Delhi District Court
M/S Sumangal Calendar Company vs Ramesh Chandra Gupta & Co on 18 May, 2010
IN THE COURT OF SHRI HARISH DUDANI,
ADDITIONAL DISTRICT JUDGE-15 (CENTRAL) : DELHI
Suit No.175/08/01
1. M/s Sumangal Calendar Company
172, M.M.G.S. Marg,
Dadar, Mumbai-400 014
through the Partner
2. Sumangal Press Private Limited
172, M.M.G.S. Marg,
Dadar, Mumbai-400 014
through the Managing Director ..........Plaintiffs
Versus
Ramesh Chandra Gupta & Co.,
through the proprietor S. P. Garg,
60/13, Ramjas Road,
Karol Bagh, New Delhi ..........Defendant
Date of Institution of Suit : 26.07.2001
Date of Decision : 18.05.2010
JUDGEMENT
1. This is a suit for declaration, injunction and consequential reliefs, filed by the plaintiff.
2. The plaintiff has filed the abovenoted suit stating therein that the plaintiff no. 1 is a partnership firm duly registered under the Indian Partnership Act, 1932 and carries on an old, established and reputed business interalia as printers and publishers of almanacs, books, periodicals and calendars (hereinafter called the said goods) bearing the trade mark Suit No. 175/08/01 1 "KALNIRNAY" since the year 1972 and plaintiff no. 2 is a company incorporated under the Companies Act, 1956 and carries on an old and established business interalia as partners and publishers of aforesaid goods under the exclusive licence from plaintiff no. 1 and has acquired wide and enviable reputation due to superior quality and high efficacy of its said goods and is almost a household name in the business of the printing and publishing of the above mentioned goods. It is stated that the plaintiffs have already established their goodwill and repertoire synonymous with the trade mark bearing the letters "KALNIRNAY".
3. It is stated in the plaint that the defendant has been printing, publishing and selling calendars under the mark and/or the name interalia containing the word KALNIRNAY prominently displayed thereon and is hence passing off its calendars as and for the plaintiffs' well known said goods bearing the mark "KALNIRNAY" and the same is causing great damage in the business of the plaintiffs and is an infringement of the rights of the plaintiffs under the Trade Marks Act. In about the year 1972, the plaintiff no. 1 commenced its business of printing and publishing almanac, books, periodicals and calendars bearing the composite trade mark interalia containing the word or the expression KALNIRNAY as its leading and essential feature. In or about the year 1982, some of the partners of plaintiff no. 1 firm and their family members promoted a private limited company, namely, Sumangal Press Private Limited i.e. Plaintiff no. 2 interalia for carrying on the same business of printing, publishing and marketing of the said goods and in or about the year 1986, the plaintiff Suit No. 175/08/01 2 no. 1 granted a common law licence in favour of plaintiff no. 2 to use the trade mark of plaintiff no. 1 KALNIRNAY in relation to the said goods and since then plaintiff no.2 has been printing, publishing and marketing said goods under the said trade mark KALNIRNAY as its leading and essential feature. Since the beginning, the plaintiffs have been continuously and extensively printing, publishing and marketing its said goods and particularly the calendars under the trade mark KALNIRNAY and due to high quality of paper, printed matter and display the plaintiffs said goods are immensely popular amongst all cross sections of people and the said popularity is reflected by the ever increasing sales figures and advertisement revenue earned by the plaintiffs during all these years. It is stated in the plaint that in the beginning the plaintiffs were printing, publishing ad marketing the said goods in Marathi, however, very soon the plaintiffs started printing, publishing and marketing said goods in other languages and today the plaintiff no. 2 publishes said goods almost in all major languages including, Marathi, Hindi, Gujarati, English, Tamil, Telugu, Kannada, Bengali, etc. There is a considerable demand for various editions of plaintiffs' KALNIRNAY from Indian Communities settled abroad and, thus, the plaintiffs have acquired tremendous goodwill and reputation in the trade mark KALNIRNAY not only in India but also internationally. The plaintiffs have spent sizeale amount by way of publicity and promotional expenses to popularise and promote sales of its calendars bearing the trade mark KALNIRNAY and the said trade mark has become distinctive of the plaintiff's goods and exclusively connotes and denotes to the members of trade Suit No. 175/08/01 3 