Gujarat High Court
M/S Symphony Ltd & vs Godrej And Boyce Manufacturing Company ... on 1 May, 2015
Author: A.J.Desai
Bench: A.J.Desai
C/AO/117/2015 ORDER
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
APPEAL FROM ORDER NO. 117 of 2015
With
CIVIL APPLICATION NO. 5277 of 2015
In APPEAL FROM ORDER NO. 117 of 2015
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M/S SYMPHONY LTD & 1....Appellants
Versus
GODREJ AND BOYCE MANUFACTURING COMPANY LIMITED &
2....Respondents
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Appearance:
MR KAMAL TRIVEDI, LD.SENIOR COUNSEL WITH MR JATIN Y TRIVEDI,
ADVOCATE WITH MR HARSHIT TOLIA, LD.ADVOCATE for the Appellants.
MR MIHIR J. THAKORE, LD.SENIOR COUNSEL WITH MR RR SHAH, LD.
ADVOCATE WITH MR HARSHIL SHAH, ADVOCATE for the Respondents.
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CORAM: HONOURABLE MR.JUSTICE A.J.DESAI
Date : 01/05/2015
ORAL ORDER
1. Appeal Admitted.
2. With the consent of the learned advocates appearing on behalf of the respective parties, hearing is construed as final hearing of this appeal.
3. By way of the present Appeal under Order 43, Rule 1(r) of the Code of Civil Procedure, the appellants herein - original plaintiffs have challenged the judgement and order dated 22/04/2015 passed by learned Judge, Court No.13, City Civil Court, Ahmedabad below Exh.6 & 7 in Civil Suit (CCC) Page 1 of 18 C/AO/117/2015 ORDER No.479 of 2015 filed by the appellants under Order 39 Rules 1 & 2 of the Code of Civil Procedure, dismissing the same, by which, relief sought against the respondents - original defendants from using the plaintiffs' registered trade mark namely "DiET" for the product of Class-11 of fourth schedule of the Trade Mark Act,1999.
4. The case of the appellants - original plaintiffs pleaded before the learned Trial Court as well as before this Court is that,
(i) That the plaintiff No.1 company was incorporated on 5th February,1988 as a private limited company under the name of Sanskrut Comfort Systems Pvt Ltd. and plaintiff No.1 Company was promoted by plaintiff No.2 Shri Achal Bakeri who is presently its Managing Director. Plaintiff No.1 Company was subsequently converted into a public limited company on November 2,1992 under the name Sanskrut Comfort Systems Ltd. Plaintiff No.1 Company came out with a public issue in the year 1994 and currently its shares are listed at NSE, BSE & ASE with a public holding of 25%. Thereafter, Plaintiff No.1 Company's name was changed to Symphony Comfort Systems Ltd on 16th January 1995 and thereafter to Symphony Ltd. on date 11th March,2010.
(ii) Shri Hardik Desai son of Bhikhabhai Desai, is the duly constituted signatory of plaintiff No.1 Company under a Board Resolution dated 17-1-15, who has signed and verified the plaint on behalf of the plaintiff No.1 Company. Shri Hardik Desai son of Bhikhabhai Desai, is also duly authorised to sign and verify the present plaint on behalf of plaintiff No.2.
Page 2 of 18 C/AO/117/2015 ORDER(iii) Plaintiff No.1 Company is in the business of manufacturing and sale of a range of air coolers for over 25 years. The plaintiff's trade name Symphony is a well- established brand and household name known nationally and internationally for high quality products with excellent performance, aesthetic outlook and unique design. In the financial year ending 2013-14, the plaintiff company's total turnover exceeded Rs.450 Crores.
(iv) Plaintiff No.1 Company is engaged in the worldwide business together for manufacturing and marketing a wide range of its products. That plaintiff No.1 Company is one of the world's largest Air cooler company. The success story of plaintiff No.1 Company is the result of a well-orchestrated effort at constant innovation and consistent performance. Plaintiff No.1 company is also engaged in the export of its products internationally to countries such as Europe, Middle East, Latin America, Africa and Sough East Asia. Plaintiff No.1 Company products cater to a global market with a strong presence in about 60 countries worldwide and its reach is unparalled in the domestic market also, with warehouses and servicing centres almost in all states of the country, nationwide marketing network with more than 16000 dealers, retailers in about 4800 towns & cities and around 750 distributors, a vast filed marketing team of professionals and a dedicated team for institutional sales, powered by a world class, global scale operations.
