Allahabad High Court
Bimal Kumar Barua vs M/S Rayban Sun Optics India Ltd And ... on 28 May, 2013
Bench: Ashok Bhushan, Abhinava Upadhya
HIGH COURT OF JUDICATURE AT ALLAHABAD Reserved On 17.04.2013 Delivered on 28.05.2013 Case :- FIRST APPEAL No. - 729 of 2008 Petitioner :- Bimal Kumar Barua Respondent :- M/S Rayban Sun Optics India Ltd And Another Petitioner Counsel :- Neeraj Srivastava,M.D. Singh Shekhar,M.K. Gupta,Neeraj Srivastava,Pankaj Agrawal,Raj Kishore Yadav,Sheo Prakash Singh Respondent Counsel :- Rahul Sahai ____ Hon'ble Ashok Bhushan,J.
Hon'ble Abhinava Upadhya,J.
(Delivered by Hon'ble Ashok Bhushan, J.) This first appeal has been filed by the plaintiff appellant against the order dated 18.9.2008 passed by the learned Additional District Judge rejecting the plaint of the plaintiff under Order VII, Rule 11 of the Code of Civil Procedure.
Facts in brief giving rise to this appeal are; the plaintiff obtained registration of trade mark "RAYBAN CABLES" on 7.3.1988 in respect of electric cables included in Class 9 under the provisions of Trade and Merchandise Marks Rules, 1959. The defendants claim carrying on business in the name and style of M/s Crystal Wire Industries and are manufacturing and marketing various types of electric wires and cables having its manufacturing units and office at 2/98 Ramandand Nagar, Allapur, Allahabad. The certificate was renewed on 7.3.2002 for next seven years. The plaintiff filed a suit being Original Suit No. 8 of 2005 in the Court of District Judge, Allahabad stating therein that defendants, who are manufacturing optical sun glasses under the trade name "RAYBAN" and manufacturing and marketing their product of optical sun glasses surreptitiously and in a clandestine manner taking the advantage of goodwill and repute of plaintiff. The plaintiff claimed to have given a notice dated 16.7.2003 to the defendants desisting them from manufacturing and marketing their sun glasses in the brand name "RAYBAN" which was replied on 21.1.2004 by the defendant. The plaintiff pleaded that to the knowledge of the plaintiff, the defendants are still continuing with the manufacturing of their optical sun glasses under the brand name 'RAYBAN' hence, they may be restrained from using the brand name 'RAYBAN' on their products. The plaintiff has prayed for grant of permanent injunction restraining the defendant from using the brand name of 'RAYBAN' on the product of optical sun glasses. The plaintiff has further prayed for award of damages/compensation. In the suit, the plaintiff filed an application on 28.7.2007 praying for an order of injunction directing the defendants to keep its account properly and to appoint a receiver or attach the property of the defendants. The defendants filed an application dated 31.10.2007 under Order VII, Rule 11 read with Section 151 Code of Civil Procedure praying for rejection of the plaint. In the application it was stated by the defendants that neither any cause of action has accrued in favour of the plaintiff nor any cause of action has been disclosed in the suit hence, the plaint be rejected under Order VII, Rule 11 Code of Civil Procedure. Defendants had already filed a written statement in the suit in the year 2005 itself. On the application filed by the defendants under Order VII, Rule 11 Code of Civil Procedure (45-C), an objection was filed by the plaintiff (50-C). Defendant filed rejoinder (53-C) controverting the objection of the plaintiff. Trial court heard learned counsel for the parties and by order dated 18.9.2008 allowed the application 45-C and rejected the plaint under Order VII, Rule 11 Code of Civil Procedure. This first appeal has been filed against the said order.
In the impugned order, the learned Additional District Judge has held that trade mark "RAYBAN CABLES" got registered by the plaintiff is only in respect of electric cables included in Class 9, whereas the defendants are dealing in optical glasses with brand name "RAYBAN". It has been held that there was no question of infringement of trade mark right in respect of electrical goods as the defendants are dealing with Optical sun glasses. Both the aforesaid goods having dealing in different spheres, neither there is any conflict nor there is confusion in the public mind. The trial court held that no cause of action is made out on the plain reading of the plaint hence, the plaint deserves to be rejected under Order VII, Rule 11 of the Code of Civil Procedure.
We have heard Sri M.D. Singh Shekhar, learned Senior Advocate assisted by Sri Shiv Prakash Singh for the appellant and Sri Rahul Sahai appearing for the respondents.
Sri M.D. Singh Shekhar, learned Senior Advocate challenging the order passed by the trial court submitted that the plaintiff having been registered with the trade mark 'RAYBAN' with the Registering Authority, the defendants are not entitled to use trade mark 'RAYBAN'. It is submitted that resemblance in the respective trade marks, is a matter of evidence which stage has not yet come. It is submitted that the trial court committed error in rejecting the plaint under Order VII, Rule 11 Code of Civil Procedure. It is submitted that while considering the application under Order VII, Rule 11 Code of Civil Procedure, the trial court can only look into the plaint allegations and error has been committed by the trial court in referring to written statement of the defendants, whereas in the same judgment, the trial court relied on the judgment of the Supreme Court, which judgment has already held that it is only the plaint allegations, which have to be looked into for deciding the application under Order VII, Rule 11 Code of Civil Procedure. The defendants' plea that registration of trade name of the plaintiff has been abandoned was wrongly taken into consideration, whereas the registration is still in force. It is submitted that registration of trade mark of the plaintiff is referable to Class 9 of the 4th Schedule of Geographical Indication of Goods (Registration and Protection) Act, 2002. Class 9 also uses the word 'optical'. Both plaintiff and defendants having been registered under Class 9, the plaintiff has every right to claim injunction against the defendants who are dealing with articles covered under Class 9.
Sri Rahul Sahai learned Counsel for the respondents refuting the submission of learned counsel for the appellant, contended that 'RAYBAN' is internationally known trade mark for sun glasses/optical glasses. Word 'RAYBAN' is not a dictionary term and is invented word, which is property of the defendant respondents no. 1, foreign principal since 1937. Trade Mark 'RAYBAN' is registered in India since 1945 with registration No. 115796. The goods under the trade mark 'RAYBAN' are being sold by the answering respondents in large number of countries including India. The defendants were shocked to receive the letter dated 16.7.2003, alleging infringement of trade mark and directing the respondents to stop endorsing their goods with trade mark 'RAYBAN'. The notice was replied on 21.1.2004, denying the charges leveled. The suit filed by the plaintiff is mischievous, frivolous, based on false averments and does not disclose any cause of action. The plaint does not disclose material facts to make a complete cause of action against the defendants. Referring to Sections 28 and 29 of the Trade Marks Act, 1999, it is submitted that registration of trade mark is in relation to the goods in respect of which the registration is obtained. The plaintiff is carrying on business in electrical cable, there is no occasion of infringement of plaintiff's trade mark by using the trade mark 'RAYBAN' by the defendants with regard to optical glasses.
Learned Counsel for the parties have referred to and relied on various judgements of the apex Court and High Courts, which shall be referred to while considering the submissions in detail.
From the submissions made by learned counsel for the parties and pleadings on record, following are the issues which arise for consideration in this appeal.
