Gujarat High Court
Husenali Anwarali Charaniya vs Hasmukhbhai Bhagvanbhai Patel on 24 June, 2024
Author: Nikhil S. Kariel
Bench: Nikhil S. Kariel
NEUTRAL CITATION
C/AO/94/2024 ORDER DATED: 24/06/2024
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IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/APPEAL FROM ORDER NO. 94 of 2024
With
CIVIL APPLICATION (FOR STAY) NO. 1 of 2024
In R/APPEAL FROM ORDER NO. 94 of 2024
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HUSENALI ANWARALI CHARANIYA
Versus
HASMUKHBHAI BHAGVANBHAI PATEL
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Appearance:
MR KISHAN R CHAKWAWALA(9846) for the Appellant(s) No. 1
MS RUSHVI N SHAH(5881) for the Respondent(s) No. 1
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CORAM:HONOURABLE MR. JUSTICE NIKHIL S. KARIEL
Date : 24/06/2024
ORAL ORDER
1. Heard learned advocate Mr. Saifullah for learned advocate Mr. Kishan Chakawala for the appellant and learned senior advocate Mr. Harshit Toliya for learned advocate Ms. Rushvi N. Shah for the respondent appearing on Caveat.
2. By way of this appeal, the appellant challenges order dated 09.05.2024 passed by the learned Second Additional District Judge, Surendranagar, below Exhibit 5 and Exhibit 10 in Trade Mark Suit No.2 of 2023 initiated by the respondent herein. By way of said impugned order, the learned District Court had partly allowed the application for interim injunction preferred by the original plaintiff and had directed the defendant, his partners, agents, assignees, dealers, sellers, distributors and / or anybody claiming through the defendants from using in any manner deceptively similar mark Page 1 of 21 Downloaded on : Fri Jul 05 22:06:13 IST 2024 NEUTRAL CITATION C/AO/94/2024 ORDER DATED: 24/06/2024 undefined "Kranti Kaka" and the label along with the placement of feature, layout, get-up, colour combination and artistic work of the plaintiff and whereas the defendant was further restrained from using the same for any advertisement purpose till final disposal of the Suit.
3. At the outset, it is stated that the parties to the present appeal shall be referred to by original status as "the plaintiff / defendant" and whereas the Court below shall be referred to as "the District Court", whereas the order under challenge shall be referred to as the "impugned order".
4. It would be relevant to mention that while the plaintiff had sought for interim injunction vide application under Exhibit 5, the defendant had preferred application vide Exhibit 10 under Order 7, Rule 11 of Code of Civil Procedure (for short "CPC), seeking for rejection of plaint and whereas vide the impugned order, learned District Court had while partly allowing the application under Exhibit 5 of the plaintiff, the District Court had vide the impugned order, rejected said application and whereas in present appeal, while this Court is not concerned with the said part of the decision, the same is being referred herein for the purpose of information and completing the record.
5. At the outset, before dealing with the submissions made by the learned counsels for both the parties, this Court deems it appropriate to reiterate the law laid down by the Hon'ble Supreme Court while dealing with an appeal against an interlocutory order. The Hon'ble Supreme Court in a recent decision in case of Punjab and Sind Bank Page 2 of 21 Downloaded on : Fri Jul 05 22:06:13 IST 2024 NEUTRAL CITATION C/AO/94/2024 ORDER DATED: 24/06/2024 undefined Vs. Frontline Corporation Ltd. reported in 2023 SCC online SC 470, has referred to the decision of the Hon'ble Supreme Court in the case of Wander Ltd. V. Antox India (P) Ltd. reported in 1990 Suppl. SCC 727 and has succinctly explained the proposition of law. The observations of the Hon'ble Supreme Court in the case of Punjab and Sind Bank (Supra) at paras 26 and 27 being relevant for the present purpose are being reproduced herein below for benefit.
