Delhi High Court
The Gillette Company Llc vs Tigaksha Metallics Private Ltd. & Anr on 9 July, 2018
Equivalent citations: AIRONLINE 2018 DEL 1233
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 9th July, 2018
+ CS(COMM) 153/2017
THE GILLETTE COMPANY LLC ..... Plaintiff
Through:
Mr. Sudhir Chandra & Mrs. Prathiba
M. Singh, Sr.Advs. with Mr. Vikram
Grover, Mr. Siddhanth Sharma & Mr.
Devanshu Khanna, Advs.
Versus
TIGAKSHA METALLICS PRIVATE LTD. & ANR ...Defendants
Through: Mr. Rahul Chitnis, Mr. R. Sudhinder,
Mr. Ranjit Shetty & Ms. Akanksha,
Advs. for D-1.
Mr. Sandeep Sethi, Sr.Adv. with Mr.
Ranjit Shetty, Mr. R. Sudhinder &
Ms.Akansha, Advs. for D-2.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
IAs No.2502/2017 (of plaintiff u/O XXXIX R-1&2 CPC) & 3523/2017 (of
defendants u/O XXXIX R-4 CPC)
1. The plaintiff has instituted the present suit against the two defendants
namely Tigaksha Metallics Private Limited and Supermax Personal Care
Pvt. Ltd., for permanent injunction restraining the defendants from infringing
the trade marks / / WILKINSON SWORD
LEMON SPLASH of the plaintiff by adopting the marks TALVAR and
CS(COMM) 153/2017 Page 1 of 36
and/or the device of a sword and/or deceptive variation/s of the
plaintiff‟s trade marks and from thereby passing off their goods as that of the
plaintiff and for ancillary reliefs of delivery, rendition of accounts, damages,
etc.
2. The suit came up before this Court first on 27 th February, 2017, when
while issuing summons of the suit, the defendants were restrained from
producing/manufacturing and/or from releasing the already manufactured
and packed goods under the trade mark „TALVAR‟ or the device mark
„TALVAR‟ with the sword.
3. The two defendants, besides filing their written statement, have also
filed application aforesaid under Order XXXIX Rule 4 of the Code of Civil
Procedure, 1908 (CPC). Replication has been filed by the plaintiff to written
statement of defendant No.2.
4. The senior counsel for the plaintiff and the senior counsel for the
defendant No.2 were heard on 20th March, 2017 and orders reserved.
5. The plaintiff, in the plaint has pleaded the following comparative
packaging of the plaintiff and the defendant‟s products:
CS(COMM) 153/2017 Page 2 of 36
CS(COMM) 153/2017 Page 3 of 36
and has further pleaded the following commonalities therein:
a) Use of „TALVAR‟ being literal translation of the word
„SWORD‟ which forms a prominent part of the plaintiff‟s registered
trade marks / / WILKINSON
SWORD LEMON SPLASH;
b) Use of a double-edged sword device along with the word
„TALVAR‟ which is conceptually and visually similar to depiction of
the sword in the plaintiff‟s registered trade marks
CS(COMM) 153/2017 Page 4 of 36
/ / WILKINSON SWORD LEMON
SPLASH;
c) Manner of use of the word „TALVAR‟ along with the device of
double-edged sword device i.e. which is conceptually
similar to the plaintiff‟s / ;
d) Representation of TALVAR i.e. in slant/italics
which is similar to ;
e) The plaintiff‟s registered marks /
/ WILKINSON SWORD LEMON SPLASH and the
defendant‟s mark / TALVAR are being used in respect of
identical products i.e. safety razor blades;
CS(COMM) 153/2017 Page 5 of 36
f) Use of the word „TALVAR‟ which also appears on the
packaging of products bearing the plaintiff‟s registered trade marks
viz. tagline „‟TALVAR KI DHAAR‟.
6. It is further pleaded by the plaintiff, (i) that its first registration of the
mark in Class 8 is of as far back as on 16th June, 1962
and of the mark in Class 3 of 11th July, 1996 and in
Class 21 of 7th February, 1997; (ii) that the plaintiff, for the first time in
December, 2016 came across products of the defendant under the impugned
mark; (iii) that the defendants, apart from the word „TALVAR‟, have also
adopted the device of double-edged sword to their product; (iv) that
dishonesty and mala fide is writ large from the defendants copying the
concept and the manner of representation of the plaintiff‟s trademark of
device of double-edged swords placed across the expression „WILKINSON
SWORD‟; the defendants have also adopted a literal translation of
„SWORD‟ viz. „TALVAR‟, solely on account of the fact that majority of the
Indian consumers seek plaintiff‟s product as „do talvar wale blades / talvar
blade‟ and the products under the trade marks of the plaintiff are offered for
sale under the tagline "TALVAR KI DHAAR"; (v) that the plaintiff‟s search
through records of the trademark registry also revealed that the defendant
No.2 has filed applications for registration of „TALVAR‟ in Class 8, on 16th
June, 2016, on proposed to be used basis; (vi) that the defendants, being in
the same line of business, were aware of the mark and reputation of the
CS(COMM) 153/2017 Page 6 of 36
plaintiff; (vii) that the defendants adoption and use of which are
deceptively similar to the plaintiff‟s registered trade marks, in relation to
identical goods/products, tantamounts to infringement of plaintiff‟s statutory
rights and leads to the defendants passing off their goods as that of the
plaintiff.
7. The defendant No.1 has contested the suit by filing a written
statement, merely pleading that it adopts the contents of the written
statement of the defendant No.2.