1.Whether the plaint of suit No. 8 of 2005 did not disclose any cause of action and trial Court was justified in allowing the application filed by the defendants under Order VII, Rule 11 C.P.C.?
2.Whether the trial court while considering the application under Order VII Rule, 11 has to confine itself to the pleadings in the plaint for determining as to whether the plaint discloses a cause of action?
3.Whether the registered trade mark of the plaintiff 'RAYBAN CABLES' is infringed by use of trade mark 'RAYBAN' by the defendants for the optical glasses?
All the above issues being interconnected are taken together. The application filed by the defendants (45-C) was an application under Order VII, Rule 11 C.P.C. for rejecting the plaint. Order VII Rule 11 C.P.C. contemplates rejection of plaint. Relevant clause (a) of Order VII, Rule 11 C.P.C. is quoted as below:
"11. Rejection of plaint.- The plaint shall be rejected in the following cases:--
(a) where it does not disclose a cause of action;"
The trial court has rejected the plaint on the ground as mentioned in Order VII, Rule 11 (a) C.P.C. Hence, only question to be considered in this appeal is as to whether the plaint does not disclose a cause of action? Before we proceed to look into the pleadings in the plaint, it is useful to have a look over the statutory scheme pertaining to registration of trade marks. The Parliament had enacted the The Trade And Merchandise Marks Act, 1958 for the registration and better protection of trade marks and for the prevention of the use of fraudulent marks on merchandise. 1958 Act had been repealed by Trade Marks Act, 1999, which has been enacted to amend and consolidate the law relating to trade marks, to provide for registration and better protection of trade marks for goods and services and for the prevention of the use of fraudulent marks. The plaintiff had obtained the registration of his trade mark under the 1958 Act which has now been renewed within the meaning of 1999 Act. Section 2(zb) defines "trade mark" in following words:
"(zb) "trade mark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and-
(i) in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and
(ii)in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, a d some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark;"
Chapter II of the Act deals with the Register and Conditions for Registration. Sections 9,10 and 11 contain grounds on which registration may be refused. Chapter IV deals with Effect of Registration. Section 28 provides Rights conferred by registration and Section 29 provides for infringement of registered trade marks. Sections 28 and 29 are quoted below:
"28. Rights conferred by registration.- (1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(2)The exclusive right to the use of a trade mark given under sub- section (1) shall be subject to any conditions and limitations to which the registration is subject.
(3)Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so fr as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.
29.Infringement of registered trade marks.- (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2)A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-
(a) its 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) In any case falling under clause (c) of sub- section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4)A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6)For the purposes of this section, a person uses a registered mark, if, in particular, he-
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8)A registered trade mark is infringed by any advertising of that trade mark if such advertising-
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c)is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly."
The plaintiff has filed certificate of registration of his trade mark as Annexure-2. The certificate mentions registration of trade mark in respect of "ELECTRIC CABLES INCLUDED IN Class 9" The description of trade mark as disclosed in the certificate (Annexure-2 to the affidavit filed in support of stay application ) is as follows:
"RAYBAN CABLES"
For appreciating the controversy between the parties, it is also relevant to note trade mark of the defendants as registered by Registrar of Trade Marks. In the registration certificate goods description of the defendants trade mark is as follows:
"SUN GLASSES GOOGLES OPTHALIMIC LEUSES AND ALL OTHER GOODS INCLUDED IN Class 9."
The trade mark is "RAY-BAN". The date of registration is mentioned as 05/12/1945. Learned Counsel for the appellant has submitted that for considering the application under Order VII Rule 11 C.P.C., only plaint allegations are to be looked into. He has relied on two judgements of the apex Court; (2003) 1 SCC 557 Saleem Bhai and others Vs. State of Maharashtra and others and (2007) 14 SCC 183 C. Natrajan Vs. Ashim Bai & Anr. The apex Court in Saleem Bhai's case had occasion to consider Order VII Rule 11 C.P.C. It was laid down by the apex Court that relevant facts which need to be looked into for deciding an application under Order VII Rule 11 C.P.C. are the averments in the plaint and the pleas taken by the defendant in the written statement would be wholly irrelevant at that stage. Following was laid down in paragraph 9 of the judgment:
"9. A perusal of Order VII Rule 11 C.P.C. makes it clear that the relevant facts which need to be looked into for deciding an application thereunder are the averments in the plaint. The trial court can exercise the power under Order VII Rule 11 C.P.C. at any state of the suit - before registering the plaint or after issuing summons to the defendant at any time before the conclusion of the trial. For the purposes of deciding an application under Clauses (a) and (d) of Rule 11 of Order VII C.P.C., the averments in the plaint are germane; the pleas taken by the defendant in the written statement would be wholly irrelevant at that stage, therefore, a direction to file the written statement without deciding the application under Order VII Rule 11 C.P.C. cannot but be procedural irregularity touching the exercise of jurisdiction by the trial court. The order, therefore, suffers from non-exercising of the jurisdiction vested in the court as well as procedural irregularity. The High Court, however, did not advert to these aspects."
In C. Natrajan Vs. Ashim Bai & Anr.(supra) again same proposition were noted by the apex Court in paragraphs 7 and 10 which are as follows:
"7. An application for rejection of the plaint can be filed if the allegations made in the plaint even if given face value and taken to be correct in their entirety appear to be barred by any law. The question as to whether a suit is barred by limitation or not would, therefore, depend upon the facts and circumstances of each case. For the said purpose, only the averments made in the plaint are relevant. At this stage, the court would not be entitled to consider the case of the defence. {See [Popat and Kotecha Property v. State Bank of India Staff Association [(2005) 7 SCC 510]}.
10. In Popat and Kotecha Property v. State Bank of India Staff Association [(2005) 7 SCC 510], this Court, inter alia, opined:
"Rule 11 of Order VII lays down an independent remedy made available to the defendant to challenge the maintainability of the suit itself, irrespective of his right to contest the same on merits. The law ostensibly does not contemplate at any stage when the objections can be raised, and also does not say in express terms about the filing of a written statement. Instead, the word "shall" is used clearly implying thereby that it casts a duty on the court to perform its obligations in rejecting the plaint when the same is hit by any of the infirmities provided in the four clauses of Rule 11, even without intervention of the defendant. In any event, rejection of the plaint under Rule 11 does not preclude the plaintiffs from presenting a fresh plaint in terms of Rule 13."
It was further opined :
"When the averments in the plaint are considered in the background of the principles set out in Sopan Sukhdeo case the inevitable conclusion is that the Division Bench was not right in holding that Order VII Rule 11 CPC was applicable to the facts of the case. Diverse claims were made and the Division Bench was wrong in proceeding with the assumption that only the non-execution of lease deed was the basic issue. Even if it is accepted that the other claims were relatable to it they have independent existence. Whether the collection of amounts by the respondent was for a period beyond 51 years needs evidence to be adduced. It is not a case where the suit from statement in the plaint can be said to be barred by law. The statement in the plaint without addition or subtraction must show that it is barred by any law to attract application of Order VII Rule 11. This is not so in the present case."