"26. We find that the present appeal deserves to be allowed on another ground also. Undisputedly, the jurisdiction which was exercised by the Division Bench was analogous to the one exercised under Order XLIII Rule 1 of the CPC. It will be relevant to refer to the following observations of this Court in the case of Wander Ltd. and Another v. Antox India P. Ltd.:
"14. The appeals before the Division Bench were against the exercise of discretion by the Single Judge. In such appeals, the appellate court will not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle. Appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court was reasonably possible on the material. The appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the trial court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the Page 3 of 21 Downloaded on : Fri Jul 05 22:06:13 IST 2024 NEUTRAL CITATION C/AO/94/2024 ORDER DATED: 24/06/2024 undefined trial court's exercise of discretion. After referring to these principles Gajendragadkar, J. in Printers (Mysore) Private Ltd. v. Pothan Joseph [(1960) 3 SCR 713 : AIR 1960 SC 1156] : (SCR 721) "... These principles are well established, but as has been observed by Viscount Simon in Charles Osenton & Co. v. Jhanaton [1942 AC 130] '...the law as to the reversal by a court of appeal of an order made by a judge below in the exercise of his discretion is well established, and any difficulty that arises is due only to the application of well settled principles in an individual case'." The appellate judgment does not seem to defer to this principle."
17. It has been held by this Court that the Appellate Court would not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. It has been held that an appeal against exercise of discretion is said to be an appeal on principle. It has further been held that the Appellate Court will not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court was reasonably possible on the material. It has been held that if the discretion has been exercised by the trial court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of discretion."
6. Thus, from the law laid down by the Hon'ble Supreme Court, this Court as the Appellate Court would be required to undertake the exercise of finding out whether the discretion has been exercised by the District Court reasonably and in a judicial manner. In case, this Court would come to the above conclusion, no interference would be required and whereas the converse would also hold good.
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7. Keeping in mind the above proposition, this Court would now examine the facts of the case. Trade Mark Suit No.2 of 2023 had been initiated by the plaintiff under Sections 27, 134 and 135 of the Trade Marks Act, 1999 and Sections 5 and 62 of the Copyright Act. It was the case of the plaintiff that the plaintiff was carrying out business of manufacturing, marketing and processing of "Betel Nut"
with distinctive and fancy trademark "Kanti Kaka" with a distinct label mark. The plaintiff had contended that the said goods were sold extensively and continuously throughout India and due to long experience in goods of the present nature and standard quality of the goods, the plaintiff had acquired name and fame in so far as the particular product was concerned and the mark / label of the product had acquired tremendous reputation and goodwill in the market. It was contended that the distinct mark "Kanti Kaka" was adopted in the year 2016 and the unique and distinctive mark "Kanti Kaka"
(word per se) and "Kanti Kaka" (Label) from the year 2018. It was submitted that the plaintiff had started sale of the said goods with attractive and unique artistic label since April, 2018. It was contended that the art work of label of the product was prepared by hiring an artist named Devang Goswami, Executive Designer of one M/s. White Lotus Industries Ltd. Surat, who had been fully paid for the art work had exclusively assigned mark / label exclusively in favour of the plaintiff forever. It was further contended that the plaintiff had filed Copyright application for said mark / label before the Deputy Registrar of Copyright at New Delhi and whereas the plaintiff has been issued Copyright Registration Certificate No.A-143791/2022. The plaintiff had also contended that he had extensively promoted the said trademark and he had made considerable expense each year Page 5 of 21 Downloaded on : Fri Jul 05 22:06:13 IST 2024 NEUTRAL CITATION C/AO/94/2024 ORDER DATED: 24/06/2024 undefined for sale promotion. It was thus contended that the plaintiff had become owner of the said mark / label by virtue of prior adopter and prior long continuous and uninterrupted use