and public the goods printed, published and sold by the plaintiffs and none else. The word KALNIRNAY forms a memorable part of plaintiffs' trade mark and is prominently appearing on the said goods. The plaintiffs' advertisements also emphasize the said word KALNIRNAY and consequently, the members of the trade and public desirous of buying the plaintiffs' said goods demand it with reference to the word KALNIRNAY and it is this prominent word KALNIRNAY which distinguishes the plaintiffs' goods from those printed and published by others and in the circumstances, the plaintiffs have acquired proprietary right in the word KALNIRNAY and are entitled to its exclusive use in relation to the said goods. On 08.01.1977, plaintiff no. 1 applied for and obtained registration of its composite trade mark interalia containing the word KALNIRNAY in respect of panchangs, books, periodicals and calendars under the Trade and Merchandise Marks Act, 1958 under No. 322232 in Class 16. However, as at the time of considering the application of plaintiff no. 1 for registration of the said trade mark the Registrar had raised the objection to the registrability of the said composite mark under Section 9 of the Act on the ground that the word KALNIRNAY was not considered to be prima-facie distinctive and as the plaintiff no. 1 did not lead evidence of user and acquired distinctiveness of the said trade mark for lack of proper legal advise, the Registrar asked plaintiff no. 1 to disclaim the expression KALNIRNAY while accepting the plaintiff no. 1's trade mark for registration and accordingly plaintiff no. 1 agreed to the condition of disclaimer of the said word. However, the plaintiff no.1 has now made a fresh application Suit No. 175/08/01 4 for obtaining registration of the said trade mark without disclaimer of the said word, which is pending. It is stated that the disclaimer of the word KALNIRNAY in the registered trade mark No. 322232 of plaintiff no. 1 does not take away common law right of plaintiff no. 1 to exclusive use of the word mark KALNIRNAY.
4. It is stated in the plaint that in or about December, 2000, the plaintiffs came to learn that the defendant is printing, publishing and marketing Hindi calendars under the name or trade mark KAL JYOTISH NIRNAY interalia containing the word mark KALNIRNAY prominently displayed on the calendars and is thereby causing the consumers into buying inferior quality of the defendant's calendars as and for those of the plaintiffs. The plaintiffs got issued a legal notice calling upon the defendant to refrain from carrying out the publications of the calendars using the words KALNIRNAY as the prominent feature. Instead of refraining from the use of the trade mark over which the plaintiffs have also perfected right of exclusivity as per common law rights, the defendants filed a suit before the Hon'ble High Court of Delhi and vide order dated 13.02.2001, the Hon'ble Court passed the interim order that the defendants herein shall not be threatened directly or indirectly by notice, circular, advertisement etc in respect of the trade mark KALNIRNAY. It is stated that having regard to the enviable reputation and goodwill acquired by it in the trade mark KALNIRNAY as aforesaid, the defendant's calendar bearing the trade mark KALNIRNAY, either by itself or in combination with any other word, will inevitably cause deception and confusion in the Suit No. 175/08/01 5 minds of the consumers as well as traders and defendant's calendar is bound to be passed off as and for the plaintiff's well known goods and in the facts and circumstances of the case, it is obvious that the defendant has knowingly and deliberately adopted the impugned trade mark KAL JYOTHISH NIRNAY with a view to pass off its goods as and for the goods of the plaintiffs and thereby make illicit gains. It is prayed that a decree in favour of the plaintiff and against the defendant declaring that the words KAL JYOTHISH NIRNAY is an infringement of the trade mark KALNINAY over which the plaintiffs have acquired exclusivity by continuous and long usage under the common law rights and also a decree of permanent injunction in favour of the plaintiff and against the defendants restraining the defendants, its servants, dealers and agents from using in any manner the word KALNIRNAY or any other mark containing the word KALNIRNAY or any other mark deceptively similar to the plaintiff's mark KALNIRNAY so as to pass off or enable others to pass off the defendant's calendars as and for the calendars of the plaintiffs or in any other manner alongwith costs of the suit.
