to look at the marks as whole and not to disregard the parts which are common".
31. It appears to us that the conclusion reached by the Courts below that the appellant's mark is deceptively similar to that of the respondents cannot be stated to be erroneous. Besides, this question of deceptive similarity is a question of fact, unless the test employed for determining it suffers from error. In the present case, it was not suggested that the Courts below had committed any error in laying down the principles on which the comparison has to be made and deceptive similarity ascertained. (See per Lord Watson in Attorney-General for the Dominion of Canada v. Attorney- General for Ontario, 1897 AC 199) . As there are concurrent findings of fact on this matter, we do not propose to enter into a discussion of this question de novo, since we are satisfied that the conclusion reached is not unreasonable."
40. In 2006 (4) TNLJ 101 (cited supra), a Division Bench of this Court observed as follows:
"7. In support of the said contention, the learned Counsel relied upon the decisions of the Apex court in Amritdhara Pharmacy v. Satya Deo Gupta reported in AIR 1963 SC 449, Parle Products (P) Ltd. v. J.P. & Co. reported in AIR 1972 SC 1359 and Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. reported in 2001 (1) CTMR 288 (SC). In Amritdhara's case, the Supreme court was dealing with the words Amritdhara and Lakshmandhara and held that the words had overall structural and phonetic similarity. It was further held by the Supreme court in the said case that "the trade mark is the whole thing-the whole word has to be considered". In Parle Products (P) Ltd's case the Supreme court held that "In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design." In Cadila Health Care Ltd., v. Cadila Pharmaceuticals Ltd., reported in 2001 (1) CTMR 288 (SC), the Supreme court, relied upon its earlier decision in Amritdhara's case and held that "It is also important that the marks must be compared as a whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion."
8. But in all the above cases, phonetic similarity alone was not taken to be the sole deciding factor. On the other hand, the Supreme Court emphasized the need to apply the test of "overall structural and phonetic similarity" in Amridhara's case and "visual and phonetic tests" in Cadila's case. Similarly, the Supreme Court applied the test of "broad and essential features" in Parle Products case.
9. Applying these tests of "overall structural and phonetic similarity", "visual and phonetic similarity" and "broad and essential features", to the case on hand, it is seen that the trade mark of the respondent (of which rectification is sought for by the appellant) consisted of a word mark in Tamil reading as "IRIS". Admittedly, the trade mark of the appellant consisted of a word mark in English reading "EYETEX" along with an artistic picture of a human eye. Therefore, the Registrar found that there was no structural or overall or visual similarity, though there was a phonetic similarity in so far as the first part of the word was concerned. The said phonetic similarity in the first part of the word also vanished when the word was taken as a whole along with the second part of the word. Therefore the Registrar as well as the learned Judge were right in coming to the conclusion that the marks were not identical or deceptively similar to each other."
41. In 2010 CIJ 164 (CLJ (cited supra), a Division Bench of this Court held as under:
"28. This Court has taken into consideration the above cited decisions and the ratio laid down in those decisions. The facts of the case would disclose that the appellant has registered its trade mark in the year 1996 and the carton colour-scheme and the artistic work would indicate that the carton used by the appellant for the sale of agarpathies in the name and style of "WORDS" would disclose that it has been printed in green colour and they have also obtained copyright for that colour-scheme and artistic work.
31. However, the said claim was opposed by the Respondent by contending that they have entirely changed the colour-scheme, artistic work and font and there is no deceptive similarity between the products manufactured and sold by them and that of the appellant. It is further contended by the Respondent that the word "WOOD" is a publici juris and consequently the appellant cannot claim exclusive right to use the said word for the purpose of marketing their product.
37. The ratio laid down in the above cited decision would make it clear that it is for this Court to approach the question from the point of view of a man of average intelligence and imperfect recollection to find out whether in a given case the words are deceptively similar and whether an unwary purchaser of average intelligence and imperfect recollection deceived. It should be borne in mind that the object of the enquiry in deciding the question in the ultimate analysis is, whether the mark used by the Respondent as a whole is deceptively similar to that of the registered trade mark of the appellant and that whether the word "WOOD" is a publici juris and whether the appellant herein is entitled for an order of ad-interim injunction.