in the open market. It is alleged in the said Suit that the defendant was also engaged in the business of processing and marketing betel nut with trade name of "Kranti Kaka" with a label, which is identical to the label of plaintiff. It was contended that since the impugned mark / label being used by the defendant was substantially material reproduction of the art work of the mark / label of the plaintiff, the plaintiff had issued a cease and desist notice to the defendant. It was contended that while the defendant in his reply had sought to settle the matter amicably, upon the plaintiff issuing rejoinder notice, the defendant had stopped use of the impugned mark / label in the market. It was contended that later on, upon the plaintiff coming to know that the defendant was continuing with the action of usage of impugned mark / label by imitating artistic work etc. therefore, a Suit had been filed before the learned District Court, Dahod that upon the defendant filing an application under Order 7, Rule 11 of CPC, the same was allowed and vide order dated 18.04.2023, the learned District Court had rejected the plaint. The plaintiff had preferred First Appeal before this Court and whereas vide order dated 25.09.2023, learned Coordinate Bench had rejected said appeal. According to the plaintiff, the Suit was dismissed on the ground of lack of jurisdiction and whereas that being the case, the plaintiff would not be precluded from filing a fresh plaint with very selfsame cause of action. It was contended that the defendant had deliberately adopted the trade mark "Kranti Kaka Ni Sopari" along with a complete imitation of copyrighted work along with lay-out, placement of features and Page 6 of 21 Downloaded on : Fri Jul 05 22:06:13 IST 2024 NEUTRAL CITATION C/AO/94/2024 ORDER DATED: 24/06/2024 undefined artistic work and colour combination of the plaintiff and thus, not only was the defendant passing of the goods, as the same of the plaintiff, but defendant had also imitated the entire artistic work of the plaintiff. The Suit had been filed along with an application for grant of interim injunction under Order 39, Rule 1 and 2 read with Section 151 of CPC. The plaintiff in support of his plaint had produced various documents also.
8. On the other hand, the defendant had appeared and had filed an application Exhibit 10 under Order 7, Rule 11 read with Section 11 of CPC inter alia praying for rejection of the plaint since the Suit according to the defendant was barred by res judicata. It was also contended that copyright of the plaintiff would not subsist as per Section 15(2) of the Copyright Act since it was printed on more than 50 goods / products by an industrial method or process and therefore, the Suit would not according to the defendant, survive.
9. As noted hereinabove, learned District Court had heard both the applications below Exhibit 5 and Exhibit 10 jointly and had while rejecting the application under Order 7, Rule 11, allowed the application below Exhibit 5, being aggrieved by the same, the defendant has preferred present Appeal From Order.
10. Heard learned advocate Mr. Saifullah for the plaintiff, who would inter alia contend that the learned District Court had erred in granting interim injunction in favour of the plaintiff without considering the fact that the plaintiff could not establish that he had an exclusive trademark over the mark "Kanti Kaka". It is submitted that while the trademark application by the plaintiff was of the year 2018, whereas Page 7 of 21 Downloaded on : Fri Jul 05 22:06:13 IST 2024 NEUTRAL CITATION C/AO/94/2024 ORDER DATED: 24/06/2024 undefined the defendant was prior user of the mark. It is also contended that there is delay in filing of the present Suit, more particularly, according to learned advocate, the cease and desist notice was issued in the year 2021 whereas the plaintiff had filed a Trade Mark Suit before the District Court, Dahod, in the year 2023 and whereas while the plaint had been rejected by the learned District Judge in the month of April, 2023 and confirmed by learned Coordinate Bench of this Court in the month of September, 2023 and whereas the present Suit had been filed in the month of October, 2023. It is submitted that there is no explanation coming forth as to why the Suit had been preferred for the first time two years after issuance of the cease and desist notice. It is also contended by learned advocate that the mark of the defendant "Kranti Kaka" is distinct from the mark of the plaintiff and the label is also not similar to the goods of the plaintiff. Thus submitting learned advocate sought intervention of this Court against the impugned order passed by the learned District Court.