8. The defendant No.2 has contested the suit pleading, (a) that the
defendants manufacture and sell their shaving blades under various trade
marks including „ZORRIK‟; the defendants have coined various trade marks
comprising the word „ZORRIK‟ namely „ZORRIK PLATINUM‟, „ZORRIK
STAINLESS‟ and now „ZORRIK TALVAR‟; (b) that the defendants have
been selling the blades under the trade name „ZORRIK‟ for more than 50
years; (c) that the plaintiff used the word sword in combination with the
words „SUPER STAINLESS‟ and „SUPER PLATINUM‟; the defendants
use the word in combination of the „SUPER PLATINUM‟ and „SUPER
STAINLESS‟ and have been doing so for years, without any instance of
confusion or deception; (d) that in or about June, 2016, the defendants
conceived and invented the trade mark „TALVAR‟ and the device of
„TALVAR‟ with a sword, for their razor blades; (e) that the trade mark
„SWORD‟ is neither the registered trade mark of the plaintiff nor is
„TALVAR‟ a registered trade mark of the plaintiffs; in fact, „SWORDS‟ is
registered in the name of one Favourite Universal Abrasives Private Limited
CS(COMM) 153/2017 Page 7 of 36
and „SWORD‟ is registered in the name of KDN Tools Private Limited; the
plaintiff has concealed from the Court that they are not registered proprietor
of the word or device of „SWORD‟; (f) that the defendant No.2, on 16th June,
2016 also applied for registration of the trade mark „TALVAR‟ and device
mark „TALVAR with a sword‟, in Class 8; (g) that since the razor blade
under the trade mark „ZORRIK TALVAR with a sword‟ was launched in
June, 2016, the defendants have acquired a very high reputation and
goodwill for its razor blades and have between June, 2016 and February,
2017 sold razor blades bearing the trade mark „ZORRIK TALVAR with a
sword‟ worth more than Rs.6.87 crores and spent more than Rs.2 crores
towards advertisement; (h) that the target market of the plaintiff and the
defendants is totally different and the question of confusion or deception
does not arise; the price of the product of the plaintiff is much higher than
that of the defendants; (i) that the plaintiff‟s claim that representations
„WILKINSON SWORD‟ (device and word) constitute original artistic works
under the Copyright Act, 1957 is without any basis, as the plaintiff has not
shown the acquisition of rights from the artist who created the artwork; (j)
that the plaintiff always uses the trade mark „SWORD‟ in conjunction with
the word „WILKINSON‟; on the contrary, the defendants used the trade
mark „TALVAR‟ in conjunction with their house mark „ZORRIK‟; thus, the
products are easily distinguishable to a layman; (k) that the representation of
the swords (containing a fist guard) used in the device of the plaintiff is
different from the representation of the sword (without any fist guard) used
in the device of the defendant; (l) that the two trade marks are distinct from
each other; (m) that the consumers of the blades are barbers, who are experts
in the field and are able to distinguish between the two; and, (n) that the
CS(COMM) 153/2017 Page 8 of 36
plaintiff has approached the Court more than six months, after the defendants
have been using the mark.
9. The senior counsel for the plaintiff argued, (I) that the defendants, in
para 51 of the affidavit in reply to the application under Order XXXIX Rules
1&2 of the CPC, have denied that the products bearing the plaintiff‟s trade
mark „WILKINSON SWORD‟ (device or word) are sold with the tagline
"TALVAR KI DHAAR" or that the expression „TALVAR‟ is identified with
the products emanating from the plaintiff; attention is invited to the dangler
of the plaintiff‟s product / packaging and on which the words in Hindi
„TALVAR KI DHAAR‟ are found; (II) that the same shows the falsity of the
defence of the defendants; (III) that the mala fides of the defendants are also
evident from the fact that the defendant No.2 also applied for registration of
a mark infringing the '7 O‟CLOCK' mark/brand of the plaintiff and which,
on opposition by the plaintiff, was withdrawn; (IV) that „TALVAR‟ is the
equivalent of the word „SWORD‟; (V) that this Court has in the past granted
injunctions against such translated marks; an example is given of Sun : Suraj,
Peacock : Mayur cases and of Eno : Falaxar case of the Bombay High Court;
(Hindustan Liver Ltd. Vs. Pioneer Soap Factory 1983 PTC 211, Bhatia
Plastics Vs. Peacock Industries AIR 1995 Del 144 and J.C. Eno Ltd. Vs.
Vishnu Chunilal Co. 1940 XLII Bom. LR 1924); (VI) that the test is what is
the idea conveyed by the mark; (VII) that in any case, the plaintiff, besides
on the basis of infringement, has also sued on the basis of passing off; (VIII)
that the word „TALVAR‟ is also used in the radio advertisement of the
product of the plaintiff; (IX) attention is invited to para 10 of Laxmi Kant V.
Patel Vs. Chetan Bhai Shah (2002) 3 SCC 65; (X) what is to be seen is,
whether the mark used by the defendants is similar to the association/link in
CS(COMM) 153/2017 Page 9 of 36
the minds of the customers with respect to the plaintiff‟s mark; (XI) that the
barbers, who are admitted to be the customers of the plaintiff as well as the
defendants, refer to the product of the plaintiff as „TALVAR‟; (XII) that
though „SUN‟ used as a mark had no relationship to soap but „SWORD‟ has
a direct relationship to a blade; (XIII) attention was drawn to the judgment
dated 30th May, 2014 of the Division Bench of this Court in FAO(OS)
No.241/2014 titled Procter & Gamble Manufacturing (Tianjin) Co. Ltd.
Vs. Anchor Health & Beauty Care Pvt. Ltd.; (XIV) that the present is not a
case of similarity between two marks but of the two marks being the same;
(XV) that adoption by the defendants of the mark „TALVAR‟ is not honest;
(XVI) that there is no delay in the plaintiff approaching the Court but even
otherwise, delay is immaterial; reliance is placed on Midas Hygiene
Industries P. Ltd. Vs. Sudhir Bhatia 2004 (28) PTC 121 (SC); (XVII) that
J.C. Eno supra has been concurred with in Hitachi Ltd. Vs. Ajay Kumar
Aggarwal ILR 1996 1 Delhi 359; (XVIII) that a lis of the present kind is not
merely a private lis between two parties, inasmuch as the interest of the
consumers is also relevant; reliance is placed on Hindustan Pencils Pvt. Ltd.
Vs. Indian Stationery ILR (1989) I Delhi; (XIX) CD of the radio
advertisement of the plaintiff was handed over and attention was drawn to
page 196 of Part III file being the dangler hanging outside the barber‟s shop
of the products of the plaintiff.
10. Per contra, the senior counsel for the defendant No.2, (A) highlighted
the following differences in the packaging:
CS(COMM) 153/2017 Page 10 of 36
(i) while the bulk packaging of the product of the plaintiff is in
white and blue colour, the bulk packaging of the product of the
defendants is in red colour;
(ii) similarly, the unit packaging of the product of the plaintiff is in
white and blue colour, while the unit packaging of the product of the
defendants is largely in red colour with a small portion in white
colour;
(iii) while the mark of the plaintiff has two swords across with each
other, the mark of the defendants has a single sword;
(iv) while the mark of the plaintiff, in addition to the swords, has the
word „WILKINSON‟, the mark of the defendants, in addition to the
single sword, has the word „ZORRIK‟;
(v) the unit price of the product of the plaintiff is Rs.27/-, the unit
price of the product of the defendant is Rs.16/- only;
(B) that the test of deception, similarity and likelihood of confusion is not
satisfied; (C) that the barber, who deals with a blade multiple times in a day,
knows the difference; (D) that the defendants are not a start up and are the
second largest manufacturer/seller of the product in the world, having a
turnover of Rs.603 crores; (E) that the plaintiff‟s mark is a label mark and
not a word mark with a disclaimer for sword; (F) that the plaintiff has no
right of registration to exclusive use of the word „SWORD‟; (G) that the
entire case of the plaintiff is of the mark of the defendants having the word
„TALVAR‟, the Hindi equivalent of the word „SWORD‟ but the plaintiff has
no exclusive right to the word „SWORD‟; (H) reliance is placed on
Carlsberg India Pvt. Ltd. Vs. Radico Khaitan Ltd. 186 (2012) DLT 368
CS(COMM) 153/2017 Page 11 of 36
(DB) to contend that the two marks do not satisfy the essential features test
laid down by the Supreme Court in SM Dyechem Vs. Cadbury (2000) 5
SCC 573; (I) that the entirety of the mark has to be seen and merely parts of
the mark cannot be compared; (J) reliance is placed on Takkar (India) Tea
Company Vs. Soongachi Tea Industries Pvt. Ltd. 2010 (44) PTC 90 (Del),
where „GOLD LEAF‟ was not held to be deceptively similar to „SONA‟; (K)
that translated word per se is not an infringement; reliance is placed on J.K.