(v) Plaintiff No.1 Company has a strong and well - established R & D division comprising of highly qualified and Page 3 of 18 C/AO/117/2015 ORDER experienced engineers to continuously develop better and more efficient products and designs for their consumer products such as air coolers. Plaintiff No.1 expends considerable funds and resources for the purposes of R & D to always remain the market leader in innovation and design for their products to understand the consumer needs and give their customers the best experience with their products and climate control systems.
(vi) Plaintiff No.1 Company and its brands have become synonymous with organised air cooler manufacturing and design. Today plaintiff No.1 company is known for its multi- models air coolers company in the highly competitive consumer durables industry and has made a distinct and unmistakable image and reputation for itself.
(vii) Plaintiff No.2 is the predecessor in title of Plaintiff No 1 in relation to the trademark "DIET" and to acquire statutory rights plaintiff No.2 had applied for registration of the said mark under the Trade Marks Act,1999. That plaintiff No2 also granted a license of the trademark "DIET" in favour of Plaintiff No.1 Company under a License Agreement dated 24 th March 2009 and whereupon plaintiff No.1 company in relation to its products have adopted the trademark "DIET", and has been using the trademark "DIET" since 24th March,2009 to distinguish there products from other coolers from market. The said trademark is fist coined and used first for its products has acquired common law rights. The said trademark "DIET", came to be registered in the name of Plaintiff No.2 as trademark No.1798044 under Clause 11 of the Trade Marks Act 1999 under the Registration Certificate, Page 4 of 18 C/AO/117/2015 ORDER dated 22nd February,2011. Thereafter, Plaintiff No.2 under a Deed of Assignment dated 31st October 2013 has assigned all his rights in the trademark "DIET" to and in favour of Plaintiff No.1 Company whereupon Plaintiff No 1 company name is entered as the subsequent proprietor of the Trademark "DIET" TM No.1798044 and necessary TM 24 is filed in this regard. The said registration is in force and valid hence plaintiff no.1 acquired the exclusive rights to use and to restrain other from infringing the said trademark as per provision of Trade Marks Act.
(viii) The Trademark "DIET" TM 1798044 is used upon and in connection with air coolers manufactured by the Plaintiff No.1 Company. The word "DIET" is also closely associated with the trading name and trading style of Plaintiff No 1 Company because long use. The sale of the products is incurred time to time which is clear from the year wise statement produced herewith separate list.
(ix) The name/word "DIET" and the Trademark 1798044 have acquired distinctiveness in the relation to the goods and services of the Plaintiff No.1 Company. The Trademark "DIET" necessarily brings to the mind of the public the goods and services of the Plaintiff No.1 Company. The Plaintiff No.1 Company over the years has attained tremendous goodwill and reputation in relation to the products manufactured by the Plaintiff No.1 company using and adopting the Trademark "DIET".
(x) The goods of Plaintiff No.1 Company bearing the Trademark "DIET" and other marks has been advertised Page 5 of 18 C/AO/117/2015 ORDER extensively in both print and visual media. The advertisement expense incurred by the Plaintiff No1 Company for promoting its products in the last year was more than INR 1805 lac. Plaintiff No 1 company over the years has spent substantial advertisement and sales promotion expenses to promote its products in the market which is clearly established that the said "DIET" trademark is a well reputed trade mark for the plaintiff's goods and has become well known as define under act.
5. It is the case of the plaintiffs that though the respondent was fully aware that the word "DiET" was being used by the plaintiffs for their air coolers, they deliberately used the same word for selling the air conditioners manufactured by them. It is the case of the plaintiffs that the defendants started passing of the goods, having name "DIET" and they infringed the registered trade mark of the plaintiffs. Having come to know, the plaintiffs have preferred the above referred suit and prayed for permanent injunction restraining the respondents from using the work "DiET" for their products. The plaintiffs also filed the application under Order 39 Rule 1 of the Code and prayed for relief that the defendants shall not be permitted to use the registered Trade Mark "DiET" for their business/ services / goods and products including all type of products falling under Clause 11 of the Fourth Schedule and thereby restrained them from infringing the plaintiff's registered trade mark till the disposal of the Suit. They have also prayed for restraining the defendants to sell their goods having similar name, in the market.