From the proposition laid down by the apex Court as noted above, it is clear that for deciding an application under Order VII Rule 11 C.P.C., as to whether plaint discloses a cause of action or not, it is only the plaint allegations which have to be looked into. Whether plaint allegations make out a cause of action for maintaining the suit has to appear from the plaint itself. The 'cause of action' has not been defined under Code of Civil Procedure. Mulla Code of Civil Procedure 18th edition while explaining cause of action states as follows:
"The expression 'cause of action' has acquired a judicially settled meaning. In the restricted sense, 'cause of action' means the circumstances forming the infraction of the right or the immediate occasion for the action. In the wider sense it means the necessary conditions for the maintenance of the suit, including not only the infraction of the right, but the infraction coupled with the right itself. Compendiously the expression means every fact by which it would be necessary for the plaintiff to provide, if traversed, in order to support his right to the judgment of the court. Every fact which is necessary to be provided, as distinguished from every piece of evidence which is necessary to prove each fact, comprises 'cause of action'. It has to be left to be determined in each individual case as to where the cause of action arise. The cause of action means the circumstances forming infraction of the right or immediate occasion for action. It is left to be determined in each individual case as to where the cause of action arises. The cause of action in suit/petition has no reference to the defence taken in the suit nor is it related to the evidence by which the cause of action is established."
The Privy Council in AIR 1949 P.C. 78 Mohammad Khalil Khan vs Mahbub Ali Mian laid down that cause of action means the whole bundle of material facts which are necessary for the plaintiff to prove, if traversed, in order to support his right to the judgment. Following was laid down by the Privy Council:
"46. The phrase "cause of action" has not been denned in any enactment, but the meaning of it has been judicially considered in various decisions. In Bead v. Brown (1889) 22 Q.B.D. 128, 131. Lord Esher M.R. accepted the definition given in Cook v. Gill (1873) L.R. 8 C.P. 107 that it meant (p. 116):
every fact which it would be necessary for the plaintiff to prove, if traversed, in order to support his right to the judgment of the Court. It does not comprise every piece of evidence which is necessary to prove each fact, but every fact which is necessary to be proved.
Fry L.J. agreed and said, "Everything which, if not proved, gives the defendant an. immediate right to judgment, must be part of the cause of action." Lopes L. J said (p. 133):
I agree with the definition given by the Master of Rolls of a cause of action, and that it includes every fact which it would be necessary to prove, if traversed, in order to enable a plaintiff to sustain his action.
his decision has been followed in India. The term has been considered also by the Board. In Mussummat Chand Kour v. Partab Singh (1888) L.R. 15 I.A. 156. Lord Watson delivering the judgment of the Board observed as follows (p. 157) :
Now the cause of action has no relation whatever to the defence which may be set up by the defendant, nor does it depend upon the character of the relief prayed for by the plaintiff. It refers entirely to the grounds set forth in the plaint as the cause of action, or, in other words, to the media upon which the plaintiff asks the Court to arrive at a conclusion in his favour."
Plaintiff in the plaint, after pleading the basic facts regarding the registration of the trade mark of the plaintiff, has disclosed the cause of action for filing the suit in paragraphs 11 to 18. It is useful to note the averments made in paragraph 11 to 15 and 18:
"11. That the plaintiff in the course of business of manufacture of Electric Cable under the registered brand name "RAYBAN" came to know that the defendants with connivance with each other are infact manufacturing optical Sunglass under the trade name "RAYBAN" and are manufacturing and marketing their product of Optical Sunglass surreptitiously and clandestine manner take the advantage of good-will/ reputation of the plaintiff acquired by hard perseverance in the competitive market in business of manufacturing and marketing of cable under brand name "RAYBAN".
12.That the plaintiff thereafter made searches in the market and found that the defendants are in fact marketing at Allahabad and at many other places throughout Indian territory their cheap quality Optical Sunglasses product at a high price, illegally taking advantage of the brand name "RAYBAN" on their product which is in fact exclusively associated to the business of cable production by the plaintiff. The plaintiff purchased one optical sunglasses from Allahabad market shop viz Jaggi opticians situated at Civil Lines, Allahabad at a high also to establish that the defendants are doing business of selling their optical sunglasses under the brand name "RAYBAN" which legally they are not authorised to do in any manner whatsoever on account of exclusive right of plaintiff over the said trade mark "RAYBAN".
13.That the plaintiff prior to above purchase thereupon sent notice dated 16.7.2003 to the defendants to desist from manufacturing and marketing their optical Sunglass in market under the brand name "RAYBAN" on account of plaintiff's exclusive right over the said trade mark "RAYBAN" acquired as a registered proprietor thereof. Inspite of desisting themselves from manufacturing and sale defendants sent an irrelevant reply vide their letter dated 21.1.2004.
14.That inspite of the above and to the knowledge of the plaintiff the defendants are still continuing with the marketing of their optical sunglasses under the brand name "RAYBAN" till now in illegal and unauthorised manner which is creating great confusion into the minds of the customers and public at large that the defendants are part and parcel of the business of the plaintiff and on account of such confusion the defendants are taking advantage in market and making unlawful gains in the said manner by using the Trade Mark "RAYBAN" on their product.
15.That under the above circumstances the plaintiff has a legal right to restrain the defendants by the process of court to desist the defendants from using the trade mark "RAYBAN" on their optical Sunglasses product and marketing the same causing the infringement of trade mark over which the plaintiff has exclusive right to use in market as per provisions of law. Hence, this suit.
18. That the cause of action for the suit arose on 16.7.2003 when notice to the defendants were sent and on 12.2.2005 when the defendants in connivance with each other was found to be using the registered trade mark of the plaintiff as plaintiff purchase sunglasses and thereupon on all subsequent dates when inspite of notice the defendants continued illegally and unauthorisedly to use of trade mark "RAYBAN" on their optical sunglasses product infringing the right of the plff. Over the said trade mark."
The plaint allegations make it clear that the registration of trade mark of the plaintiff is in electric cable products. The plaintiff pleaded in the plaint that plaintiff had acquired the exclusive right to use the trade mark 'RAYBAN' in relation to cables manufactured by it. With regard to defendants, it has pleaded that they are using trade name 'RAYBAN' and are manufacturing and marketing their products of optical sunglasses. It is not disputed that registration of trade marks of both plaintiff and defendants are referable to Class 9. Class 9 uses both the items i.e. electric and optical. However, the goods with regard to which registration has been granted to the plaintiff and defendants are entirely different and distinct. The electric cables are entirely different and distinct good from optical sunglasses. The plaintiff is dealing in electric cables, whereas the defendants are marketing their sun glasses and other optical items. Section 28 of the Trade Marks Act, 1999 provides that registration of trade mark gives to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark. Thus, right to use the trade mark is in relation to the goods. When the plaintiff got his trade mark registered for electrical cables, there is no question of infringement of his right of trade mark when the defendants use their trade mark 'RAYBAN' in relation to sun glasses and optical glasses. The issue of infringement of trade mark right came for consideration before several High Courts from time to time. Delhi High Court in AIR 1974 Delhi 40 Nestle'S Products Limited And others vs. Milkmade Corporation And Anr has considered the provisions of Trade and Merchandise Marks Act, 1958. In a case, where injunction was sought by Nestle products against Milkmade Corporation. The facts of the case as noted in paragraphs 2 and 3 of the judgment, are as follows:
"2. Plaintiff No. 1 is Nestle's Products Limited, a company registered under the laws of the Bahama Islands and the second Plaintiff, Nestle's Products (India) Limited though registered under the laws of the Bahama Islands has its principal place of business in India at New Delhi. Plaintiff No. 1 is the registered proprietor of the following among other trade marks registered in India in respect of goods mentioned in Class 29 of the classified list of goods in the Fourth Schedule of the Trade and Merchandise Marks Rules :
(1)Trade Mark consisting of a figure representing a milkmaid and the words "Milkmaid brand".