Oil Industries Vs. Adani Wilmar Limited 2010 (42) PTC 639 (Del), where
merely on account of appearance of the word „KING‟ on both the marks, no
case of infringement or passing off was held to be made out; (L) reliance was
placed on Kellogg Company Vs. Pravin Kumar Bhadabhai 1996(16) PTC
187 (Del) (DB), where from the mere writing of the word „Aims Aristo Corn
Flakes‟ at about the same place on a carton more or less the same size as that
of the appellant, no infringement of „Kellog‟s Corn Flakes‟ was found; (M)
attention was drawn to Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna
Pharmaceutical Laboratories AIR 1965 SC 980 laying down the test of
passing off; (N) reliance was placed on paras 12 & 14 of the judgment dated
10th March, 2017 of the Division Bench of this Court in FAO(OS)(COMM)
77/2016 titled Britannia Industries Ltd. Vs. ITC Limited to contend that for
grant of relief on the basis of passing off, it has to be established that the
mark has become distinctive and that in these days a difference in names is
enough to warn the public that they are getting one trader‟s goods and not
the other‟s; (O) that the plaintiff cannot insist that none else can claim its
blade to be as sharp as the edge of a sword; (P) that the plaintiff could not
have got the word „TALVAR‟ registered.
CS(COMM) 153/2017 Page 12 of 36
11. The senior counsel for the plaintiff, in rejoinder (i) drew attention to
page 168 of Part III file being the registration in Class 8 of the mark
to contend that there is no disclaimer with respect to the
word „SWORD‟ and the disclaimer was only to the word „WILKINSON‟;
(ii) drew attention to page 174 of Part III file being the registration of the
mark in Class 21 and which contains disclaimer with
respect to „SWORD AND PICTURE‟; (iii) drew attention to page 176 to
demonstrate the registration of the device mark is also in
Hindi, Marathi, Bengali, Telugu, Gujarati, Kannada, Tamil and other
languages and contended that transliteration is definitely infringement; (iv)
contended that „SWORD‟ is definitely a prominent part of the mark of the
plaintiff; (v) that the defendants have not furnished any explanation for
adoption of „TALVAR‟; (vi) that the defendants having themselves applied
for registration of „TALVAR‟, cannot be permitted to argue that it is a
descriptive word; attention in this regard is drawn to Procter & Gamble
Manufacturing (Tianjin) Co. Ltd. supra; (vii) that „SWORD‟ is not
descriptive of razor alone and can be descriptive of knife also; (viii) that
however „SWORD‟, owing to the long user by the plaintiff, has become
descriptive of the product of the plaintiff; (ix) that the defendants, by using
the word „TALVAR‟, are conveying the same idea as with the mark of the
CS(COMM) 153/2017 Page 13 of 36
plaintiff; reliance is place on United Biotech Pvt. Ltd. Vs. Orchid Chemicals
& Pharmaceuticals Ltd. 2012 (4) R.A.A. 677 (Del) and Godfrey Phillips
India Ltd. Vs. Dharampal Satyapal Ltd. 2012 (51) PTC 251 (Del).
12. I have considered the continuation / discontinuation of the interim
order already granted to the plaintiff.
13. Each case has to be decided on its own facts and peculiar features,
though of course keeping in mind the principles enunciated in the judgments
cited by the counsels and noted above. For the last over more than fifty
years the Courts have been grappling with issues of similarity, deceptive
similarity in matters relating to infringement / passing off of trade marks.
The test applied by the Courts since the beginning has been of the way a
consumer with ordinary intellect would perceive the two marks and whether
such a consumer would be able to distinguish the goods under the two or is
likely to be taken for a ride owing to similarity / deceptive similarity.
However, in the last over 50 years, there have been sweeping scientific
advances in the study of the human mind and the way it works.
Unfortunately however, the Courts, in deciding such cases, have not taken
the benefit of the said scientific advancement, in arriving at the conclusion
about the perception of a consumer with ordinary intellect.
14. In Allied Blenders & Distillers Pvt. Ltd. Vs. Shree Nath Heritage
Liquor Pvt. Ltd. 211 (2014) DLT 346, an attempt was made by me in that
regard. The claim in the said case was of infringement of trade / label mark
„OFFICER‟S CHOICE‟ by adoption of trade / label mark „COLLECTOR‟S
CHOICE‟. Though on first blush, the possibility of confusing the two marks
appeared to be remote, but having recently read the book "Thinking, Fast
CS(COMM) 153/2017 Page 14 of 36
and Slow" by Daniel Kahneman, a Professor of Psychology and a Nobel
Laureate, on the subject of how the human mind thinks and how we make
choices, and in Chapter-4 titled "The Associative Machine" of which the
learned author had dealt with „the association of idea‟ and on the basis of
research conducted found that most of the work of associative thinking is
silent, hidden from any conscious selves, I forayed further into, how memory
works or is formed, particularly in relation to trade marks and held:
"18. My research has revealed:
A. The International Journal of Research in Marketing 22
(2005) 27-44 in an article titled "Distinctive Brand Cues and
Memory for Product Consumption Experiences" researching on
consumer experiential learning from a memory perspective,
referring to "brand image" as the role of brand names as cues
that retrieve or signal product attributes, benefits, effect, or
overall quality, reports (i) that the brand itself is not a memory
target but a cue that might facilitate recall or inference of
previously learned brand associations; (ii) although in most
choice environments the brand cues, (name, logo, packaging,
design etc.) are available and easy to discriminate
perceptually, consumers still have to rely on memory to
associate these brand cues with the results of prior learning of
product quality; (iii) prior learning could have resulted in
episodic memory traces of specific consumption experiences,
but more likely in abstractions or summary evaluations, which
are generally easier to remember than specific information; (iv)
consumers need to recall exactly which prior experience went
with each brand; (v) the consumers typically buy and consume
products in a category sequentially, not simultaneously; (vi)
memory for brand quality may be impeded by significant delays
between consumption experiences and subsequent purchase
occasions when retrieval is attempted; (vii) the result may be
considerable confusion in memory between various brand
experiences; (viii) it is likely that a brand name is not
represented in memory by a single conceptual node but by
CS(COMM) 153/2017 Page 15 of 36
multiple nodes, i.e., brand elements have distributed
representations; (ix) the presence of any one of two similar
brand cues in the choice environment will activate the common
nodes - thus the presence of more common nodes will lead to
more activation of consumption experiences that really belong
to other brands causing confusion about memory targets even
when there is no confusion or misidentification of the brands in
question; (x) consumers‟ memory representations of a brand
typically include many associations such as semantic
associations suggested by the brand name; (xi) example is given
of consumption of one brand activating a particular meaning
which becomes associated with that brand‟s consumption
experience and it is reported that if another brand activates
overlapping semantic association, that will also become
associated with the second brand‟s experience leading to a
consumer, though not confused about the identities of the two
brands at the time of purchase being still confusing the specific
consumption experiences that occurred with the two brands;
(xii) similarity (versus distinctiveness) of brand cues might
increase confusion in the recall of experiential targets,
similarity in brand names and cues leads to overlapping
associations and memory interference when consumers attempt
to learn and remember quality differences; (xiii) that when
products are purchased and consumed sequentially over an
extended period of time, it becomes very difficult for consumers
to learn and remember quality differences between well-
established brands and lower-priced copycats; (xiv) similarity
in brand name leads consumers to mistakenly think that they
have had a satisfactory prior consumption experience with a
copycat brand, when that particular experience may have
actually occurred with the other brand which has been copied;
and, (xv) consumer confusion may originate not at the level of
misidentification of the brand per se, but at the level of
confusing the experiences or benefits provided by each brand.