38. In the considered opinion of the Court, the word "WOOD" is a publici juris. The Respondent in this connection, has drawn the attention of this Court to various products including agarpathies manufactured and marketed by different firms. The documentary evidence of the same is available from page No.79 to 89 of the typed set of papers. A perusal of those documents would disclose that the word "WOOD" is a necessary ingredient for manufacture of agarpathies and consequently most of the manufacturers are using it for the manufacture of agarpathies except for the manufacture of "Dhooth" sticks. Any one can make use of the wood as he likes and if it is so, it will be publici juris. Therefore, the claim of the appellant that since they got the registration of the trade mark under the name and style of "WOODS", they alone have exclusively got right to use the same, in our considered opinion lacks merit.
39. In so far as passing off is concerned, the use by the Respondent herein with regard to the word "WOOD" in their products is not essential in an action for passing off. Under Section 27(2) of the Trade Marks Act, Registration of the trade mark does not proper defense to the proceedings to the passing off as still a prior user of a trade mark can maintain an action for passing off against any subsequent user of an identical trade mark including a registered user thereof. The said right is not affected by section 31 of the Act, under which the only presumption that follows from registration of a mark is its prima facie evidentiary value about its validity and nothing more. This presumption is not an unrebuttable one and can be displaced.
40. It is to be pointed out at this juncture that subsequent to the impugned order which is the subject matter of challenge in this appeal, the Respondent has changed the size of the font and brought alteration in compliance of the order. This Court has also compared the carton of the agarpathies manufactured by the appellant and the Respondent and found that the carton of the Respondent contains entirely different colour-scheme, font and the words appearing on the font are also of different context and conveys different meaning. Therefore, it cannot be said that the shopkeeper as well as the intending purchaser will be mislead or confused with regard to the product namely agarpathi being sold by the appellant and the Respondent."
42. In 1998 (2) LW 646 (cited supra), a Division Bench of this Court observed as under:
"43. The two rival marks 'ENERJEX' and 'ENERJASE' contain the common feature 'ENERJ' which is not only descriptive but also publici juries. Therefore, a customer will tend to ignore the common feature and will pay more attention to uncommon features, i.e., 'JEX' and 'JASE'. These two cannot be said to have such phonetic similarity so as to make it objectionable.
55. Coming back to the facts of the case from the documents filed before this Court, it is clear that there are about 16 other companies in the market using the abbreviation 'ENERG/J'. The product of the plaintiff being Allopathic is in the form of syrup and is packed in bottles and tins. The product of the defendant, being Ayurvedic is in the form of capsules put in strips which are packed in small cardboard boxes. In the label affixed on the bottle of the tonic 'ENERJEX', plaintiff's mark, it is stated below the said mark as "the extra energy". In other label, it is mentioned as an "energy prescription" with proteins, carbohydrates, iron and vitamins, especially, for growing children and pregnant women. In the strips of the defendant's product 'ENERJASE',-it is mentioned as "AYURVEDIC Proprietary Medicine" for anti-stress formula and energiser. It is further printed "the best from nature to restore and energise". So the word 'ENERGJ' used as a prefix in the both the trade names is the abbreviation of the generic term of the English word, 'energy'. As such, it is descriptive in nature and common in usage. Nobody can claim an exclusive right to the use of the word 'ENERG/J' as the constituent of any trade mark. The customer dealing with these medicinal preparations would certainly distinguish the names of the medicines by ignoring the word 'ENERJ' and by assigning weight to the suffix so as to associate the name with the manufacturer."
43. The following principles have been enunciated or settled by the Courts in the above decisions:
1.If a person uses the name which is likely to deceive and divert the business of some one else to him, or is likely cause confusion in the minds of persons, innocence or bonafide use under Section 34 of the Trade and Merchandise Marks Act cannot be a defence.
2.The principles for the grant of interim injunction in an action of passing off are the same as is in the case of any other action against injury complained of and plaintiff must prove a primafacie case, availability of balance of convenience in his favour and he is suffering an irreparable injury and the absence of grant of injunction.
3.Once the Certificate of Registration does not contain any restrictions to the use of Trade Mark with reference to the geographical locations, then, contention that the geographic separation enables the other person to the use of the trade mark, can never be sustained in law.