(2) Trade Marks consisting of the transcription of the English word 'Milkmaid' in Tamil, Telugu, Bengali, Gujarati, Hindi and Assamese, respectively.
In addition the second plaintiff had applied for the formalities for the recordal of registered user rights in respect of trade mark containing the words "Milkmaid Brand" on a central panel consisting of a figure representing a milkmaid reproduction on either side thereof of two sides of a medal set in the middle of a rectangle with the words "Condensed Milk". The trade marks consisting of the word "Milkmaid" and the figure representing a milkmaid have been used by the plaintiffs and their predecessors for over 100 years to distinguish the condensed milk manufactured and/or sold by them. The said condensed milk has been sold in India for over 50 years. The plaintiffs had acquired the said trade marks and brand "Milkmaid" which had acquired a wide reputation in other markets as well as in India.
3.It came to the notice of the plaintiffs in or about November, 1970 that the defendants had adopted the trade name "Milkmade Corporation" and had put on the market biscuits and toffees, under their said trade name and/or mark "Milkmade". The plaintiffs complained that the said trade name and/or mark adopted by the defendants was both visually and phonetically nearly identical with and/or deceptively similar to the aforesaid trade marks and brand name "Milkmaid". The second plaintiff thereupon wrote to the defendants requiring them to desist from using the word "Milkmade" or any other similar word or mark in respect of their goods."
The Delhi High Court has held in an action for infringement of plaint, the plaintiff must make out that the use of the defendants' marks is likely to deceive. Following was laid down in paragraphs 13 and 14:
"13. The test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing off actions. The action for infringement is a statutory right depending on the validity of the registration and subject to other restrictions laid down in the Act (Ruston and Hornby Ltd. v. Zamindara Engineering Co. ). Lord Denning explained in Parker Knoll v. Knoll International Ltd. [1962 R.P.C. 265 (274)] the words "to deceive" and the phrase "to cause confusion". "When you deceive a man you tell him a lie...... you may not to 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". These observations were cited with approval by Ramaswami, J. in F. Hoffimanna-La Roche and Co. Ltd. v. Geoffrey Manners and Co. Private Ltd. . As pointed out by Sir Wilfred Green, M.R. reversing the judgment of Bennet, J. in Saville Perfumery Ltd. v. June Perfect Ltd. and F.W. Woolworth & Co. Ltd. (58 R.P.C. 147 at page 163). that it did not necessarily follow that a trader who uses an infringing mark upon goods is also guilty of passing off, the reason being that once a mark is used indicating its origin, no amount of added matter intended to show the true origin of the goods can affect the question. The statutory protection is absolute and infringement takes place not merely by exact imitation but by the use of a mark so nearly resembling the registered mark as to be likely to deceive (at page 161). The House of Lords dismissed the appeal preferred against the decision of the Court of Appeal.
14.Section 12 imposes a ban on the registration of an identical or deceptively similar trade mark. But this prohibition does not apply where the applicant's trade mark is in respect of goods which are of essentially different character from the goods or description of goods for which an identical or similar mark is already in the register."
Quoting Dr. Venkateswaran and referring to earlier English cases, following was laid down in paragraphs 17 and 18:
"17. Dr. Venkateswaran in his book on Trade and Merchandise Marks (1963 Edition at page 511) has stated as follows :
"IThas already been pointed out that the exclusive right conferred by registration is limited to the goods for which the mark is registered, and does not extend to allied goods. In order to constitute infringement, the defendant's use of the mark complained of must be in relation to any goods in respect of which the plaintiffs mark is registered. An action for infringement cannot, therefore, be brought when the use complained of is in respect of goods for which the plaintiffs mark is not registered, even though an action for passing off may still be sustained".
In support of this statement the following cases have been cited :
"HARTv. Colley, (1890) 7 R.P.C. 93,. Edwards v. Dennis, (1885) 30 Ch. D. 454, . Hargr aves v. Freman, (1891) 8 R.P.C. 237. In Hart v. Colley, the defendant was charged with selling rolls of paper with the trade mark of the plaintiff; the plaintiff was not registered in Class 39 which took in rolls of paper. It was held that the plaintiff not being registered under Class 39 was not entitled to sue in respect of the infringement of the trade mark. We are not for the moment concerned with the other ground of passing off, on which that decision was rested. North, J. observed as follows :
"In turning over the leaves of the Trade Mark Journal we constantly find four or five or more trade marks all exactly alike registered in respect of different classes of goods. What is that for ? Why, because the common consent of every one shows that they understand the right to registration under the Act is in respect of the particular goods or classes of goods for which registration is obtained.
I am surprised to find that this point has not expressly been decided, for it must have arisen a great many times; but I find in that case to which Mr. Aston referred of Edwards v. Dennis, there are certain observations of the Judges which seem to me to point exactly the same way. There, it will be remembered, it was held that a person could not register with respect to all goods of a particular Class unless he had used the marks in respect of such goods; and it was held that the mark having been registered with respect to a particular Class, but only used with respect to certain goods in that Class, the registration must be rectified so as to show that it was not in respect of the whole Class, but of the goods only with respect to which the marks had been used. Now, it would be absurd to say that if a man registers under Class, I, in respect of particular goods in that Class, he cannot sue in respect of other goods in that Class, but can, without any other registration sue in respect of all goods found in all the other classes. It is impossible to come to the conclusion that that could be so : and as it is decided that a man can register with respect to such only of the goods in any given Class as he has used his marks upon, it follows, a fortiori, that a man who is registered in respect of one particular Class cannot, by virtue of such registration, sue in respect of goods which are not within that Class at all.
At page 474 of the 30th Chancery Division, in the case of Edwards v. Dennis, Lord Justice Cotton says :-'Now, what was done in the present case ? There was a registration by Mr. Edwards' predecessors in title for Class 5, of unwrought and partly wrought metals used in manufacture. That was registration in respect of all goods which came under Clause 5, a Class which includes a vast number of things.' Then, passing over a few lines :-'The registration in the present case has been for the entirety of that Class. In my opinion that is wrong. Even if a trade mark can be registered, which is not in actual use, it ought to be restricted to those goods in connection with which it is going to be used. In my opinion if is not the intention of the Act that a man registering a trade mark for the entire Class, and yet only using it for one article in that Class, can claim for himself the exclusive right to use it for every article in the Class'.
A little further on, he says :--'Can a man claim registration for all the articles specified in the Class when the business he is engaged in comprises only one specific portion of the articles named in the Class. I am of the opinion 'he cannot'. To paraphrase that, can a man who is registered in one Class claim in respect of articles not comprised in that Class, but comprised in some of the other classes ? In the same way, in my opinion, he cannot".