B. Another article titled "The Influence of Brand Name‟s
Association Set Size and Word Frequency on Brand Memory"
published in the Journal of Consumer Research Vol.-16, Issue-
2, September 1989 reports (i) brand name memorability might
CS(COMM) 153/2017 Page 16 of 36
be inhibited if the brand name is associated with a broad
network of pre-existing concepts because the target name
becomes lost in a sea of associated concepts that inhibit or
interfere with its retrieval; (ii) due to the close semantic
association between the concept "American" and "United
States", consumers exposed to an advertisement for American
Airlines might attribute the advertisement to United Airlines;
(iii) mounting theoretical and empirical evidence suggests that
the probability of retrieving any particular concept diminishes
as the association set size of the concept increases; and, (iv)
high frequency words can be processed readily with little effort
and therefore receive limited processing time, suggesting
relatively nondistinctive processing during encoding i.e. little
effort is made to integrate, specify or restrict the brand
information; upon exposure to such words, a broad spectrum of
the heterogeneous concepts comprising the association set will
be activated and unselectively encoded in memory together with
the brand word; in turn these diverse concepts of the
association set, which later may be used as retrieval cues, are
likely to cue retrieval of concepts unrelated to the brand name,
interfering with brand name retrieval - thus when brand names
consist of high frequency words, memory for brand information
may be poorer for those brands with a large rather than a small
association set.
C. Yet another article titled "The Relation between Positive
Brand Emotions and Recall" published in Online Journal of
Communication and Media Technologies (Volume: 4 - Issue: 1
- January 2014) dealing with advertisement memory and
emotions to brands describes (i) brand memory and
advertisement memory is a kind of mental storage that
consumers apply to while making decisions about brands and
buying; (ii) „recall‟ is physiological factor that plays key role in
human life related to every thing and is a human internal
process and reports that the historical knowledge and
experiences have significant impacts on current thinking; (iii)
recall has start up function for customer behavior and decision
process; (iv) newly learnt thing is integrated with old
knowledge and thus recall of a newly learnt thing is always
CS(COMM) 153/2017 Page 17 of 36
associated with old knowledge; and (v) the advertisement and
other communication applications create recall networks.
D. Another article titled "Conceptualizing and Measuring
Brand Salience" published in 2004 in Volume 4(4): 327-342 of
Marketing Theory Journal reports (i) that since the 1980‟s,
theories of how humans encode, store and retrieve information
have permeated marketing thought and theory development; (ii)
one of the theories most widely adopted into marketing is that of
the Associative Network Theories of memory; (iii) under this
theory memory consists of nodes that hold
information/concepts; if two pieces of information are
„associated‟, connections are conceptualized as existing
between them, making up a network of associated information;
(iv) when a customer is exposed to the brand in a specific
context, links in memory between the brand name and specific
concepts can be created or reinforced; this network of
information linked to the brand name constitutes what has been
referred to as the brand‟s image or as brand knowledge; these
linked concepts can be retrieved when the brand name is used
as the retrieval cue and /or cues to retrieve the brand name
when stimulated in a buying condition; (v) just because the
brand is known or recognized as a member of the category does
not mean it will come to mind in buying situations, as retrieval
is dependent on the cue and the accessibility of the linked
information; (vi) any brand name association can potentially
act as a cue for accessing the brand name; (vii) the impact of
cues on retrieval is largely subconscious and often unnoticed by
buyers; (viii) the importance buyers place on brand choice is
typically low and therefore there is little motivation to go
beyond the easily accessible on any one occasion; and (ix) these
factors combine with the influence of other brands to influence
retrieval of any specific item and this makes retrieval from
memory a highly variable and unpredictable outcome at any
one occasion.
E. Yet another article titled "Branding the Brain: A
Critical Review and Outlook" published in the Journal of
Consumer Psychology (2012) also under the head of
CS(COMM) 153/2017 Page 18 of 36
"Remembered Value and Learning" opines (i) Remembered
Value Refers to how different brand associations are encoded,
consolidated, and retrieved in the consumer's memory - parts
of these processes happen on an unconscious level; (ii)
remembered value consists of explicit memory and implicit
memory of prior consumption experience; and, (iii) the retrieval
stage is an active and dynamic relearning process rather than
the mere replay of previously acquired information."
15. On the basis of the aforesaid research, it was concluded that the
customer‟s / consumer‟s memory is likely to mix "Officer" with "Collector",
and the possibility of trademark "Officer‟s Choice" of the plaintiff being
remembered / recalled as "Collector‟s Choice" could not be ruled out since
Collector is the highest point of officialdom / authority in a district and with
whom nearly every citizen of that district comes in contact with or knows of.
16. It was further held as under:
"20. I am therefore of the view that the possibility of a
customer / consumer of the alcoholic product of the plaintiff
remembering the product of the plaintiff as Collector‟s Choice
cannot be ruled out. Not only so, even if the customer
remembers the mark "Officer‟s Choice", he can be easily
fooled into buying a superior product of the same manufacturer
or another product of the same manufacturer and is likely to
again be fooled by the association between "Officer" and
"Collector". It is perhaps for this reason only that similarity
has been found between "AQUA-CARE" and "WATER-
CARE", "ARISE" and "AWAKE", "BEAUTY-REST" and
"BEAUTY SLEEP", "BLUE THUNDER" and "BLUE
LIGHTNING", "CITY GIRL" and "CITY WOMAN", "BLUE
CROSS/BLUE SHIELD" and "THE CURE FOR THE BLUES"
as listed in para 23:29 of Volume 3 of McCarthy on
Trademarks & Unfair Competition, Fourth Edition relied upon
by the senior counsel for the plaintiff."