4.The contention that the mark/word is a generic term or a mythological name cannot be accepted, as if the word adopted by the defendants is identical in spelling, phonetic, font style and size, as there are several other names for the same word/the deity which could be used by persons desiring to associate their goods with the favour of the Deity.
5.The resemblance beween the two marks must be considered with reference to ear as well as the eye.
6.The occurrence of a few fraudulent infringements without the knowledge of the proprietor will not make the mark into the trade and mere misuse for a short period may not amount to abandonment.
7.The Hindus in the South of India may be well aware that the words Ambal and Andal respresent the names of two distinct Goddesses, but the customers who are not Hindus or who do not belong to South India may not know the difference between Andal and Ambal.
8.If a person has acquired a statutory right by virtue of its registered trade mark, he/she is certainly entitled to seek for its protection of infringement in any form.
9.By prefixing or suffixing certain other name which is similar to the trade mark of the plaintiff, the question of balance of convenience and irreparable loss would not arise since a common customer would believe that the same is a sister concern or another outlet of the original outlet run by the plaintiff.
10.When the defendant uses an idential trade mark or trade name with a particular prefix "new" which is visually, structurally and phonetically similar to the mark/trade name of the plaintiff, the defendant should be able to render a plausible explanation as to why they have adopted and started using the word with a prefix. If no plausible explanation is forthcoming, then, it is to be presumed that it has been done with a malafide and deceitful intention with a view to tread upon the goodwill and reputation of the plaintiff.
11.If the device of a sunrays used by the respondent are deceptively similar to the device of sunrays or sunrise registered by the applicant, then, Court will have to interfere to protect the proprietorship of the trade mark registered by the applicants.
12.The test is whether the casual or relatively unwary customer of the particular class of goods is likely to be deceived or confused by the deceptively, phonetically or orthographic similarity into accepting goods of one brand for the other under the erroneous impression that they are identical.
13.It is important that the marks must be compared as a whole and it is not right to take a portion of the word and because of that portion the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark.
14.Before registration of a trade mark, the onus is on the applicant to satisfy the Registrar that the trade mark applied for is not likely to deceive or cause confusion.
15.In deciding the question of similarity of two marks, the same must be looked at from the angle of a person of average intelligence; marks must be compared as a whole and microscopic examination is impermissible.
16.When two marks are identical, the plaintiff will have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion.
17.The trade mark is the whole thing the whole word has to be considered namely the overall structural and phonetic similarity, visual and phonetic similarity and broad and essential features are the tests to be applied for considering the similarity.
18.Under Section 27(2) of the Trade Marks Act, registration of the trade mark does not offer proper defence to the proceedings of passing off as still the prior user of the trade mark can maintain an action for passing off against any subsequent user of an identical trade mark including a registered user thereof.
19.Nobody can claim an exclusive right to use of the word 'ENERG/J' as the constitutent of any trade mark and the customer dealing with the medical preparations would cerainly distinguish the names of the medicines by ignoring the word ENERJ and by assigning weight to the suffix so as to associate the name with the manufacturer.
44. In the light of the above judgments and the principles laid down therein and also in the facts and circumstances of the case on hand, now let me consider whether the plaintiff has established a prima facie case and whether they have shown that irreparable injury would be caused to them in the event of not getting the order of injunction absolute. This court has to further explore whether the balance of convenience is in favour of the plaintiff in getting the order of injunction.
45. I have already referred to the documents filed on behalf of the plaintiff. These documents would prima facie establish that the plaintiff started "MURUGAN IDLI SHOP" in the existing name even in the year 1993 and the same has become extremely popular in the country especially in Southern India wherein the products Idly, Dosa, Pongal, Vada, etc., are highly popular. It is true that originally the trade marks and other certificates have been granted in the name of Mr.Manoharan and Mrs.Umamaheswari when the same was run as a Partnership firm. It is also not in dispute that now the partnership firm has been converted into a sole proprietory concern and on that basis also necessary applications have been filed before the Registered Authority to issue the Trade Marks and other Certificates in the name of the Sole Proprietor alone i.e., Mr.S.Manoharan. When these facts are not in dispute, it is not open to the defendant to contend that originally all these certificates were issued in the name of the Partnership firm and at the time of filing the suit, the plaintiff is not holding these Trade Mark rights. However, I am of the considered view that such an issue could not be raised at the time of considering the injunction application and the same could be raised as an issue, established and proved only at the time of trial. At this juncture, i.e., while considering the applications for grant of orders of injunction, it is sufficient if there are materials to prove that the plaintiff, whether as a proprietory concern or as a partnership firm, have the Trade Mark rights and they are the first users of the name "MURUGAN IDLI SHOP", having commenced the business in the year 1993 itself. The documents filed by the plaintiff would go to show that the plaintiff has clearly established a prima facie case and therefore, in the absence of any other documents filed on behalf of the defendant to discredit the plaintiff's documents, this Court certainly holds that the plaintiff has established a prima facie case.