11. Learned advocate Mr. Saifulla would submit that the plaintiff did not establish any exclusive claim on the mark "Kanti Kaka". Learned advocate would rely upon the decision of High Court of Andhra Pradesh in the case of M/s. Trinethra Super Retail Private Ltd. Vs. Mee Trinetra Trading Private Ltd. reported in CDJ 2011 APHC 291, wherein the scope of inquiry with regard to grant of interlocutory injunction is explained. It is contended by learned advocate that the Court has to take into consideration along with prima facie case the other two factors namely balance of convenience and irreparable loss while granting interim injunction and whereas learned advocate Mr. Saifulla would emphatically rely upon the observation that the Page 8 of 21 Downloaded on : Fri Jul 05 22:06:13 IST 2024 NEUTRAL CITATION C/AO/94/2024 ORDER DATED: 24/06/2024 undefined plaintiff could be compensated by cost, if it is found ultimately that the defendant tried to capture the market on basis of goodwill of the plaintiff. Learned advocate would also rely upon the observation that the trademark law should not be resorted to enjoy the business or goodwill of another trader. Learned advocate would also submit that onus on the Court to ensure that the rights of the parties are balanced and an equitable relief is granted where generic or common words are used for trademark as in the present case, where the word "Kaka", which connotes as uncle has been used.
12. On the other hand, the impugned decision was sought to be supported by the learned senior advocate Mr. Toliya, who would submit that no error whatsoever has been committed by the learned District Court, which would require interference by this Court. Learned senior advocate would submit that the District Court has inter alia considered and prima facie come to the conclusion that while the plaintiff and defendant are dealing with the manufacturing, marketing and processing of the same product i.e. Betel Nut, the defendant could not establish prior use and further that the label of the defendant is strikingly similar to the label of the plaintiff and whereas the same is likely to create confusion amongst the consumers and thus, the District Court has come to the conclusion that all three factors for grant of interim relief i.e. prima facie case, balance of convenience and irreparable loss in favour of the plaintiff and thereafter, granted interim injunction.
13. Learned senior advocate would also rely upon the decision of the Hon'ble Supreme Court in the case of Cadila Healthcare Vs. Cadila Page 9 of 21 Downloaded on : Fri Jul 05 22:06:13 IST 2024 NEUTRAL CITATION C/AO/94/2024 ORDER DATED: 24/06/2024 undefined Pharmaceutical reported in 2001(5) SCC 73, where the Hon'ble Supreme Court has inter alia laid down certain questions for considering the deceptive similarity in an action for passing of. Learned senior advocate has also relied upon the observations of the Hon'ble Supreme Court in the case of Midas Hygiene Industries Pvt. Ltd. Vs. Sudhir Bhatia reported in 2004(3) SCC 90, wherein Hon'ble Supreme Court has inter alia observed that mere delay in bringing action with regard to infringement either of trademark or copyright would not defeat grant of injunction and that grant of injunction becomes necessary if it prima facie appears that adoption of mark was itself dishonest. Learned senior advocate would therefore, submit that learned District Court having not committed any error, this Court may not interfere with the impugned decision.
14. Heard learned advocates for the respective parties and perused the documents on record. At the outset before considering the submissions made by the learned advocates for the respective parties and before evaluating the impugned decision, this Court deems it appropriate to refer to certain decisions of the Hon'ble Supreme Court as well as of the Bombay High Court, which would have direct bearing on the issue on hand. The Hon'ble Supreme Court in the case of Laxmikant V. Patel Vs. Chetanbhai Shah reported in (2002) 3 SCC 65 has inter alia explained the law with regard to a claim for passing of and grant of injunction in such a case. Paras 8 to 13 of the said decision being relied for the present purpose is reproduced herein below for benefit.