CS(COMM) 153/2017 Page 19 of 36
17. The Division Bench of this Court while dismissing the appeal against
the aforesaid judgment, vide judgment reported as Shree Nath Heritage
Liquor Pvt. Ltd. Vs. Allied Blender & Distillery Pvt. Ltd. 221 (2015) DLT
359 inter alia held as under:
"16. Turning to the effect of disclaimer with respect to
trademark infringement, it is pertinent to note at this point that
only two registrations of the respondent, i.e. registrations No.
489582 and 538927, have the word 'Choice' disclaimed. The
respondent has several trademark registrations, albeit some of
which are labels, for alcoholic beverages and a host of other
goods, for 'Officer's Choice' without any disclaimer.
17. A disclaimer in a trademark does not travel to the market
place. Hence, for the purpose of comparison of two marks, the
disclaimed portion can also be considered. Therefore, the
marks in the two registrations of the respondent with a
disclaimer can be considered as a whole even for infringement.
18. Concerning the rules of anti-dissection and comparing
dominant part, it is possible for both parts of a composite
trademark to be dominant. In the instant case, while the first
part of the respondent's trademark (Officer's) is dominant, we
need not decide the nature of the second part of the
respondent's mark (Choice) since the second part is identical in
the appellant's mark. Furthermore, even in the label
registrations of the respondent, at least the word mark 'Officer's
Choice' is an essential feature of the labels as consumers would
refer to the respondent's product by the word mark. Hence, we
proceed with comparing the first part of the two trademarks in
question.
19. The words 'Officer' and 'Collector' are phonetically
different. However, Courts have applied the test of similarity in
the idea, i.e. semantic similarity, of two marks in deciding the
question of deceptive similarity between them. In the decision
reported as MANU/SC/0115/1959 : AIR 1960 SC 142 Corn
Products v. Shangrila Foods the Supreme Court held that
'Gluvita' was likely to cause confusion with the mark 'Glucovita'
CS(COMM) 153/2017 Page 20 of 36
as both conveyed the same idea of glucose and life giving
properties of vitamins.
20. The Canadian Law of Trademarks and Unfair Competition
by Harold G. Fox notes that "trademarks may differ in their
various component elements and yet the idea or impression left
on the mind may be such that they amount to confusing marks."
21. Similarly, P. Narayanan in the Law of Trade Marks and
Passing off states that "regarding word marks it is necessary to
take into account the meanings conveyed by the words or the
ideas suggested by them, for words are remembered not only by
their sound and appearance but also by the ideas suggested by
them."
22. Sun, for soaps, because Surian is nothing more than the
Tamil translation of the English word Sun, and would thus be
considered deceptively similar to the previously existing mark.
23. That takes us to the heart of the debate. How can similarity
in an idea be created?
24. It is pertinent here to refer to a study which can be found in
the International Journal of Research in Marketing [22 (2005)
27-44] in an article titled Distinctive Brand Cues and Memory
for Product Consumption Experiences. Researching on
consumer experiential learning from a memory perspective, and
referring to 'brand image' and the role of brand names as cues
that retrieve or signal product attributes, benefits, effect, or
overall quality, the conclusion of this study demonstrated that
the conceptual background behind the brand name is what
triggers the recollection of memory in a consumer, and not the
brand name in itself. The study revealed that, when five brands
of the same type of product : 'Orange Juice', were named on the
basis of a shared conceptual background (all five being named
after different islands in the Caribbean : 'Bahamas', 'Bermuda',
'Aruba', 'Dominica' and 'Barbuda'), the consumers' ability to
distinguish the various brand names was found to be poorer due
to this shared conceptual background. Further, when the
various brand names did not share the same conceptual
background, the rate of recollection of the correct brand names
by a consumer was higher. In other words, if the consumer is
CS(COMM) 153/2017 Page 21 of 36
asked which brand he preferred, if all brands share the same
conceptual background, then he would first remember that the
product he liked was named after some Caribbean island, and
would then need to exercise his brain to recall which island his
favourite brand was named after.
25. Since this discussion pertains to similarity between Word
Marks, a semantic understanding of how commonness of idea is
conveyed through the use of words is relevant here. As
discussed in The Application of Semantic Field Theory to
English Vocabulary Learning by Chunming Gao and Bin Xu,
Theory and Practice in Language Studies, Vol. 3, No. 11, pp.
2030-2035, Nov. 2013, words in the semantic field can be said
to create a sense relation, and in semantics, there are broadly
three sense relations: 'Hypernyms', 'Synonyms' and 'Antonyms'.
26. Whereas hypernyms create the relation of inclusion,
synonyms that of equivalence, antonyms that of opposite
relations. Since antonyms by definition, convey the opposite
sense relation of the word, it falls outside the purview of this
discussion.
27. We thus need to expand the concepts of hyponymy and
synonymy.
(i) Hypernyms
The Oxford English dictionary defines a Hypernym to
mean
"A word with a broad meaning constituting a
category into which words with more specific meanings
fall; a subordinate.
For example, colour is a hypernym of red"
It further defines a hyponym as:
"A word of more specific meaning than a general
or super-ordinate term applicable to it
For example, Spoon is a hyponym of cutlery. Contrasted
with hypernym."
(ii) Synonyms
CS(COMM) 153/2017 Page 22 of 36
The Oxford English dictionary defines a synonym to
mean:
"A word or phrase that means exactly or nearly the
same as another word or phrase in the same
language.
For example, shut is a synonym of close; the east was a
synonym for the Soviet Empire;
and a person or thing so closely associated with a
particular quality or idea that the mention of their name
calls it to the mind: For example the Victorian age is a
synonym for sexual puritanism."
28. When it comes to giving a clear, precise and correct
definition of synonymy, many difficulties arise. There are
numerous approaches with numerous definitions of synonyms
and types of synonyms, because there are different ways in
which synonyms may differ. It would be imprecise to define
synonymy as identity of meaning since there are no two terms
with completely identical meaning. However, the general
understanding of synonymy can be stated to be the phenomenon
of two or more different linguistic forms with the same meaning.
29. Synonymy could be classified into absolute synonymy and
relative synonymy. Absolute synonyms refer to words with the
exact same meaning in all context, and thus are considered by
several academicians to be a logical impossibility, given that
words cannot be interchangeable in all possible contexts (since
that, itself, would entail infinite possibilities), and given further,
that two words being absolute synonyms would normally result
in the language rendering one of them obsolete over the
passage of time.