5. The defendant has filed WS and has contested the suit. In the WS, defendant has taken objection that the suit has not been instituted under the signature of the competent person and no averment in this regard has even been made in the plaint and, therefore, the suit is not properly instituted. The suit is grossly under valued for the purpose of court fees and jurisdiction and is liable to be dismissed on the ground of Suit No. 175/08/01 6 being improperly valued for the purpose of court fees and jurisdiction. The suit is liable to be stayed under the provisions of Section 10 CPC as issue in the present case is also directly and substantially in issue in a previously instituted suit between the same parties. It is denied that plaintiff no. 1 is an old, established or reputed business interalia as printer/publisher of almanacs books, periodicals and calendars bearing the trade mark "KALNIRNAY" since the year 1972 or thereafter. It is also denied plaintiff no. 2 carries on an old or established business as partners or publishers of the aforesaid goods under the licence from the plaintiff no. 1 or has acquired reputation due to superior quality of the said goods and that the plaintiff is almost a household name in the business of printing and publishing of the above mentioned goods. It is denied that any act of the defendant is causing any damage to the business of the plaintiffs or any infringement of the right of the plaintiff under the Trade Marks Act. It is also denied that in or about the year 1972, plaintiff no. 1 commenced its business or printing and publishing of almanics, book, periodicals and calenders bearing the composite trademark "KALNIRNAY" as its leading or essential features or that in the year 1982 some of the partners of first plaintiff firm and their family members promoted a private limited company, namely, plaintiff no. 2 to the suit. It is also denied that in or about the year 1986, plaintiff no. 1 granted a common law licence in favour of plaintiff no. 2 to use the plaintiff no.1's trade mark "KALNIRNAY". It is denied that the plaintiffs are pioneers in establishing and practicing of earning revenue through printing and publishing calenders and that plaintiffs goods Suit No. 175/08/01 7 are immensely popular amongst all cross-section of people. It is also denied that the members of trade and public desirous of buying the plaintiffs' said goods demand with reference to the word "KALNIRNAY" or that the said word is a prominent word used to distinguish the plaintiffs' goods from those printed or published by others. It is also denied that the plaintiffs have acquired any proprietary right in the word "KALNIRNAY" or are entitled to its exclusive use in relation to the said goods. It is submitted that the defendant started using the mark "KAL JYOTISH NIRNAY" in or about the year 1996 and has been continuously using the said mark since that date without any demure or protest from any third party. The defendant is not using the word "KALNIRNAY" but is using the word "KAL JYOTISH NIRNAY" and, therefore, no claim of any confusion or deception can be made against the defendant. Rest of the allegations have been denied by the defendant and defendant has sought dismissal of the present suit.
6. The plaintiffs have filed replication to the WS of defendant.
In the replication, the plaintiffs have reiterated the contents of the plaint and have controverted the allegations of defendant as alleged in the WS. It is stated that the suit is properly valued for the purposes of court fees and jurisdiction. It is also stated that the issues involved in the present suit are not in anyway directly or substantially an issue in previously instituted suit numbered as Suit No. 291/2000 in the Hon'ble High Court. It is denied that plaintiff no. 1 is not an old established or reputed business interalia as printer-publisher of almanacs books, periodicals and calenders bearing the Suit No. 175/08/01 8 trade mark "KALNIRNAY" since the year 1972 or thereafter..
7. From the pleadings of the parties, following issues were framed by my ld. Predecessor on 18.08.2004 :-
1. Whether plaint is liable to be stayed u/s 10 CPC?
OPD.
2. Whether plaintiff is entitled to the relief claimed? OPP.
3. Relief.
8. The plaintiff examined Shri Jayraj Jayant Salgaokar, partner of plaintiff no. 1 and Managing Director of plaintiff no. 2 as PW-1 and Shri Shailesh Vijay Pitkar, Accounts Manager of the plaintiff as PW-2.