18. In (1885) 30 Ch D 454 it was held that an assignee of the goodwill of a business with the right to a trade mark which has been registered by the assignor under the Trade-marks Registration Act, 1875, in respect of an entire Class, but of which the articles dealt with in such business form part only, is not entitled to the exclusive user of the trade-mark for the entire Class, but only for the particular articles in connection with which it is actually used. In addition to the passages occurring in the above extract it would be helpful to set out the observations of Lindley, L.J. (page 477) :
In paragraphs 30,31 and 38 following was held:
"30. The Judicial Committee of the Privy Council held in Somerville v. Schembri (1881) Xii Appeal Cases 453 that on general principles, even apart from any statute (the case arising from Malta) the use of the trade mark " Kaisar-i-Hind" in respect of hats, soaps and pickles could not impede the acquisition of an exclusive right to it as a trade mark for cigarettes.
31.A Division Bench of the Calcutta High Court held in Rustom Ali and Bata Shoe Company that the trade mark 'Bata' used in respect of foot-wear, leather and rubber goods, socks and hosiery, could not impede the use of the said mark with reference to lungis. Warwick (cited already) was distinguished on the ground that it involved tyres for cycles and motor cycles. Somerville was followed and the observations of Romer, J. in Dunlop Pneumatic Tyre Co. case (already cited) were dissented from if he meant that even if the sets of articles concerned had no connection with each other, still an injunction could be granted.
38. Shri Gulati has not been. able to substantiate his contention that toffee is merely condensing already condensed milk without more. The ingredients of toffee could be as noticed, above. His further contention that the buyers of the toffee of the defendants would, because of the name "milk-made" being used with reference to them, be led to think that these toffees are made out of the condensed milk prepared by Nestle's has not been prima fade established. The said view of the plaintiffs could not derive support merely from the fact that in the defendants' wrappers two bottles of milk are shown as being emptied in a glass tumbler; this alone without mere, cannot support the inference that the condensed milk of the plaintiffs was being used by the defendants. The plaintiffs/appellants have also not been able to establish prima facie that there is such a trade connection between the defendants' goods and the plaintiffs' trade mark. and the goods manufactured by them with the said trade mark as would constitute an infringement of the said trade mark."
The High Court upheld the order of learned single Judge by which plaintiff's application for interim relief was rejected.
In an old Allahabad case reported in AIR 1935 Allahabad 7 Thomas Bear & Sons Vs. Prayag Narain, there was difference in two Hon'ble Judge i.e King, J. and Iqbal Ahmad J. The matter was referred to third Judge Niamatullah, J., who while deciding the reference has held that right of the plaintiff to restrain the defendant from using a trade-mark extends to the particular goods sold by the plaintiff, and also to cognate classes of goods, provided the the commercial connexion between the plaintiff's goods and those of the defendant is such as to lead the unwary customers to mistake the defendant's goods for those of the plaintiffs. Justice Niyamatullah approved the view of Iqbal Ahmad, J. Justice Iqbal Ahmad in his opinion laid down following :
" It follows that in case of alleged infringement of a trade-mark, if it is found that the goods manufactured or sold by the defendant are of a description other than the goods in which the plaintiff deals, the plaintiff is not entitled to an injunction restraining the defendant from attaching to his goods trade-mark similar to the trade-mark in which the plaintiff has acquired a right of property."
While approving the view of Justice Iqbal Ahmad, following opinion was expressed by third Judge:
" The rule deducible from the foregoing cases appears to be that the plaintiffs, whose goods have acquired a reputation in the market through a trade mark or name with which their goods have become associated, have a right to restrain the defendant from using a trade-mark or name which is identical with or similar to that of the plaintiffs, and such right extends not only to the particular goods sold by the plaintiffs, but also to cognate classes of goods, provided the cumulative effect of the similarity of the mark, the commercial connexion between the plaintiffs' goods and those of the defendant and surrounding circumstances is such as to lead the unwary customers to mistake the defendant's goods for those of the plaintiffs."
Section 28 provides for "exclusive right to the use of the trade mark in relation to the goods" P. Narayanan in 'Law of Trade Marks and Passing Off' Sixth Edition while elaborating words "Goods" said following in paragraph 23.17 :
" 23.17 Goods The expression "in relation to any goods in respect of which the trade mark is registered" in S. 29(1) makes it clear that there is no infringement of the mark unless the infringer uses the mark in relation to some goods covered by the registration. Where the goods are goods of the same description or closely associated with plaintiff's goods, no action for infringement will lie, but an action for passing off may lie. To overcome this difficulty trade marks are often registered for a wider specification of goods than for which they are intended to be used by making it comprehensive enough to include goods of same description and associated goods such as parts and accessories."
The same author said following, while elaborating as to what constitutes an infringement in paragraph 23.05:
"23.05 Necessary and sufficient conditions Any person trespassing on the rights conferred by registration of a trade mark infringes the registered trade mark. What are the rights conferred by registration in a particular case must be determined in the context of any restrictive conditions or limitations entered on the register. In precise terms, in order to constitute an infringement the act complained of must fulfil the following requirements:
1. (a) the mark used by the person must be either identical with or deceptively similar to the registered trade mark;
(b) the goods or services in respect of which it is used must be specifically covered by the registration;
(c) the use made of the mark must be in the course of trade in areas covered by the registration;
(d) the use must be in such manner as to render it likely to be taken as being use as a trade mark.
(e) the defendant should not be a permitted user under S. 2(1)(r) which includes both registered user and unregistered user."
These conditions are necessary and sufficient for establishing infringement"
For an action of infringement of trade mark thus, one of the essential ingredients, which should be present as per Section 28 of the Act is, that there shall be infringement of trade marks in relation to goods in respect of which the trade mark is registered. The goods for which the appellant's trade mark is registered is electric cables as has been noted above. In the plaint, there is no averment that the defendants are infringing the rights of the plaintiff in the goods for which the appellant have obtained registration under the Act. The word "in relation to the goods" as used in Section 28(1) has to be given its full meaning. The right to use of the trade mark is directly linked with "in relation to the goods". The goods for which the plaintiff has obtained registration is 'RAYBAN CABLES' and he cannot be heard in complaining infringement of registration as the defendants are dealing in trade of Rayban optical sun glasses. No one is likely to be misled, while purchasing Rayban sun glasses that the goods belong to those who have obtained registration in Rayban cables.
One of the submissions which has been pressed by Sri M.D. Singh Shekhar, learned counsel for the appellant is that the plaintiff has obtained his registration under Class 9 of the Fourth Schedule to the Trade and Merchandise Marks Rules, 1959. The Fourth Schedule of Rules provides for classification of the Goods-Names of the Class. Class 9 of the Fourth Schedule provides as follows:
"9. Scientific, nautical, surveying and electrical apparatus and instruments (including wireless), photographic, cinematograph, optical, weighing, measuring signalling, checking (supervision), life-saving and teaching apparatus and instruments; coin or counter-freed apparatus; talking machines; cash registers: calculating machines; fire-extinguishing apparatus."