30. Relative synonyms, on the other hand refer to words or
phrases which are relatively similar, in that they are similar in
certain contexts, while not in others. Such synonymy could be
further classified into such categories as following:
"i. Synonymy with different degrees
CS(COMM) 153/2017 Page 23 of 36
Words that constitute this type of semantic field have
same extended meanings, yet different in degrees. For
example, anger, rage and fury are all about the
emotional excitement induced by intense displeasure,
while anger is used normally without definite degree of
intensity; rage focuses on a loss of self-control; and fury
empathizes a rage so violent that it may approach
madness
ii. Synonymy with different emotions
This type of synonymy is mainly formed by words with
basically same meaning yet with different emotions. For
example, a philanthropist and do-gooder can be mean
both charity and sympathy, while philanthropist usually
means charitable persons who aid people in sufferings
and donate for the poor yet do-gooders refer to those
unrealistic humanists who dream of doing good
recklessly and vainly. Another example, Statesman and
politician both mean people who take part in social
politics, while Statesman refers to those who could do
well in controlling and governing the state yet politician
mainly means people who play political tricks for their
own interests. In both of the examples, the formers are all
commendatory; and the latter's derogatory.
iii. Synonymy with Different Styles
This type of semantic field mainly consists of the words
with relatively same meaning yet with different styles.
American linguist Martin Joos (1962) lists five different
styles of words in his book Five Clocks as frozen, formal,
consultative, casual and intimate. According to these five
styles, we can label the word Horse with five different
tags, charger is frozen, steed is formal, horse is
consultative, nag is casual and plug is intimate.
iv. Synonymy with different collocations
This type of synonymous semantic field is formed by
words with relatively same meaning yet different
collocations. For example, the words that could indicate
CS(COMM) 153/2017 Page 24 of 36
the meaning of accuse are charge, rebuke, reproach and
accuse itself, while the propositions that collocate with
them are different. That is to say, accuse collocates with
'of', charge collocates with 'with', rebuke collocates with '
for' and reproach with ' for' or 'with'."
31. In the market research study referred to above, Island A
and Island B, both in the Caribbean, are simply hyponyms of
the broader hypernym (Islands in the Caribbean). So a
consumer with imperfect recollection would recall the correct
name of his preferred brand, if they do not share the same
conceptual background or hyponym. This is because sharing a
hyponym in the form of a conceptual background as the basis of
naming various brands, would create the same idea in the mind
of the consumer impairing his ability to recall his preferred
brand name. Similarly, when various brand names are
synonyms of each other, for example, men's perfumes being
called Macho, Tough, Stud and Rugged while each of these
words may not mean the same in every context, in the context of
men's perfumes, they convey the same idea as that of
masculinity. As per the findings of the study referred to above,
the similar brand name recollection impairment could be
observed in such a case as well. Thus, from the findings of the
study provided above, coupled with the legal position on
ascertaining similarity of marks based on the ideas conveyed by
them, we may arrive at the conclusion that marks containing
words with the same sense relation (or falling in the same
semantic field, or conveying the same or similar idea in the
mind) as that of previously existing marks are likely to be
considered so similar as to be refused registration or deemed to
constitute infringement of the previously existing trademark.
32. However, it is important to create a parameter within
which marks conveying similar ideas should be accorded
protection under trademark law. This is because if protection is
accorded to the sense relation of a word, it raises a slippery
slope as to what extent such monopoly over the sense relations
be extended under trademark law. For example, in contrast
with five brands of Orange juice named after islands of the
Caribbean would naming a brand of orange juice after any
CS(COMM) 153/2017 Page 25 of 36
other island X (which is not in the Caribbean) would also be
prohibited in stating that island X is a hyponym of the broader
hypernym 'Island'? Similarly, would trademark protection of
synonyms extend to all synonyms of the word, such that men's
perfumes cannot be named after any word which is synonymous
to the word 'Tough' (such as dangerous or risky)?
33. Thus, a restrictive application needs to be made for
protecting words which share the sense relation, in that,
protection should be accorded only to those sense relations of
the word where the context in which they are applied to the
brand name, is the same, which causes similar ideas to be
conveyed in the minds of the consumers. In this regard, one may
also briefly discuss the concept of contextual correlation of
semantic similarity, articulated by authors George A Miller
(Dept. of Psychology, Princeton University, Princeton, New
Jersey) and Walter G Charles (Dept. of Psychology, Oregon
State University, Corvallis, Oregon) and in the book Language
and Cognitive Processes, [1991, 6(1) 1-28], under the chapter
titled 'Contextual correlates of semantic similarity, where they
observe an inverse linear relationship between the similarity of
word meanings and the difference in contexts in which they are
used and conclude:
"... on an average, for words of the same language drawn
from the same syntactic and semantic categories, the
more often two words can be substituted into the same
context the more similar in meaning they are judged to
be."
34. In the aforementioned two examples one observes that
the similarity in idea conveyed by the word marks, through
hyponymy or synonymy, can only be said to occur when the
hyponymy or synonymy exists in a given context. Thus, when
brands of orange juice are named after various islands of the
Caribbean they convey a similar idea, which is likely to be only
in the context of enjoying a glass of orange juice on a beach at
one such tropical island. Similarly, when Men's perfumes are
named after synonyms of the word Tough, the commonness of
idea is created only when the words are synonymous in the
CS(COMM) 153/2017 Page 26 of 36
context of masculinity, and not when any word which is
synonymous to Tough, in a different context (such as
dangerous, or risky) is used.
.......
42. Philosophers and scientists have long believed that
similar ideas are associated in the brain and this association
plays an important role at the time of retrieval of information.
This concept of association of ideas has been explained by
philosophers such as David Hume and John Stuart Mill.
43. David Hume in An enquiry concerning human
understanding introduced the notion that there could be
principles of connection amongst ideas and mentioned three
principles of connection namely, resemblance, contiguity in
time or place, and cause or effect.
44. In the 19th century, John Stuart [see Mill in Stanford
Encyclopedia of Philosophy ('Mill')] used Hume's idea that
there could be principles of connection amongst ideas stated by
and developed a theory of association to explain how the human
mind associates ideas.
45. Mill's theory of associative memory proposes that if 'f
and g' are regularly presented in experience as standing in
relation to 'R', then the habit forms in the mind, that if we have
an impression or idea off then it is accompanied with the idea of
'g'. 'R' in Mill's theory is the connection amongst ideas stated by
Hume earlier.
......
48. The book Cognitive Psychology, Solso Et. Al, Ed. VIII
talks about various theories of how knowledge is stored in the
human mind. The crux of each of these theories is that similar
words, concepts and items that are linked by association are
grouped together in the brain.
49. For instance, the Set-Theoretical Model deals with
semantic concepts. Illustratively, under this theory, a fruit
would be a semantic concept and types of fruits such as banana
would be grouped along with other fruits under the concept of
CS(COMM) 153/2017 Page 27 of 36
fruit in the human mind. Even under this theory, one can prima-
facie say that the words 'Officer' and 'Collector' can be grouped
under the concept of 'Person holding an office of Authority'
and/or 'Collector' may also be stored under the concept of
'Officer'.