9. The defendant examined Shri S. P. Garg, Proprietor of the defendant as DW-1.
10. I have heard the ld. Counsels for parties and carefully perused record. My findings on the specific issues are as under :-
11. Issue No. 1In para 3 of PO of WS, the defendant has taken the objection that the present suit is liable to be stayed under the provision of Section 10 of CPC as issue in the present suit is also directly and substantially in issue in a previously instituted suit between the parties bearing no. 291/2000. However, during the course of arguments, the present issue was not pressed. Moreover, Suit No. 174/08/01 (Old No. 291/2000) Suit No. 175/08/01 9 titled as S. P. Garg vs. Sumangal Calendar Co. & Anr. has been disposed of vide separate judgment of today. Hence, the present suit is not liable to be stayed. This issue stands answered accordingly.12. Issue No. 2
The case of the plaintiff is that the plaintiff has been publishing almanac, books, periodicals and calendars bearing the trade mark "KALNIRNAY" since the year 1972 and on 08.01.1977, plaintiff no. 1 applied for and obtained registration of its composite trade mark interalia containing the word "KALNIRNAY" under no. 322232 in class 16. However, at the time of registration of the said mark, the Registrar raised the objection to the registrability of the said composite mark under Section 9 of Trade and Merchandise Marks Act, 1958 on the ground that the word "KALNIRNAY" was not considered to be prima facie distinctive and as the plaintiff no. 1 did not lead evidence of user and having acquired distinctiveness of the said trade mark for lack of proper legal advice, the Registrar asked plaintiff no. 1 to disclaim the expression "KALNIRNAY" while accepting the plaintiff no.1's said trade mark for registration and accordingly plaintiff no. 1 agreed to the condition of disclaimer of the said word. The case of the plaintiff is that in December, 2000, the plaintiff came to know that defendant is printing, publishing and marketing Hindi calendars under the name and style of "Kal Jyotish Nirnaya" interalia containing the word mark "KALNIRNAY" and, thereby confusing the consumers into buying inferior quality of the defendant's calendars as and for those of the plaintiffs.Suit No. 175/08/01 10
13. The defendant has pleaded that the word "KALNIRNAY" is a descriptive word and no person is entitled to claim exclusive right of the use of the same. The defendant has further pleaded that the concept of publishing calendars is a common practice and such calendars are being published from almost all major cities by small publishers like the defendant for example "JAISHREE KALNIRNAY PANCHANG", "JAY HIND KALNIRNAY PANCHANG", "SHRI KALNIRNAY PANCHANG" etc. The defendant has stated that they started using the mark "Kal Jyotish Nirnaya" in or about the year 1996 and has been using continuously the said mark since then.
14. The contention of ld. Counsel for the defendant is that the word "Kal" stands for time and the word "Nirnaya" stands for decision. However, ld. Counsel for the plaintiffs has contended that although the word "Kal" stands for time and the word "Nirnaya" stands for decision and they are the words of dictionary but the plaintiffs have got the registration of the word "KALNIRNAY", hence, the defendant is not entitled to user of the said mark.
15. Our own Hon'ble High Court in Rich Products Corporation & Anr. vs. Indo Nippon Food Ltd., 2010 (42) PTC 660 (Del.) held :
32.6 The rights conferred by registration of a mark are encapsulated in Section 28 of the Trade Marks Act. Section 28 provides that subject to other provisions of the Trade Marks Act the registration of the mark shall confer on Suit No. 175/08/01 11 the owner exclusive right of use of the trademark in relation to the goods or services in respect of which the mark is registered, and consequently enable a registered proprietor to obtain necessary relief in the event of infringement of his trademark, in the manner provided in the Act. This is subject to the mark being a valid. The validity of the mark in an action for infringement can be enquired into either by the court or the statutory authority depending on where and at which stage the action is pending. [See Lowenbrau AG & Anr. v. Jagpin Breweries Ltd. & Anr., 157 (2009) DLT 791]. The right to exclusive use of a registered mark conferred upon the owner of such a mark is subject to conditions and limitations to which the registration is subjected to. In the context of the present case in my view sub-section (2) of Section 28 of the Trade Marks Act would bring within its ambit any disclaimers which are set out at the time of registration of the mark. (emphasis supplied)
36. Since lengthy submissions were made by both sides with respect to whether or not "WHIP TOPPING" is a generic and/or descriptive expression, it may be necessary to briefly touch upon this aspect of the matter.