It is relevant to note that in the rules framed under the Trade and Merchandise Marks Act, 1999 namely, the Geographical Indications of Goods (Registration and Protection) Rules, 2002 contains the Fourth Schedule with similar classification. Class 9 of the classification as provided in 2002 Rules is to the same effect. The submission which has been pressed by Sri M.D. Singh Shekhar is that when the plaintiffs have obtained registration under Class 9, he is entitled to obtain injunction against any person dealing in any of the goods registered under Class 9. The classification in Class 9 indicates that they are of varying nature including electrical apparatus and instruments and optical. They also include coin, cash register etc. Had the legislature intended that registration of a good in any Class gives exclusive right to use the trade mark in relation to the goods in respect of the entire Class, section 28 would have used the words in relation to any goods in the Class instead of using the word in relation of the goods in respect of which trade mark is registered. The exclusive right cannot be claimed for the goods registered in the same Class. The submission of learned counsel for the appellant has no substance and is to be rejected.
In AIR 1963 Madras 460 M/s Parry and Co. Ltd. Madras Vs. M/s. Perry and Co. The Court while considering what is infringement of trade mark, laid down following in paragraphs 11,12,13 and 14:
"11. It is contended for the respondents that the mark having been registered they would have the exclusive right of using the word on all their goods whether it be biscuits or confectionary. Section 5 of the Indian Trade Marks Act declares that a trade mark may be registered only in respect of particular goods or Class of goods. Section 84 (2) confers on the Central Government power to make rules and prescribe classifications of goods for purposes of registration of trade marks. In exercise of such powers, the Central Government has framed rules. Rule 13 of the Rules states that application for registration of trade mark should be in respect of goods in one Class only, the classes being specified in Schedule IV to the Rules. Rule 30 of Schedule IV gives the names of the classes of goods. It runs :
"Coffee, tea, Cocoa, sugar, rice, tapioca, sago, coffee substitutes, flour and preparations made from cereals, bread, biscuits, cakes, pastry and confectionary, ices, honey, treacle, yeast, baking powder, salt, mustard pepper, vinegar, sauces, spices, ice."
The effect of Rule 13 read with Schedule IV is only to regulate the application for registration by insisting that it should be confined only to goods in respect of which the mark had been actually used or proposed to be used. Section 21 gives an exclusive use of the right in respect of a trade mark only in relation to the goods in respect of which it has been registered. That section cannot be read as giving an exclusive right to a registered proprietor to use the mark not only in respect of the goods in relation to which it is registered but also in respect of other goods which are found in the same category or classification. If a registered owner wants to use a mark in respect of several goods in a particular Class, he will have to apply for registration in respect of all those goods, what Rule 13 enables him to do in such cases is to file one application for one Class of goods.
12. But it is contended on behalf of the respondents '" that registration of the goods under Class 30 will entitle a registered proprietor of the mark to use such mark with respect to any of the goods specified therein or in respect of all goods specified in the Class. That contention cannot be accepted.
13.Classification of the goods under Rule 13 read with Schedule IV is only for the purpose of applications i. e. for the purpose of registry but the operation of the protection given by the Act is confined to the goods in respect of which registration is made. Section 21 of the Act gives protection for the use of marks with respect to the goods for which it is registered. In Kerly's Law of Trade Marks (8th Edn. by R. C. Lloyd at page 63) it is stated :
"Classification is primarily a matter of convenience in administration (e. g.) in facilitating the search which is necessary to ascertain whether application is objectionable under Section 12. What is of real importance in determining the rights of parties, as has been pointed out, in the specification of the goods entered on the register and the validity of the registration. The fact that certain goods may fall within the same Class is no evidence that they are goods of the same description which is the important criterion in considering restrictions on registration imposed by Section 12 and the provisions relating to rectification on the ground of non-use contained in Section 26."
In the Upper Assam Tea Company v. Herbert and Co., (1889) 7 R. P. C. 183 a certain person registered the trade mark of an elephant as applicable to tea sold by him. Sometime later the defendants in the case became owners of a trade mark of elephant as applied to coffee. Later on the defendants began to sell tea also with the trade mark, of elephant. The former thereupon instituted an action to restrain the latter from infringing the trade mark and from selling in tea by the description as Elephant Tea of tea with elephant brand. The Court of appeal upheld the view of Sterling I. granting the injunction.
14.The contention in the present case is that confectionery and biscuits fall under the same classification under Schedule IV of the Rules and that registration in respect of the latter goods would entitle a registered owner to the exclusive and lawful use of the mark even with respect to confectionery. That cannot be accepted."
Before a Division Bench of this Court in AIR 1997 Allahabad 323 ITC Ltd. Vs. Rakesh Behari Srivastava and others, the provisions of Order VII, Rule 11 in context of Trade and Merchandise Marks Act, 1958 came for consideration. A suit was filed by the respondents for restraining the revisionist ITC Ltd. from selling a particular brand of cigarette. The defendant filed an application praying for rejection of the plaint under Order VII, Rule 11 C.P.C. The application under Order VII, Rule 11 C.P.C. was although rejected by the Court below but in the civil revision filed against the said order, the High Court allowed the said revision and rejected the plaint under Order VII, Rule 11 C.P.C. In paragraphs 22 and 25 following was laid down:
"22. It has been indicated in the earlier paragraphs of this judgment as to what was the true scope of Order 7, Rule 11, C.P.C. and what were the conditions for exercising the powers under Section 115, C.P.C. to interfere with the impugned order. 1 may now enter into the merits of the case as the revision application would be allowed or rejected upon a finding if the application under Order 7, Rule 11 should riot have or should have been rejected. As indicated in the order the entertainment of the plaint was objected to on two counts, that the suit was barred under the provisions of Section 56 of the Trade and Merchandise Marks Act and the suit also did not disclose any cause of action. These two pleas were resisted with an argument that Section 56 of the Trade and Merchandise Marks Act did not exclude the jurisdiction of the Civil Court and in any case the suit was based not within the frame of the said Act but on a clear allocation of deception and the plaint did disclose a cause of action and the defendants had no right to stall its progress on a frivolous plea. The relevant provision of the Trade and Merchandise Act have been quoted in the earlier paragraphs of the judgment. There is no dispute that the impugned trade marks stand registered in the name of the defendant-company. Upon such registration, certain rights are conferred to the owner of the registered trade mark. Registration gives to the proprietor of the trade mark exclusive right of the use of the trade mark in relation to the goods in respect of which the trade mark has been registered. This right is subject only to one condition that the registration should be valid. This right has been conferred by Section 28 of the Trade and Merchandise Marks Act. This right is proposed to be taken away from the defendants through this suit as an injunction has been sought for against the use of these two marks. The grounds of attack, as stated above, are fraudulent registration and deception under Section 31. Registration is to be taken to be a prima facie evidence of validity of a trade mark. Section 32 goes a bit farther and dictates that subject to the provisions of Sections 35 and 46 a registration shall be conclusive proof of validity after 7 years from the dale of registration unless it is proved that the original registration was obtained by fraud. It is, therefore, clear that the validity of the registration may not be challenged except on the ground of fraud. But still a question remains as to the forum where such validity is to be challenged. Fraud has been alleged on the ground that the registration was obtained suppressing the fact that another foreign company was the owner of the above two trade marks. The definition of registration, however, means registration in terms of the Trade and Merchandise Marks Act. A registration made under the India Merchandise Marks Act, 1889 or the Trade Marks Act, 1948 and in force on the date of commencement of the Trade and Merchandise Marks Act, 1958, was to be treated as a registration under the last mentioned Act. There is no averment in the plaint, however, that the foreign company was registered in India under the first mentioned two Acts so as to continue with its registration even after the passing of the Trade and Merchandise Marks Act. Back to Section 56 of this Act, this Court is to see if the jurisdiction of the civil Court has been excluded. In this connection. I agree with the argument of Sri Shanti Bhushan, as discussed above, that the jurisdiction of the civil Court in the matter of cancellation of registration has been impliedly taken away under Sections 46 and 47 of the Trade and Merchandise Marks Act. The forum for relief is the High Court or the Registrar and even in a suit for infringement of trade mark (Section 111 of this Act), when a question arises as to the validity of the registration of a trade mark, the said question is to be referred to the High Court and is not to be taken by the civil Court itself. Thus, when it is a question of cancellation of the registration even on the ground of fraud, the High Court or the Registrar under the Trade and Merchandise Marks Act is the proper authority and under a proper construction of the Act, they are the exclusive authorities and the civil Court may not enter into the question at all and even in a suit for infringement of trade mark such a question has been kept out of ambit of the decision of the civil Court. It must, therefore, be held that the suit, insofar as it related to the relief of declaration that the registration of the impugned trade marks was fraudulent was not to be entertained by the civil Court.