"8. It is common in the trade and business for a trader or a businessman to adopt a name and/or mark under which he would carry on his trade or business. According to Kerly Page 10 of 21 Downloaded on : Fri Jul 05 22:06:13 IST 2024 NEUTRAL CITATION C/AO/94/2024 ORDER DATED: 24/06/2024 undefined (Law of Trade Marks and Trade Names, Twelfth Edition, para 16.49), the name under which a business trades will almost always be a trade mark (or if the business provides services, a service mark, or both). Independently of questions of trade or service mark, however, the name of a business (a trading business or any other) will normally have attached to it a goodwill that the courts will protect. An action for passing-off will then lie wherever the defendant companys name, or its intended name, is calculated to deceive, and so to divert business from the plaintiff, or to occasion a confusion between the two businesses. If this is not made out there is no case. The ground is not to be limited to the date of the proceedings; the court will have regard to the way in which the business may be carried on in the future, and to its not being carried on precisely as carried on at the date of the proceedings. Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently.
9. It will be useful to have a general view of certain statutory definitions as incorporated in the Trade Marks Act, 1999. The definition of trade mark is very wide and means, inter alia, a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others. Mark includes amongst other things name or word also. Name includes any abbreviation of a name.
10. A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, Page 11 of 21 Downloaded on : Fri Jul 05 22:06:13 IST 2024 NEUTRAL CITATION C/AO/94/2024 ORDER DATED: 24/06/2024 undefined the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.
11. Salmond & Heuston in Law of Torts (Twentieth Edition, at p.395) call this form of injury as injurious falsehood and observe the same having been awkwardly termed as passing off and state:-
"The legal and economic basis of this tort is to provide protection for the right of property which exists not in a particular name, mark or style but in an established business, commercial or professional reputation or goodwill. So to sell merchandise or carry on business under such a name, mark, description, or otherwise in such a manner as to mislead the public into believing that the merchandise or business is that of another person is a wrong actionable at the suit of that other person. This form of injury is commonly, though awkwardly, termed that of passing off ones goods or business as the goods or business of another and is the most important example of the wrong of injurious falsehood. The gist of the conception of passing off is that the goods are in effect telling a falsehood about themselves, are saying something about themselves which is calculated to mislead. The law on this matter is designed to protect traders against that form of unfair competition which consists in acquiring for oneself, by means of false or misleading devices, the benefit of the reputation already achieved by rival traders."
12. In Oertli Vs. Bowman (1957) RPC 388, (at page 397) the gist of passing off action was defined by stating that it was essential to the success of any claim to passing off based on the use of given mark or get-up that the plaintiff should be able to show that the disputed mark or get-up has become by user in the country distinctive of the plaintiffs goods so Page 12 of 21 Downloaded on : Fri Jul 05 22:06:13 IST 2024 NEUTRAL CITATION C/AO/94/2024 ORDER DATED: 24/06/2024 undefined that the use in relation to any goods of the kind dealt in by the plaintiff of that mark or get up will be understood by the trade and the public in that country as meaning that the goods are the plaintiffs goods. It is in the nature of acquisition of a quasi-proprietary right to the exclusive use of the mark or get-up in relation to goods of that kind because of the plaintiff having used or made it known that the mark or get-up has relation to his goods. Such right is invaded by anyone using the same or some deceptively similar mark, get- up or name in relation to goods not of plaintiff. The three elements of passing off action are the reputation of goods, possibility of deception and likelihood of damages to the plaintiff. In our opinion, the same principle, which applies to trade mark, is applicable to trade name.
13. In an action for passing off it is usual, rather essential, to seek an injunction temporary or ad-interim. The principles for the grant of such injunction are the same as in the case of any other action against injury complained of. The plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction. According to Kerly (ibid, para 16.16) passing off cases are often cases of deliberate and intentional misrepresentation, but it is well- settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. Christopher Wadlow in Law of Passing Off (1995 Edition, at p.3.06) states that the plaintiff does not have to prove actual damage in order to succeed in an action for passing off. Likelihood of damage is sufficient. The same learned author states that the defendants state of mind is wholly irrelevant to the existence of the cause of action for passing off (ibid, paras 4.20 and 7.15). As to how the injunction granted by the Court would shape depends on the facts and circumstances of each case. Where a defendant has imitated or adopted the plaintiffs distinctive trade mark or business name, the order may be an absolute injunction that he would not use or carry on business under that name. (Kerly, ibid, para 16.97)."