6. Pursuant to the Notice issued by the learned Trial Page 6 of 18 C/AO/117/2015 ORDER Court in the matter, the defendants appeared and filed their written statement as well as reply to the application and opposed to grant of interim relief.
It is the case of the defendants that the word "DiET" registered at the instance of the plaintiff is with regard to air coolers while respondents are manufacturing air conditioners, which is totally a different product and, therefore, there is no infringement of registered trade mark of the plaintiff. It is the case of the defendants that defendants are selling the air conditioners in the name and style of "Godrej Eon DIET AC" and, therefore, there is no similarity between the products of the respective parties. It is also the case of the defendants that they have launched the air conditioners at different places all over India since January,2015 and they have launched the same in Ahmedabad on 19/03/2015. It is also the case of the defendants that they have already applied for registration of trade mark of "Godrej Eon DIET" and the application is pending before the concerned authority.
Considering the rival submissions made by learned advocates appearing for the respective parties, learned Trial Court did not entertain the application submitted by the plaintiffs for interim relief and dismissed the same by passing an order on 22/04/2015. Hence, this appeal.
7. Mr.Kamal Trivedi, learned Senior Counsel, assisted by Mr.Harshit Tolia, learned advocate for the appellants would submit that it is an undisputed fact and it is accepted by the defendants as well as learned Trial Court as reflected in its judgement that the plaintiff is having its registered trade Page 7 of 18 C/AO/117/2015 ORDER mark in the name and style of "DiET", which is registered in fourth schedule since 2009. Learned Trial Court therefore has erred in refusing interim relief, as prayed for by them, by permitting the defendant to use word "DIET" in selling the air conditioners in the market, which also falls under Clause 11 of fourth schedule of the Act. He would submit that the plaintiff company is having his own reputation in entire India as well as in several countries as far as manufacturing of air coolers are concerned. He would submit that fourth schedule of the Act deals with classification of goods and services, clause-11 deals with apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
He would submit that use of air coolers mense the temperature down in surrounding area, like the an air conditioner, although, the procedure and method of cooling down the temperature may be different. He would submit that as per clause 11, both items i.e. air coolers and air conditioners would be covered with word "refrigerating" of clause 11 of the Fourth Schedule and, therefore, when the "DiET" word is registered trade mark for an item which cools down the temperature of surrounding area, another manufacturer cannot be permitted to use the same word for those item, which also does the same work i.e. cooling down the temperature of surrounding area.
By taking me through Section 29 of the Trade Mark Act,1999, Mr.Kamal Trivedi, learned Senior Counsel would submit that the case of the plaintiffs is squarely falls within the said provisions and, therefore, learned Trial Court ought to have granted interim relief, as prayed for. By relying upon Section 29(1) of the Act, he would submit that the defendants Page 8 of 18 C/AO/117/2015 ORDER are using the same mark "DIET" for the same goods and, therefore, it is established that registered trade mark of the plaintiff is infringed by the defendants. He would submit that the scope of applicability of sub-section (1) of section 29 is very wide, and, therefore, when the defendants have used the same trade mark namely "DIET" for their production, which covers under clause 11, it is established that intention of the defendants is malafide and to get benefit without providing the stuff of the product.
By relying upon the sub-section (2) of section 29 of the Act, he would submit that even if it is presumed that items manufactured by the plaintiffs and defendants are different in nature, however, when the registered trade mark "DIET" is used by the defendants, is to be treated as infringement of the registered trade mark. He would submit that if the defendants are permitted to use word "DIET" for sell of air conditioners, there are all possibilities that the same word create confusion on the part of the public that air conditioners are being manufactured and sold by the plaintiff company, which has huge reputation in the market.
By relying upon sub-section (9) of section 29 of the Act that even registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation. If words are found to be same, which is being used by the another person, is treated as infringement of the trade mark. In the present case, "DiET" and "DIET" are same in spoken and, therefore, prima facie, it is established that there is infringement of the registered trade mark of the plaintiffs.
In support of his submissions, he has relied upon various decisions. First decision relied upon by the learned Page 9 of 18 C/AO/117/2015 ORDER advocate for the appellants is rendered in the case of T.V. Venugopal V/s. Ushodaya Enterprises Limited and another reported in (2011)4 SCC 85 and would submit that word "Eenadu" is registered with the company, which is providing TV services and was popular amongst Andhra Pradesh, Hon'ble Apex Court restrained the respondent from selling "Agarbatti" having the same name i.e. "Eenadu" and held that it would be infringement of registered trade mark though products were totally different.