The word "generic" ordinarily would mean that which has character of or belongs to a genus or class (see New Shorter Oxford English Dictionary, Edition 1993 at page 1074);
whereas the word "descriptive" would mean that which seeks to describe, characterized by description, consist of or concern with description or observable things or qualities (see New Shorter Oxford English Dictionary, Edition 1993 at page 644). Whether a word or expression is "generic" or "descriptive" or both is dependent on the facts and circumstances arising in a particular case. It is quite possible that a word or expression which is "generic", i.e. which refers to a genus or a class is also Suit No. 175/08/01 12 descriptive as the word by itself characterize the qualities of the product. The line dividing the two in certain cases may get blurred. The word "whip" by itself means, in the context of the present case, a light fluffy desert made with whipped cream or beaten eggs (see New Shorter Oxford English Dictionary, Edition 1993 at page 3670), while the word "topping" means a top layer or garnish put on food (see New Shorter Oxford English Dictionary, Edition 1993 at page3342). Similarly, the word "cream" means part of liquid that gathers at the top; froth etc. or a liquid rich in droplets or particles of the dispersed phase that forms a separate (especially upper) layer in an emulsion or suspension when it is allowed to stand or is centrifuged (see New Shorter Oxford English Dictionary, Edition 1993 at page 543). The words "Whip Topping", when juxtaposed would, in my view, be representative of toppings or garnishes for food items which have cream like quality. Therefore, it is, in my opinion, both "generic" as well as "descriptive" of the product. The submission of Mr. Gupta that the words "WHIP TOPPING" is distinctive because it relates to a non-dairy product is not substantiated by any evidence on record which would demonstrate that the words "WHIP TOPPING" are associated only with a cream which is not dairy based.
16. In Rhizome Distilleries P. Ltd. & Ors. vs. Pernod Ricard S.A. France & Ors., 2010 (42) PTC 806 (Del.) (DB), our own Hon'ble High Court held :
15. Very recently, the Division Bench of this Court in Cadila Health Care Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd., MANU/DE/2282/2009 : 2008 (36) PTC 168 [Del] upheld the decision of a Single Judge of this Court refusing an injunction against the use of the word "Sugar Free'. The Suit No. 175/08/01 13 Plaintiff is the manufacturer of the artificial sweetener sugar free, where as the Defendant had stated that its ice creams were sugar free or free of sugar. It was held that exclusivity could not be claimed in respect of ordinary words (or if we may say descriptive words) which are publici juris. The Division Bench also quoted with the approval the decision of the High Court of Bombay in Asian Paints Limited v. Home Solutions Retail (India) Ltd., 2007 (35) PTC 697 [Bom], wherein the learned Single Judge had declined an injunction holding that the words 'Home Solutions' are to be commonly found.
Jural opinion, therefore, is an averse to granting exclusivity to ordinary words. Our esteemed and learned Brother, Mukul Mudgal, J., had noted that 'Sugar Free' is neither a coined word nor an unusual juxtaposition of two English words especially when such expressions are commonly used. Although the Bench expressed their reservations for the decision of the European Court of Justice in Proctor & Gamble v.
Office of Harmonisation in the International Market (OHIM), (2002) RPC 17 (famously known as "Baby Dry Case"), it was noted that the proprietary character could be accorded to expressions which are syntactically unusual. In other words, there must be something unique to the choice of the word; it should neither be descriptive nor laudatory since everyone would be entitled to use such word(s). It would be wise, therefore, for any trader or manufacturer to use a coined or unique word if he expects proprietary right over and a consequent injunction to issue in respect of the user of such trademarks by rivals. If a new venture dealing in computers adopts the name 'Apple', we would expect Courts not to hesitate to grant an injunction against its user by third parties since the choice of the word 'Apple' has no connection whatsoever with computers. Obviously, if a Suit No. 175/08/01 14 party adopts the mark 'Imperial Apples' in connection with the apple trade, Courts would be loathe to grant an injunction for either word.