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15. The Hon'ble Supreme Court has inter alia observed that a name under which a business is carried out would generally be a trademark, which will normally have a goodwill attached to it, which would be protected by the Courts. It is further observed that when a defendant Company through its name or intended name intents to deceive or diverts the business from the plaintiff or to create a confusion between the parties then an action for passing of would lie. This according to the Hon'ble Supreme Court would be predominant factor for making out case for passing of. It is further observed by the Hon'ble Supreme Court that where there is probability of confusion in businesses, then even if adoption of name was bona fide, then also injunction would be granted. The Hon'ble Apex Court has further explained that for succeeding in a claim of passing of based on the use of a mark or get-up, the plaintiff should able to show that the mark in question or get-up has become by usage distinctive of the plaintiff's goods resulting in any goods of the kind which were being dealt by the plaintiff with his mark or get-up would be immediately associated and understood by the public as being the goods of the plaintiff. It is further explained that few elements of passing of action are reputation of goods, possibility of deception and likelihood of damage to the plaintiff. The Hon'ble Supreme Court has further observed that in an action for passing of, it is essential to see injunction and whereas grant thereof would be governed by the same principle as in normal action / suits.
In the case of Cadila Healthcare (Supra), the Hon'ble Supreme Court has inter alia laid down factors, which are to be considered while deciding the question of deceptive similarity in an action for passing of. Para 35 of the said decision being relevant for the present purpose Page 14 of 21 Downloaded on : Fri Jul 05 22:06:13 IST 2024 NEUTRAL CITATION C/AO/94/2024 ORDER DATED: 24/06/2024 undefined is reproduced herein for benefit.
"35. Broadly stated in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered:
a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.
b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
c) The nature of the goods in respect of which they are used as trade marks.
d) The similarity in the nature, character and performance of the goods of the rival traders.
e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
f) The mode of purchasing the goods or placing orders for the goods and
g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks."
16. This Court also seeks to rely upon the observation of the Bombay High Court in the case of Cutix Biotech Vs. Serum Institute of India Pvt. Ltd. reported in 2021(6) Mh. L.J. 288. Bombay High Court was inter alia considering an appeal under Section 13 of the Commercial Courts Act, 2015, whereby District Judge had rejected an application for interim relief by the appellant before High Court. The Bombay High Court at para 4, after referring to the judgments referred to by the parties with regard to grant of interim injunction in a Suit for passing of, has inter alia observed at para 5 has as thus. Para 5 of the Page 15 of 21 Downloaded on : Fri Jul 05 22:06:13 IST 2024 NEUTRAL CITATION C/AO/94/2024 ORDER DATED: 24/06/2024 undefined said decision is reproduced herein below.
"5. Basic principles from the above decision are as follows. Passing off is a tort in Common law to enforce rights regarding unregistered trademark. It is an action in equity. It is based on the principle that no one should use dishonest means to destroy his competitor's business. The law of passing off is developed to prevent unscrupulous persons from benefiting from the reputation and goodwill earned by an honest business. Based on this principle rooted in equity, the Courts initiate measures to prevent passing off. In such cases, the order of injunction ensures that no one should present his goods and services to the customers as of another party with goodwill in respect of the same and seek benefit therefrom. To establish passing off by the respondent, the applicant must first establish goodwill and reputation attached to his goods and services. Second, the applicant must show that the respondent's acts are likely to lead the public to believe that the goods and services offered by the respondent are goods and services of the applicant, and third, the applicant is likely to suffer or has suffered damage. Under our jurisprudence of passing off action, these three principles are referred to as the Classical Trinity. Further nuances of these three tests are developed. To determine confusion, the test is of a person of average intelligence and imperfect recollection. Whether these ingredients are established is to be determined in the facts of each case. The courts employ a higher standard of scrutiny regarding medicinal products because any confusion regarding these products may cause harm greater than the ordinary products. While examining the judicial precedents, the distinction between an act of infringement of a registered trademark and passing off has to be remembered. With this prefix on the position of law, we now turn to the facts and discussion."