By reply upon the decision rendered in the case of Bhavnesh Mohanlal Amin and another V/s. Nirma Chemicals Works Ltd. and another reported in (2006)1 SCC 185, he would submit that "Nirma" word was registered under clause 3 of fourth schedule, however, a person, who intend to manufacture and sell their products flour mills in the name of "Nima" were restrained from doing the same, having the similar type of name though the goods were totally different in nature. He therefore would submit that the order passed by learned Trial Court is required to be quashed and set aside and the appeal may be allowed and respondents may be restrained, as per the prayers made in this appeal.
8. On the other hand, Mr.Mihir J. Thakore, learned Senior Counsel assisted by Mr.R.R.Shah, learned advocate vehemently opposed the appeal and submitted that the respondent company is having a huge reputation in entire country of India and all over the world which manufactures different household articles including the air conditioners. He would submit that in the present case product of the plaintiffs are totally different than the goods manufactured and sold by the defendants. He would submit that system of working of air coolers is totally different than the Page 10 of 18 C/AO/117/2015 ORDER working of the air conditioners and, therefore, items produced by respective parties are totally of different nature and, therefore, for selling different products by using word "DIET" in its products, cannot be treated as infringement of the registered trade mark. He would submit that the respondent is advertising its products in the name of "Godrej Eon DIET AC" and is not using the word only "DiET" i.e. advertised by plaintiffs and, therefore, it cannot be said that similar word "DiET" is used by the defendants in selling their products. He would submit that meaning of word "DiET" is an adjective, which is normally used for lower consumption, smaller number, etc. He would submit that since the latest air conditioners manufactured by the defendant's company are going to consumer less electricity, the word "DIET" is used in this item and, therefore, it cannot be said that with malafide intention, air conditioners, which were previously sold as "Godrej Eon" Air conditioners are sold as "Godrej Eon DIET AC" Air conditioners. The defendants had already applied for registration of their trade mark, for too different goods namely air conditioners as well as Microwave oven, which are going to consume less electricity and the application is pending. He would submit that there is huge price difference between the goods produced by the plaintiffs and defendants. Price of the present product of the defendants is much higher and, therefore, the person, who is spending more money for air conditioners than the price of the air coolers, which are manufactured by the plaintiffs, would not be confused, as alleged by the plaintiffs and, therefore, provisions of section 29 would not be applicable to the present facts and circumstances of the case since goods manufactured by the respective parties are of different nature Page 11 of 18 C/AO/117/2015 ORDER and are not the same.
He would submit that sub-section (9) of section 29 would not be applicable in the present case since the plaintiffs are using a word "DiET" in isolation and defendants are using the word "Godrej Eon DIET AC". He would submit that there are no possibilities of create any confusion on the part of the public as submitted hereinabove. He would submit that sub-section (9) of section 29 of the Act is also not applicable.
In the facts and circumstances of the case, he has relied upon decision rendered in the case of Kaviraj Pandit Durga Dutt Sharma V/s. Navaratna Pharmaceutical Laboratories reported in AIR 1965 SC 980 and would submit that there is dissimilarity between the alleged word "DiET" and "DIET" used by the respective parties and therefore, it cannot be said that there is infringement of the registered trade mark of the plaintiff.
By relying upon the decision rendered in the case of Ruston and Hornby Ltd. V/s. Zamindara Engineering Co. reported in 1970 AIR SC 1649, he would submit that there is no infringement of trade mark by passing the goods, as alleged. The good, which is being sold by the defendant, is not marked like the plaintiff, which would lead the purchaser to believe that the good is being manufactured and sold by the plaintiffs since there is vast different between two products.
By relying upon the decision rendered in the case of Matrix Telecom Pvt. Ltd. V/s. Matrix Cellular Services Pvt. Ltd. reported in 2011(3) GLR 1951, he would submit that the plaintiffs have failed to establish that the goods are being sold by the respondents by using the name of the Page 12 of 18 C/AO/117/2015 ORDER plaintiffs and, therefore, he would submit that the application is required to be dismissed.
9. I have heard learned advocates appearing on behalf of the respective parties and perused the plaint, reply as well as the order impugned in the present appeal. Undisputed fact in the present case is that the appellants - plaintiffs are manufacturing different types of air coolers having different names, which are registered under the provisions of the Act. Since years together, one of the products of such air cooler is given the name "DiET", which is registered way back in the year 2009 and the appellants are selling the said goods since then.