24. It is our analysis that no exclusive or proprietary rights can be claimed by either of the parties before us in respect of the word IMPERIAL which is not only in common parlance to be found in every dictionary, but also is laudatory in nature as it alludes to royalty or grandeur. With respect, we are not convinced that IMPERIAL refers only to royalty, empowering only such persons to take litigative umbrage. Illusions of royalty and grandeur are one of the sentiments resulting from imbibing spirits, and, therefore, IMPERIAL may justifiably be seen as descriptive.
17. The plaintiff examined Shri Jayraj Jayant Salgaokar as PW-1 who adduced evidence by way of affidavit Ex.PW1/A. PW-1 admitted in his cross-examination that the word Kal Nirnay is not an invented word and has not been conceived by them. Thereafter, PW-1 voluntarily stated in the cross-examination that the said word has been used in our Dharmshashtras. In para 11 of the plaint, the plaintiff has stated that on 08.01.1977, plaintiff no. 1 filed and obtained registration of composite trade mark interalia containing the word "KALNIRNAY". However, PW-1 stated in the cross- examination that copy of certificate of registration has not been exhibited. The contention of ld. Counsel for the defendants is that the registration which was obtained by the plaintiff under no. 322232 in class 16 is a composite registration consisting of wheel with spikes and the word Suit No. 175/08/01 15 "KALNIRNAY" and there is a disclaimer that the plaintiff shall not be entitled to exclusive use of the word "KALNIRNAY". It is to be noted that in para 11 of the plaint, the plaintiff has himself stated that while accepting plaintiff no.1's application for registration of trade mark, condition of disclaimer to use the word "KALNIRNAY" has been imposed. In the circumstances, in view of aforesaid discussions and on account of disclaimer, it is not open for the plaintiff to plead that the plaintiff only is entitled to use of the mark "KALNIRNAY" and the defendant is not entitled to use the word "KALNIRNAY" in any combination.
18. The contention of ld. Counsel for the plaintiff is that there is no deceptive similarity between the two words i.e. "KALNIRNAY" and "Kal Jyotish Nirnaya" .
19. In M/s Pidilite Industries Pvt. Ltd. vs. M/s Mittees Corporation and Another, 1988 (2) Arbitration Law Reporter 4 (Delhi), it was held :-
"......................Before, I take up the comparison of the two marks or the similarity or dissimilarity on the containers it would be opposite to state some well settled principles governing these matters, namely (1) it is always a question of fact in each case whether the deception or confusion is likely to be caused or not by use of the impugned trade mark; the court has to put itself in the position of an average customer and ask a question whether there is likelihood of deception or confusion or not and then answer the question on that basis, (2) the marks must be compared as a whole. It is not rights to take a portion of the word and say that because that portion of the word Suit No. 175/08/01 16 differs from the corresponding portion of the word in the other case, there is no sufficient similarity to cause confusion. The totality of the trade marks is to be seen to find out whether there is likelihood of deception or confusion or mistake in the minds of persons accustomed to the existing trade mark, (3) the likelihood of confusion or deception is to be seen in relation to average unwary customer, (4) it is the tendency to mislead or cause confusion that forms the gist of passing off action and the plaintiff need not establish the actual deception."
20. In Dabur (S. K. Burman) vs. Vikas Pharma, 1983 PTC 179, it was held :-
"Secondly. On the question whether there is any deceptive similarity between the two trade marks in question, I am of the opinion that there is a phonetic similarity. The vocal sounds of the two very much resemble. They produce the same sounds of speech with a slight difference of 'A'. In the pronunciation of word HAJMOLA AND HAZMOL. There is hardly any difference of note. HAJMOLA is the plaintiff's trade mark. Hazmol is the trade mark of the defendant except that the suffix 'A' is in addition in the plaintiff's trade mark, there is not much substantial difference between the two. The plaintiff has used the word 'J'. the defendant has used the word 'Z'. This is a distinction without any difference. The only difference is that the defendant do not have the word 'A" at the end of their trade mark 'HAZMOL'. In my opinion the buyers of the products are likely to be deceived and confused if the defendants are allowed to sell their products in the market........................."