17. The High Court of Bombay has inter alia reiterated the classical trinity i.e. 3 principles which would predominantly apply in a case of passing of the principles being that the applicant has to establish goodwill and reputation attached to its goods, that the applicant must Page 16 of 21 Downloaded on : Fri Jul 05 22:06:13 IST 2024 NEUTRAL CITATION C/AO/94/2024 ORDER DATED: 24/06/2024 undefined show that the actions of the respondent are likely to deceive public into believing that the goods of the respondent are goods of the applicant and that the applicant is likely to suffer or has suffered damages.
18. Now having referred to the applicable legal principles, this Court would analyze the facts from the perspective of the said principles. In the instant case, the plaintiff has contended that the label "Kanti Kaka" was created at his behest in the year 2019 and he had applied for and has been issued copyright registration certificate in the year 2022 under the Copyright Act with regard to said label. It is also the case of the plaintiff that he has applied for trademark for "Kanti Kaka" on 27.04.2018, application for "Kanti Kaka Ni Sopari" dated 25.07.2019 etc. The plaintiff has also submitted details of his turnover from the year 2018-19 to August, 2023, which would show gradual but phenomenal increase in sale. Thus, it would be prima facie clear that the plaintiff has established a reputation in the product, which he is selling in the open market.
19. As regards the goods offered by the respondent likely to cause confusion and / or deceive the public to believe that same are goods of the plaintiff, it would prima facie appear that the trade mark "Kanti Kaka" and the mark used by the defendant "Kranti Kaka" are deceptively similar. Learned District Court has also observed that the label of defendant is strikingly and deceptively similar to the label of the plaintiff except for the word "R", which is inserted in word 'Kranti' as compared to word 'Kanti'. Learned District Court has also observed that deceptively similar label of the defendant where colour Page 17 of 21 Downloaded on : Fri Jul 05 22:06:13 IST 2024 NEUTRAL CITATION C/AO/94/2024 ORDER DATED: 24/06/2024 undefined combination, style, font and words are similar, could lead to confusion amongst consumers, who are largely ill-literate, which would in all likelihood to cause damage and loss of reputation to the plaintiff.
20. Prima facie to this Court, it would appear that the learned District Court has evaluated the issue from the perspective of classical trinity referred to hereinabove.
21. It would also appear as noticed hereinabove that the learned District Court had considered the issue from perspective of the Copyright Act and had inter alia come to a prima facie conclusion that the plaintiff has artistic work i.e. the label registered under the Copyright Act, whereas it is not the contention of the defendant that he is prior user of the said label. As noticed hereinabove, learned District Court has also observed that:
"Looking to the picture of goods of both the parties which is reproduced above, the plaintiff label is "KANTI KAKA" where the defendants label is "KRANTI KAKA" and the name as such are strikingly similar and looking to the picture one would hardly notice the letter "(R)" and which would amount to misrepresentation to the customers. Further, apart from the word "R", looking to the label, style, colour combination of read and green, font and the colour used in packaging the label "KRANTI KAKA" used by the defendant is deceptively similar to that of plaintiff. As such the label "KANTI KAKA" used by the plaintiff and the label "KRANTI KAKA" used by the defendant are phonetically, visually and structurally similar. The plaintiff has applied for trademark and the plaintiff has also registered the artistic work "KANTI KAKA NI SUPARI" under the copyright. Looking to the picture reproduced above, the defendants goods label, colour combination, style, font, Page 18 of 21 Downloaded on : Fri Jul 05 22:06:13 IST 2024 NEUTRAL CITATION C/AO/94/2024 ORDER DATED: 24/06/2024 undefined words are deceptively similar to that of plaintiff and considering the product with which the party to the suit are dealing with i.e. manufacturing, marketing and processing of betel nut (Supari) which is largely purchased by consumers who are illiterate, it is likely to create confusion among the consumer resulting in deception and likelihood of damage and loss of reputation to the plaintiff."