25. To recapitulate the plaint allegation again, it may be stated that the plaintiffs were the smokers of the impugned brand-named cigarettes. They did not know what were the printed declarations on the packets as they were purchased of loose sticks only. From the brand names, they were under the impression that the cigarettes were being manufactured under the licence of a British company carrying the same brand names. They were also under the impression that these cigarettes were manufactured as per the standards fixed by the foreign companies or under their supervision. It was stated that the defendants had never informed the plaintiffs or other smokers that they were manufacturing the above brand of cigarettes not under the licence or the authority of the foreign company but were acting on their own. There was no advertisement of anything of the nature by the defendant-company to indicate the above fads. They had not indicated even on the packets of the cigarettes that they had acquired the right of manufacture of cigarettes and sale thereof under these two brand names. Thus, there was a misrepresentation to the plaintiffs and other citizens by the defendants that the aforesaid brands were manufactured and sold under the licence and authority of the foreign companies. This was alleged to be clear case of deception of the public in general. Due to fraud and misrepresentation of the defendants the plaintiffs; were led to believe that, they were smoking genuine brands of cigarettes. The defendants were passing off their, goods as if manufactured by the aforesaid foreign company and atleast were causing confusion and deception or there was a probability of confusion or deception amongst the smoking public. The plaintiffs alleged that the defendants did not use any expertise, know how or technical assistance of the foreign company in the manufacture of the aforesaid brands of cigarettes. It was further alleged that the use of the aforesaid brand marks by the defendant company was a wrongful act affecting the plaintiffs and the general public prejudicially and the plaintiffs were entitled to file a suit. Regarding cause of action, it was definitely indicated in the plaint that it had arisen when the plaintiffs for the first time came to know of the illegal acts, on the part of the defendant-company immediately prior to the filing of the suit.
It is true that the words fraud, deception, misrepresentation and confusion have been used in the plaint. This Court is required to examine if mere use of the terms would create a cause of action or really there was deception or fraud at the instance of the defendant-company or if by any action of the defendant-company any confusion or atleast the probability of confusion arose in the mind of the smoking public in general and the plaintiffs in particular. Reference was placed by Sri Naithani on a decision of the Supreme Court reported in AIR 1963 SC 449. It was indicated herein that a trade name likely to deceive and cause confusion was to be inferred from the overall similarity in the two brand names. The Trade and Merchandise Marks Act as per this decision did not lay down any criteria for determining what was likely to deceive or cause confusion. It was held that every case must depend on its own particular facts and the value of the authorities lies not so much in actual decision as in the tests applied for deterring what is likely to deceive or cause confusion. In this connection , the definition of deceptively similarly is important. A market should be deemed to be "deceptively similar" to another mark if it so nearly resembles without marks as to be likely to deceive or cause confusion. These terms have been used in Section 12 of the Trade and Merchandise Marks Act stating that no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark already registered in the name of a different proprietor in respect of the similar goods or description of goods. Thus, the words deceptively similar has been used to protect the rights of a owner of registered trade mark and not for other purpose. The plaintiffs' case in the instant proceedings clearly states that the foreign company is registered in England and they have permitted the use of the brand names in India by the defendant-company. Thus, the very use of the identical mark any not be violative of the provisions of the Trade and Merchandise Marks Act and deception may not be inferred under the meaning of any clause under that Act. Deception must therefore be established from facts pleaded otherwise. The case of London Rubber Company, AIR 1963 SC 1882 also spoke of deception or confusion that might result from identical marks or similar marks, and a reading of the judgment indicates that a question arose whether the Deputy Registrar of a particular trade mark. The Supreme Court dealt with the question of deception and confusion on the question of registration of trade mark, and it was held that deception would result from the fact that there was some misrepresentation therein or because of its resemblance to a mark whether registered or unregistered or to a trade name in which a person other than the applicant had rights. I believe, this is the crucial test to be taken in the instant case whether the foreign Company had a right in India to manufacturer and or sell the impugned brand names. The plaint is silent on this point.
In the case of Simatul Chemical Industries, AIR 1978 Guj 216 the Gujarat High Court indicated as to what was the Marks Act. It was held that the test to be applied is the test of an average person with imperfect recollection. The Court has to visualise a customer or a tradesman who may happen to have dealings with the company complaining or who may happen to want to purchase the goods manufactured by such company. It would not be to apply the test of a person of exemplary memory who remembers the spelling of name of each company or a person who jots down meticulously, methodologically the names of the companies in his diaries. It was a dispute between the two companies,' namely, Cibatual and Simatul It was stated that the plaintiff was to show that the two names were so deceptively similar that there was likelihood of confusion amongst the persons dealing with the two companies. It was not a suit at the instance of any customer of the plaintiff-company, rather the plaintiff company itself came forward to protect its own right. In the suit at our hand, the customers of the goods are coming up with a plea of deception on the ground that the brand names used by the defendants are brand names owned by two foreign companies which had permitted the use of the brand names but had not lent the know how or expertise thereof. In the case of K.R. Chinna Krishna Chettiar, AIR 1970 SC 146 the likelihood of deception came up for decision in a matter for registration of trade marks. It was held that when there was striking phonetic resemblance between the distinctive words of existing and proposed trade marks, the proposed trade mark could not be registered. In my view, we are not confronted with this situation in the present case. In the case of Prem Nath Nayar, AIR 1972 Cal 261 it was held that it was the onus on the applicant for a registration of a trade mark to show that the proposed mark was not likely to deceive or confuse. Similar view was taken in the case reported in AIR 1964 Madras 204, where a likelihood of deception or confusion was held sufficient to refuse registration of a trade mark. In my view, these case laws are not applicable to the present set of facts. In the case of K.T. Pavunny. AIR 1982 Kerala 309 a suit under the Code of Civil Procedure for permanent injunction was entertained on the averment that the defendants were carrying on business in a name which was likely to mislead the public into the belief that the press run by the defendants was the same as that of the plaintiff. It was, however, not a question touching the likelihood of deception or confusion. The main question was whether the suit would lie before the district Court of the sub-Court.