50. It would be interesting to note that the United States
Patent and Trademark Office Trademark Trial and Appeal
Board in a trademark cancellation proceeding (H. Sichel
Sohne, GmbH v. John Gross & Co., 204 USPQ 257), applied
the concept of similarity of meanings of marks while holding the
marks 'Blue Nun' and 'Blue Chapel' deceptively similar,
observed as under:--
"...we are particularly aware of the close relationship
between nun and chapel. In view of the fact that the
prayer activity and meditation in the daily life of a nun
very frequently takes place in a rather small edifice or
structure known as a chapel we must conclude that the
words nun and chapel are more closely allied to each
other... "
Retrieving information from human memory:
51. Finding information in the organized long term memory
store is aided by retrieval cues. (See Introduction to
Psychology, Clifford T. Morgan et al, Ed. VII). This book
explains the concept of retrieval with the following example:
"Suppose, for example, you are learning German. Some
German words will at the time you encode them be
readily associated with English words; Hund, the
German word for dog reminds you of the English word
Hound. When you later see the German word Hund, you
can easily recall its English meaning because you
generated the retrieval cue Hound which you encoded
along with the target word Hund."
52. These cues need not directly elicit the brand name but
may instead simply enhance the likelihood of a particular
brand, or set of brands, being elicited (Conceptualizing and
Measuring brand salience, Romaniuk and Sharp, Marketing
CS(COMM) 153/2017 Page 28 of 36
Theory Vol. 4(4):327-342).For example, in the present case, the
cue could be 'Person holding an office of authority'.
53. Another factor to bear in mind regarding retrieval of
information from human memory is the process of
reconstruction of information or the generation of false
memories. Cognitive Psychology, Solso et al, Ed. VIII, explains
this process in the following experiment:
"...Students read (or have read to them) the following list:
Rest, Nap, Sheets, Night, Snooze, Bed, Doze, Pillow,
Dream, Snore, Awake, Tired, Wake, Blanket, Slumber,
Nap, Yawn, Drowsy... The researchers found... that
participants recalled many of the words accurately but a
large number of them recalled the word Sleep... The
semantically similar and strongly associated words in the
list created the false memory of having read (or heard)
the word Sleep."
.......
58. According to the study on Distinctive Brand cues and
memory for product consumption experiences, Warlop et al,
brands that share semantic associations, like in the present
case, which the study refers to as 'undifferentiated brands' are
likely to be confused by consumers.
59. Admittedly, the labels and get up of the two products are
dissimilar. However, the study on Distinctive Brand cues and
memory for product consumption experiences notes that:
"i. cue formed from the meaning of the brand is much
stronger than the cue formed by the packaging of the
product of the brand. Therefore, if the meaning of the
brands is similar/same, then the difference in packaging
may still lead to confusion.
ii. there is a likely consumer belief that brand names
identify different choice alternatives uniquely, while
packaging colours and shape often do not."
60. McCarthy on trademarks and Unfair Competition also
emphasizes the importance of impact of similarity in meaning
CS(COMM) 153/2017 Page 29 of 36
and states that "mental impact of similarity in meaning maybe
so pervasive so as to outweigh any visual or phonetic
differences that is the psychological imagery evoked by the
respective marks may overpower the respective similarities or
differences in appearance and sound."
61. A similar view was taken by the United States Patent and
Trademark Office Trademark Trial and Appeal Board while
deciding trademark cancellation proceedings in the decision
reported as 204 USPQ 257 H. Sichel Sohne, GmbH v. John
Gross & Co., wherein it held that "the fact that the marks have
aural and optical dissimilarity is not necessarily controlling on
the issue of likelihood of confusion in the marketplace where the
marks convey the same general idea or stimulate the same
mental reaction...That is, similarity in meaning or significance
alone is sufficient to indicate a likelihood of confusion,
especially where, as in the present case, the marks are coined
or arbitrary."
62. According to Kerly's Law of Trademarks and Trade names,
Ed. XV:
"Variations in details might well be supposed by
customers to have been made by the owners of the
trademark they are already acquainted with for reasons
of their own."
.......
67. According to Mill, the anticipation of the pleasure from
consuming a product in the future acts as a cause for bodily
motion to bring about that pleasure. Therefore, once a
consumer associates the respondent's 'Officer's Choice' product
with pleasure, the consumer shall, in anticipation of pleasure,
once again select 'Officer's Choice'. Through repeated
consumption that leads to a good experience, the meaning of
the respondent's 'Officer's Choice' shall for the individual
consumer become associated with the good experience.
68. As noted in Distinctive Brand cues and memory for
product consumption experiences, associations in memory tend
to decay over time, leading to forgetting as well as recall of the
CS(COMM) 153/2017 Page 30 of 36
wrong targets. In addition, memory for brand quality may be
impeded by significant delays between consumption experiences
and subsequent purchase occasions when retrieval is attempted.
69. This was also held in the decision reported as [1958]
RPC 387 Harry Reynolds v. Laffeaty's Ld, Dodwell & Coy, Ld,
and S Guiterman & Coy, Ld, by the High Court of Justice -
Chancery Division:
"I think the ordinary member of the public seeing an
"Aquamatic" water pistol one day and a "Watermatic"
water pistol months afterwards would be more likely to
be confused, and I propose to grant an injunction and
ancillary relief accordingly."
70. Therefore, the likelihood of confusion between similar
marks increases with increase in passage of time and sequential
consumption of the products.
.......
74. In this case, it is apparent from the appellant's reply to
the Trademarks Examiner that the appellant was aware of the
respondent's trademark.
75. The appellant in its reply to the examination report
issued by the Trademarks Office stated as follows:
"We would like to further submit that some of the
names/marks like "OFFICER'S CHOICE" &
"MINISTER" which have become customary in the
current language have also been accepted by the Learned
Examiners in the past so why not our mark be accepted
and advertised."
76. On the facts above the possibility of appellant's dishonest
intention in adopting the impugned mark cannot be ruled out at
this stage."
18. I need say no more, as the principles aforesaid are found to squarely
cover the controversy at hand as well. The limitations laid down by the
Division Bench to the applicability of the test do not apply to the present
situation.
CS(COMM) 153/2017 Page 31 of 36
19. Suffice it is to only mention another similar attempt made in Prathiba
M. Singh Vs. Singh and Associates 2014 SCC OnLine Del 1982, where it
was inter alia held as under:
"15. .....
(A)(iii) I clarify that such a direction has been deemed
necessary because my own experience shows that human mind
tends to assume / read the second / following word to be, what it
is used to seeing reading with the first one. Thus, a human,
used to seeing / reading another „Singh‟ after the first „Singh‟
may presume / read the second word also to be „Singh‟ on
seeing / reading the first word „Singh‟, particularly in the
context of legal profession. Similarly a human used to seeing /
reading „Associates‟ after „Singh‟ may presume „Associates‟ to
be following „Singh‟, unless cautioned of the possibility of the
second word being different i.e. „Singh‟.