To this Court, prima finding arrived at by the learned District Court cannot be faulted with.
22. In so far as the contention of learned advocate for the petitioner that the action was delayed, this Court seeks to rely upon the decision of the Hon'ble Supreme Court in case of Midas Hygiene Industries Pvt. Ltd. (Supra), more particularly para 5 whereof, where Hon'ble Supreme Court has inter alia observed that in case of infringement of trademark or copyright, the present being inter alia an action for infringement of copyright, normally an injunction must follow and that mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. As a matter of fact, Hon'ble Supreme Court has further observed that grant of injunction also becomes necessary, if it prima facie appears that adoption of the mark was itself dishonest.
23. In prima facie opinion of this Court, though learned District Court has not used the term 'dishonest' specifically yet, on perusal of the para 17 as noticed by this Court hereinabove, coupled with the observations that the defendant did not contend that he is prior user of the goods nor produced any document in support of such contention and the words deceptive similar ascribed to the label of the defendant while comparing the same with label of the plaintiff, Page 19 of 21 Downloaded on : Fri Jul 05 22:06:13 IST 2024 NEUTRAL CITATION C/AO/94/2024 ORDER DATED: 24/06/2024 undefined could clearly be read to mean that prima facie the adoption of the mark / label by the defendant was dishonest and thus an injunction was absolutely necessary and whereas delay in bringing action would not be of any consequence.
24. In so far as the decision of the High Court of Andhra Pradesh, while the same may not be binding on this Court, yet it would appear that there is no specific finding in the said decision, which would help the cause of the defendant herein. As such, in so far the observation with regard to grant of compensation, the observation of the Hon'ble Supreme Court in case of Midas Hygiene Industries Pvt. Ltd. as referred to hereinabove would hold the field as against observation of Andhra Pradesh High Court.
As regards reference to generic term, it does not appear that the defendant at any point of time, was seeking to base his claim on the ground that the term "Kaka" being a generic term and thus would not entitle the plaintiff to claim any exclusive right thereupon. Be that as it may, it would appear that generic term is qualified by a name and whereas the mark / label is not the generic term, but name of a person along with generic term which makes the term unique and distinct. The defendant is also not using the generic term only rather the defendant is also qualified generic term with a proper noun i.e name of a person and seeking to use said proper noun and generic name as his label / mark. Thus, the observations of High Court of Andhra Pradesh, would not in any manner benefit and advance the cause of the defendant.
25. In view of the above discussion, more particularly, since it does not Page 20 of 21 Downloaded on : Fri Jul 05 22:06:13 IST 2024 NEUTRAL CITATION C/AO/94/2024 ORDER DATED: 24/06/2024 undefined appear to this Court that the learned District Court has while granting interim injunction in favour of the plaintiff, exercised discretion arbitrarily, capriciously or perversely and whereas this Court is of the opinion that learned District Court has exercised the discretion reasonably in a judicious manner, therefore, no interference of this Court is called for in present Appeal and hence, the same fails and is hereby disposed of as rejected.
In view of disposal of the main appeal, Civil Application stands disposed of.
(NIKHIL S. KARIEL,J) Y.N. VYAS Page 21 of 21 Downloaded on : Fri Jul 05 22:06:13 IST 2024