21. In Lakme Ltd. vs. Subhash Trading, 1996 PTC (16), it has been held :-
Suit No. 175/08/01 179. 'In the case of K. R. Chinna Krishna Chettiar Vs. Ambal & Co. and another, reported in AIR 1970 SC 146 it has been held that the resemblance between the two marks must be considered with reference to the ear as well as the eye and ocular comparison is not always the decisive test. Therefore, even if there be no resemblance between the two marks that does not matter when there is a close affinity of sound between the distinctive features of the two marks. The Supreme Court further pointed out that merely because the distinctive words used in both the marks have distinctive meaning it cannot be said that the phonetic resemblance does not lead to confusion, when it is likely that majority of the customers are not capable of understanding the fine distinction between the meanings of the two words. In the same case the Supreme Court was called upon to consider whether there is striking similarity and affinity of sound between the words "AMBAL" and "ANDAL". After considering various decisions, the Supreme Court held that there is a close affinity of sound between the words "AMBAL" and "ANDAL". Similarly in the case of Ruston Vs. Zamindara Engg. (supra), the Supreme Court came to consider whether there was resemblance between the words "RUSTON" and "RUSTAM", and on consideration of various decisions came to uphold the decision of the High Court that there was deceptive resemblance between the words "RUSTON" and "RUSTAM" and therefore, the use of the bare word "RUSTAM"
constituted clear infringement of the plaintiff's trade mark "RUSTON"
13 ................................................................... .When both the words are articulated, it would be difficult for an ordinary prudent man to distinguish between the two sounds produced by the two words. Applying the test of phonetic resemblance as laid down by the Supreme Court I am of the view that there is a Suit No. 175/08/01 18 striking resemblance between the two words and there is a real danger of deception and confusion being caused by the two marks in view of the similarity and affinity of sounds between the words "LIKE ME" and "LAKME".
22. In Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories, AIR 1965 Supreme Court 980, it was held that in an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is in imitation, no further evidence is required to establish that the plaintiff's rights are violated.
23. In Corn Products Vs. Shangrila Food Products, AIR 1960 SC 142, the Hon'ble Supreme Court observed :-
"The question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the Court to decide that question. It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole."
Further, it is held in the said ruling as follows :
"Again in deciding the question of similarity between the two marks, we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them."Suit No. 175/08/01 19
24. PW-1 admitted in the cross-examination that the two words "KALNIRNAY" and "Kal Jyotish Nirnaya" are different from each other and, thereafter, he voluntarily stated that they have filed this suit for passing off and not for infringement of trade mark. Moreover, PW-1 himself admitted in the cross- examination that except the words, there is no other confusing similarity between the colour combination and get- up etc. There is no phonetic or visual similarity between the two words i.e. "KALNIRNAY" and "Kal Jyotish Nirnaya" and in the circumstances, it cannot be said that one who goes to buy products of the plaintiffs would end up buying the products of the defendant.
25. By way of the present suit, the plaintiffs have prayed for a decree of declaration thereby declaring that the word "Kal Jyotish Nirnaya" is infringement of the word "KALNIRNAY" over which the plaintiffs have claimed exclusive right and for a decree of permanent injunction thereby restraining the defendant from using in any manner the word "KALNIRNAY" or any other mark containing the word "KALNIRNAY" or any other mark deceptively similar to the plaintiffs' mark "KALNIRNAY".
26. In aforesaid discussions, it has been held that the plaintiff is not entitled to exclusive use of the word "KALNIRNAY" and there is no deceptive similarity between the words "Kal Jyotish Nirnaya" and "KALNIRNAY" and the plaintiff is not entitled to declaration to this effect. In the circumstances, the plaintiff is not entitled for the reliefs, as prayed. This issue stands answered accordingly.
Suit No. 175/08/01 2027. Issue No. 3 (Relief) In view of findings on issue no. 2 above, the plaintiff is not entitled to any relief, as prayed. Suit of the plaintiff is dismissed. Parties are left to bear their own costs. Decree sheet be prepared accordingly. File be consigned to Record Room.
(Announced in the open Court (HARISH DUDANI) on 18 May, 2010) th ADDL. DISTT. JUDGE-15 (CENTRAL) DELHI Suit No. 175/08/01 21