On behalf of the defendant-revisionists, it was argued that the plaintiffs were to establish that it was a case of deception or confusion created due to some action or inaction on the part of the defendants. As to what was the deception was sought to be explained by the learned counsel and reliance was placed on the decision of the Sikkim High Court, in this connection. According to Sri Shanti Bushan the plaint plaint allegation did not constitute a case of deceipt. According to him in an action for deceipt the plaintiffs must allege the following facts :
(i) that the defendant had made a false representation,
(ii) that the defendant made it fraudulently i.e. knowing it to be false or not knowing it to be true.
(iii) that the defendant made such false and fraudulent representation with the intent that the plaintiff should act on it and
(iv) that the plaintiffs acted on it and by acting on it the plaintiff sustained damage.
According to him, these are the essential averments in a suit based on the allegations of deceipt. It was argued that the ITC, even according to the plaint, had never made any false or fraudulent representation. Although the word misrepresentation was used there was no specification as to what were the misrepresentations. Reference was made to order 6, Rule 4 of the CPC which requires that in all cases in which the party pleading reliance on any misrepresentation, fraud, breach of trust, wilful default or undue influence and in all these cases where particulars may be necessary, particularly such as are exemplified as aforesaid, particulars (with dales and items, if necessary) shall be stated in the pleading. It was argued that the particulars of fraudulent misrepresentations were not at all pleaded. Sri Shanti Bhushan continued to say that there was no allegation in the plaint barring the one that the ITC had used its own brand names which, according to the plaintiffs, originally belonged to the foreign companies and that these two trade marks were registered in England. There was no averment that in India the aforesaid foreign companies or any other person or company except the ITC was the registered proprietor of the two impugned trade marks. ' When ITC was the sole registered owner of the trade marks there could not be any false and fraudulent misrepresentation by use of the said trade marks. In this connection, the learned counsel for the revisionists referred to the decision of the Delhi High Court as reported in AIR 1988 Delhi 282 to say that an exclusive right to use the registered trade mark was given to the registered proprietor by Section 28(1) of the Trade and Merchandise Marks Act and till the trade marks stand registered in the name of that proprietor his right could not be interfered with. Reference was further made to an observation of the Madras High Court in the case of Arvind Laboratories AIR 1987 Madras 265, wherein it was held that an action for deceipt cannot be founded without false and fraudulent misrepresentation. It was argued that such false and fraudulent representation could not be established by the user of its own trade marks by the registered proprietor."
This Court in the aforesaid case held that registration of trade marks gives the proprietor of the trade mark exclusive right of the use of the trade mark in relation to the goods in respect of which the trade mark has been registered. However, for finding out as to whether there is any infringement of trade mark of the plaintiff, the plaint allegations have to be looked into. Considering the statutory provisions covering the field, this Court in the aforesaid case looked into the allegations of the plaint and held that plaintiff failed to prove that there was any infringement of trade mark by the defendant and there was no cause of action for maintaining the suit.
Justice V. R. Krishna Iyer in AIR 1977 SC 2421 T. Arivandandam Vs. T.V. Satyapal and Anr, while considering the provisions of Order VII, Rule 11 C.P.C. has given a word of caution that what is required is not formal reading of the plaint but a meaningful reading of the plaint is required. When plaint does not disclose a clear right to sue, the court should exercise his power under Order VII, Rule 11, C.P.C. Following was laid down in paragraphs 5:
"5. We have not the slightest hesitation in condemning the petitioner for the gross abuse of the process of the court repeatedly and unrepentantly resorted to. From the statement of the facts found in the judgment of the High Court, it is perfectly plain that the suit now pending before the First Munsif's Court Bangalore, is a flagrant misuse of the mercies of the law in receiving plaints. The learned Munsif must remember that if on a meaningful -- not formal -- reading of the plaint it is manifestly vexatious, and meritless, in the sense of not disclosing a clear right to sue, he should exercise his power under Order VII Rule 11, C.P.C. taking care to see that the ground mentioned therein is fulfilled. And, if clear drafting has created the illusion of a cause of action, nip it in the bud at the first hearing by examining the party searchingly under Order X, C.P.C. An activist Judge is the answer to irresponsible law suits."
A careful reading of the plaint allegations from paragraphs 11 to 18 indicate that there was categorical pleading of the plaintiff that plaintiff is in the business of manufacturing and marketing electric cables under the trade mark 'RAYBAN'. It was further pleaded that defendants are marketing optical sun glasses in the brand name 'RAYBAN'. There cannot be any confusion in the mind of public regarding trade mark of the plaintiff nor any such trade mark can be perceived with the goods for which trade marks have been registered by the plaintiff, which is far distinct from the optical glasses/sun glasses. It is relevant to note that in the trade mark of the plaintiff, the trade mark name 'RAYBAN' also contains another word "CABLES". According to the own case of the plaintiff, the plaintiff is manufacturing and marketing electrical cables then how as per the averments of the plaint, his trade marks right is infringed by the defendants, who are dealing in optical sun glasses. A conjoint reading of the plaint clearly indicates that no cause of action was disclosed in the plaint for obtaining a relief which was claimed in the suit. It is useful to quote the relief as claimed by the plaintiff in the suit, which is to the following effect:
" (A) That the Hon'ble Court may kindly be pleased to pass a decree for permanent injunction, restraining the defendants, their agents, servants, associate from using the trade mark/trade name "RAYBAN" on their product of Optical Sunglasses for purposes of manufacturing the marketing infringing the exclusive right of the plaintiff over the said Trade Mark "RAYBAN".
(B) To award damages/compensation on account of profits earned by defendants by using the trade mark "RAYBAN" on their optical product to be assessed on proper accounting (Court fee shall be paid after its assessment by court).
(C) To order of delivery of infringement lables and marks "RAYBAN" by the defendants for purposes of destruction and erassures.
(D) Any other relief which the Hon'ble Court deem, fit and proper in the circumstances of the case be awarded."
Treating every facts mentioned in the plaint to be true, still no cause of action has been disclosed in the plaint on the basis of which it can be said that any relief can be obtained by the plaintiff. The submissions of learned counsel for the plaintiff-appellant is that only after evidence is led, the question of infringement of trade mark right of plaintiff can be decided. We fail to see any substance in the above submission. When the plaint itself does not disclose a cause of action for instituting a suit, the question of considering the evidence does not arise. Learned Counsel for the appellant has further submitted that trial court apart from noticing the pleadings in the plaint has referred to certain facts mentioned in the written statement. The judgement of the trial Court clearly indicates that the decision which has been taken by the Court was based on reading the plaint allegations. The Court has narrated the certain pleadings of defendants in the written statement but that was not the basis of the judgement. On the contrary, the trial court accepted the submissions of the plaintiff that it is only plaint allegations which have to be looked into while deciding the application under Order VII, Rule 11 C.P.C.
After considering the submissions of learned counsel for the parties and looking to the plaint allegations, we are of the view that no cause of action was disclosed by the plaintiff and the suit filed by the plaintiff was nothing but an abuse of the process of the Court. The suit filed by the plaintiff was a vexatious and was a clear abuse of the process of the Court. The trial Court did not commit any error in rejecting the plaint under Order VII, Rule 11.
There is no merit in the appeal. The appeal is dismissed with costs.
Order Date :- 28.05.2013 LA/-