10. The plaintiffs are selling the air coolers having trade mark "DiET", which has increased sale day by day from year 2008-2009. Details of sale of "DiET" air coolers by the appellants, are as under:
Sr. Year (July to Qty. in Nos. Value (Rs. In Remark No. June) Lacs) 1 2008-09 5100 200 FULL YEAR 2 2009-10 87541 3138 FULL YEAR 3 2010-11 118783 4126 FULL YEAR 4 2011-12 95243 7114 FULL YEAR 5 2012-13 114307 5983 FULL YEAR 6 2013-14 198162 10399 FULL YEAR 7 2014-15 101819 5315 FROM 01.07.2014 to 31.01.2015 GRAND TOTAL 720955 36276 The advertisement issued by the defendant Page 13 of 18 C/AO/117/2015 ORDER company reads as under:
"godrej eon DIET AC"
These air conditions are launched by the defendants in the aforesaid name and sold in the entire country.
11. The plaintiff's registration of the product is under Clause 11 of fourth schedule, which reads as under:
"11. Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes."
12. Prima facie, I am of the opinion that the products manufactured and sold by the respective parties would fall within the meaning of "refrigerating" of clause 11, since both the products cool downs the temperature of surrounding area, though the method might be different. It is true that trade mark "DiET", which is registered at the instance of the plaintiffs as per the Certificate, reflects "air coolers", I am of the opinion that air conditioners cannot be permitted to be sold having the same name, which is already registered in the name of the plaintiffs.
13. While dealing with arguments advanced by learned advocates for applicability of Section 29 is concerned, I would like to reproduce the same for proper appreciation.
"29 Infringement of registered trade marks. (1) A registered trade mark is infringed by a person who, not being a registered Page 14 of 18 C/AO/117/2015 ORDER proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) I any case falling under clause (c) of subsection (2), the court shall presume the at it is likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or Page 15 of 18 C/AO/117/2015 ORDER services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
(5) ... ... ...
(6) ... ... ...
(7) ... ... ...
(8) ... ... ...
(9) Where the distinctive elements of a
registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly."
Under the provisions of Section 29(1), a person is banned from using a mark, which is identical with deceptively similar to registered trade mark, to sell goods or sevices in respect of which trade mark is registered. As far as the goods sold by the parties are same or not, I have already prima-facie believed that the 'goods' are the same, therefore, in the present case, prima-facie, I hold that there is infringement by respondent under Sec.29(1) of the Act.
14. I am also of firm opinion that the appellants have very strong case as far as applicability of provisions of section 29(2)(b) is concerned. The defendants are using same word "DIET" though it is used one of the four words. It is also an undisputed fact that the defendants have started to use word "DIET" very recently.
As far as createing confusion on the part of the Page 16 of 18 C/AO/117/2015 ORDER public is concerned, the plaintiffs are manufacturing and selling the air coolers in the name of "DiET" since 2009 and sales are more than 100 Crores in last three years. I am of the opinion that the same would create confusion on the part of public. The aforesaid discussion also prima-facie, attracts, the provisions of Sec.29(9) in the present case.
15. Considering the above aspect and considering the ratio laid down by Hon'ble Apex Court in the case of Venugopal (supra), the principle laid down therein would be applicable in the present case. Facts in the case of Bhanvesh (supra) would also be applicable in the present case, even if it is believed that the productions are different one.
As far as judgement relied upon by Mr.Thakore, learned Senior Counsel appearing for the respondents are concerned, facts are different and related to old law. I am of the opinion Section 29(9) prima facie applicable to the present case. Hence, the impugned order dated 22/04/2015 passed by learned Chamber Judge, Court No.13, City Civil Court, Ahmedabad is quashed and set aside. The application filed below Exh.6 & 7 are allowed. Respondents - defendants are hereby restrained from using the registered trade mark word "DIET" for selling the Air conditioners. Learned Trial Court is hereby directed to decide the Suit as expeditiously as possible and preferably within a period of six months from the date of receipt of copy of this order. The Appeal is allowed.
16. Learned advocate for the respondents has prayed to stay this order. Request of the respondents to stay this order, is refused.
[A.J.DESAI,J.] Page 17 of 18 C/AO/117/2015 ORDER *dipti Page 18 of 18