46. In so far as the balance of convenience is concerned, even though it has been contended by the learned counsel for the defendant that they are running only one restaurant, that too, in the city of Visakapatinam, Andhra Pradesh, I am unable to accept the arguments on two grounds:
1.The Trade Mark Certificate issued to the plaintiff is not restricted to any area of operation and therefore, at this stage, this Court has to accept the fact that it has been granted for the entire country.
2.It is the case of the plaintiff that having established a name and fame in Tamil Nadu, they would certainly open Restaurants in other Southern Indian Cities as well. If the plaintiff opens such Restaurants in the state of Andhra Pradesh in future, certainly two names which are deceptively similar would create confusion and chaos and therefore, the balance of convenience is also in favour of the plaintiff. Further, the plaintiff would be put to hardship if the interim injunction is not granted and if they succeed in the suit ultimately.
47. In so far as the submissions of the learned counsel for the defendant that the name Murugan is a very popular God's name and no one should have any trade mark or proprietorship over the same, it is for them to question the same before the Trade Mark Registering Authority and the same could not be contended now before this Court. The fact remains that the Certificate of Registration of Trade Mark has been granted for "MURUGAN IDLI SHOP" and for Idly, Vada, Dosa, Chapathi, etc., and other food preparations for human consumption. These are sufficient for this Court to grant an injunction in favour of the plaintiff and it is for the respondent/defendant to agitate the question of granting Trade Mark Certificate in the name of 'Murugan' elsewhere and therefore, I am rejecting the arguments advanced on behalf of the defendant in this regard.
48. Now, let me consider whether "MURUGAN IDLI SHOP" and "SRI MURUGAN IDLI SHOP" are deceptively similar and would create confusion and chaos in the minds of the people. Before that, I make it very clear that the plaintiff has got the Trade Mark Certificate and the defendant did not have any such certificate for his "SRI MURUGAN IDLI SHOP". When a trade mark holder is pitted against a non-trade mark holder in respect of the very same products, this Court will always lean in favour of the trade mark holder. Still, if I peruse both the names "MURUGAN IDLI SHOP" and "SRI MURUGAN IDLI SHOP", I am of the considered view that the names are extremely similar and in fact identical except for the prefix "SRI" in the case of the defendant's shop. It is also not in dispute that the Restaurants of the plaintiff and the only restaurant of the defendant are dealing in South Indian food items like Idly, Vada, Dosa, etc., and in such circumstances. I have no hesitation in holding that "SRI MURUGAN IDLI SHOP" of the defendant is certainly to be injuncted till the disposal of the main suit.
49. Yet another fact which should be considered in favour of the plaintiff is that the plaintiff instituted a suit in C.S.No.99/2008 against "OM MURUGAN IDLI SHOP" Bangalore and this court granted an order of injunction in O.A.nos.105 and 106 of 2006. This is clearly stated by the plaintiff in the plaint i.e., in para No.17 wherein it was also stated that in that suit i.e. C.S.No.99/2006, the defendant "In MURUGAN IDLI SHOP", Bangalore gave an undertaking that they would not infringe the trade mark. This was not at all disputed by the defendant and therefore, this is also in favour of the plaintiff in getting the order of injunction absolute.
50. In the light of the above discussions and the judgments relied on by both the counsel, I am of the considered view that the interim injunction already granted in favour of the plaintiff in both the applications should be made absolute till the disposal of the main suit.
51. In the result, Application Nos.1099 and 1100 of 2009 are allowed. Consequently, A.Nos.1313 and 1314 of 2010 are dismissed. No cost.
cse