(A)(iv) To make sure that the aforesaid phenomenon and
experience is not confined to the undersigned, I looked up and
found the experts to have defined the same as "Priming" and
which is defined as an implicit memory effect in which exposure
to one stimulus influences a response to another stimulus. The
seminal experiments on the said subjects appear to be of Meyer
and Schvaneveldt who found that people were faster in deciding
that a string of letters is a word when the word followed an
associatively or semantically related word and subsequent
research has led to priming, now being understood to be of
many sorts. The said works report that priming can occur
following perceptual, semantic or conceptual stimulus
repetition and that its effect can be very salient and long lasting
and unconscious, affecting word choice on a word-stem
completion test, long after the words have been consciously
forgotten. Keith E. Stanovich and Richard F. West in their
Paper "On Priming by a Sentence Context" published in the
Journal of Experimental Psychology have reported associative
priming as a word that has a high probability of appearing with
the prime and is associated with it and frequently appear
CS(COMM) 153/2017 Page 32 of 36
together and context priming as where the context speeds up
processing for stimuli that are likely to occur in that context and
reported that these latter words are processed more quickly
than if they had been read alone. Similarly John A. Bargh,
Mark Chen and Laura Burrows in their Paper "Automaticity of
Social Behaviour: Direct Effects of Trait Construct and
Stereotype Activation on Action" published in the Journal of
Personality and Social Psychology have reported that attention
to a response increases the frequency of that response, even if
the attended response is undesired.
(A)(v) The phenomenon is also described by some as „Word
Association‟ meaning "stimulation of an associative pattern by
a word" or "the connection and production of other words in
response to a given word done spontaneously". Derren Brown,
a psychologist has predicted people‟s word associations and
has opined that humans find it very difficult to disassociate
words. Another author on the basis of psycholinguistic studies
has reported that words are not stored in our mental lexicon as
single items, but forming clusters with related concepts. Yet
others have reported that our brains use some kind of
connections between lexical items and that it associates words
with others.
A(vi) I have in Allied Blenders & Distillers Pvt. Ltd. Vs. Shree
Nath Heritage Liquor Pvt. Ltd. 211 (2014) DLT 346 dealt with
the subject of the importance of „word association‟ in the
context of trade names. Sigmund Freud also in his textbook „A
General Introduction to Psychoanalysis‟ as translated by G.
Stanley Hall, in the IVth Lecture contained in Part One thereof
titled „A Psychology of Errors‟, has authored that misreading
consists in a complete substitution; one substitutes another
word for the word to be read and there need be no connection
in meaning between the text and the product of the misreading;
instance has been given of war times when it is very common
for everyone to read into everything which contains a similar
word structure, the names of the cities, generals and military
expressions which are constantly buzzing around us. Another
learned author Sara Brody in the book titled "Teaching
CS(COMM) 153/2017 Page 33 of 36
Reading : Language, Letters and Thought" (2nd Edn., 2001)
edited by her, has cited certain works which have found that
comprehension is influenced by the misconceptions and pre-
conceived misunderstandings that readers posses before
beginning to read a passage and that when readers‟ prior
knowledge conflicts with material written in a text, readers tend
to misread the text to make it fit their previously formed
schemata, whether they are accurate or not.
A(vii) The phenomenon is also described by some schools as
"Prägnanz" which says that we tend to order our experience in
a manner that is regular, orderly, symmetric, and simple. As per
the said school, elements of objects tend to be perceptually
grouped together and that as individuals perceive the world,
they eliminate complexity and unfamiliarity so that they can
observe a reality in its most simplistic form and that eliminating
extraneous stimuli helps the mind create meaning. This is also
described as reproductive thinking i.e when a person is given
several segments of information, he/she deliberately examines
the relationships among its parts, analyzes their purpose,
concept and totality and reaches the "aha!" moment, using what
is already known. Certain other researchers have classified
such phenomenon under the law of past experience implying
that visual stimuli are categorized according to past experience
and have reported that if two objects tend to be observed within
close proximity, the objects are more likely to be perceived
together."
20. As far as the contention of the senior counsel for the defendant No.2,
qua distinction between two marks owing to the word „WILKINSON‟ in the
mark of the plaintiff and the word „ZORRIK‟ in the mark of the defendants
is concerned, the Division Bench in judgment aforesaid has also held that
since OFFICER‟S CHOICE and COLLECTOR‟S CHOICE were found to
convey the same meaning and deceptively similar, the impact of the differences in
trade dress was unlikely to rule out consumer confusion between the two products.
CS(COMM) 153/2017 Page 34 of 36
Mention may also be made of Section 2(1)(zb)(ii) of the Trade Marks Act,
1999 inter alia defining a „trade mark‟ as meaning a mark capable of
distinguishing the goods of one person from those of others for the purpose
of indicating or so to indicate a connection in the course of trade between the
goods and some person having the right to use the mark, whether with or
without any indication of the identity of that person. It is thus clear that
mere disclosure of the identity of the defendant along with the use by the
defendant of the impugned mark would be irrelevant. Else, the Legislature
in Section 2(1)(zb) of the Act would not have used the words "...whether
with or without any indication of the identity of that person...". The Senior
counsel for the plaintiff, in this context, also referred to National Sewing
Thread Co. Ltd. Vs. James Chadwick AIR 1953 SC 357.
21. I am thus of the view that the interim order already in force should
continue during the pendency of the suit. The balance of convenience has
been found in favour of the plaintiff owing to the use by the plaintiff of the
mark, of which infringement/passing off is averred, being much prior to that
of the defendants, with the defendants having commenced use barely eight
months prior to the grant of the ex-parte injunction. However, it is made
clear that in the event of the plaintiff failing in the suit, the plaintiff shall be
required to restitute to the defendant No.2 the loss, if any suffered by the
defendant No.2 owing to the interim injunction.
22. The defendant No.2 to, within six weeks file an affidavit with advance
copy to the counsel for the plaintiff assessing the said damages and the
plaintiff shall be entitled to file an affidavit in response thereto and the
CS(COMM) 153/2017 Page 35 of 36
counsels may at the stage of framing issues, seek framing of the issue on the
said aspect as well.
23. IA No.2502/2017 of plaintiff under Order XXXIX Rules 1&2 of the
CPC is thus allowed by making the ex-parte ad-interim order dated 27th
February, 2017 absolute during the pendency of the suit and IA
No.3523/2017 of defendants under Order XXXIX Rule 4 of the CPC is
dismissed.
CS(COMM) 153/2017
24. List on 25th July, 2018.
RAJIV SAHAI ENDLAW, J.
JULY 09, 2018 „bs‟ CS(COMM) 153/2017 Page 36 of 36