Delhi High Court
The Bombay Oil Industries Pvt. Ltd. vs Ballarpur Industries Limited on 21 March, 1988
Equivalent citations: AIR1989DELHI77, 35(1988)DLT64, 1988RLR340, AIR 1989 DELHI 77, (1988) 35 DLT 64, 1988 RAJLR 340, (1988) 94 PUN LR 40
Author: B.N. Kirpal
Bench: B.N. Kirpal
JUDGMENT B.N. Kirpal, J.
(1) This order will dispose of I.A. No. 177/88, being an application under Order 39, Rules 1 & 2 Cpc filed by the plaintiff; I.A. No. 416/88 being an application under Order 39, Rule 4 Civil Procedure Code filed by defendant No. 1; and I.A. No. 1298/88, being an application under Section 151 Civil Procedure Code filed by the plaintiff.
(2) The plaintiff had filed a suit alleging that its registered trade mark "SAFFOLA" has been infringed by the defendant. According to the averments in the plaint, the plaintiff is the owner of the registered trade mark "SAFFOLA" in respect of edible oil. This registration was applied for on 17th October 1961. This registration was granted. The plaintiff also applied on 28th August 1964 and obtained another registration for the word "SAFFOLA" in respect of Kardi Oil. A third registration which was obtained was of the label consisting of two horizontal labels similar to the earlier label, but with the addition of a device of heart. According to the plaintiff it is selling edible oil in Delhi and other places in India in a tin which has yellow background with grooves in the upper and lower parts of the tin.The allegation of the plaintiff is that in or about April 1987 it learnt that the defendant had adopted a trade mark (3) SHAPOLA" in respect of edible oil manufactured by it. It is also alleged that this oil is also being marketed in a similar tin having yellow background with horizontal grooves in the upper and lower parts of .the tin. According to the plaintiff, the two words "SAFFOLA" and "SHAPOLA" are phonetically similar as the prefix and the suffix of the two words are common and the letters "F" and "P" carry a similar sound.
(4) A notice dated 25th April 1987 was sent by the Trade Mark Attorney of the plaintiff alleging that the trade mark of the plaintiff had been infringed. By a letter dated 25th May 1987 the aforesaid notice was replied to and it was denied that the defendant had infringed the plaintiff's trade mark. The plaintiff did not enter into any further correspondence with the plaintiff, but filed the present suit alleging infringement of its trade mark by the defendant and has prayed for a perpetual injunction restraining the defendant from using a similar trade mark, and in particular the defendant should be restrained from using the mark "SHAPOLA".
(5) Along with the suit, the plaintiff filed I.A. No. 177/88, being an application under Order 39, Rules 1 & 2 CPC. By the order dated 8th January 1988 an ex parte injunction as prayed for was granted. Thereupon, the defendant filed an application under Order 39, Rule 4 Cpc, being I.A. No. 416/ 88. According to the allegations of the defendant the plaintiff is marketing safflower Oil, whereas the defendant is marketing sunflower oil. It is further the case of the defendant that the suffix "SHAPOLA" is common to the edible oils, being a Greek word for oil and furthermore, the prefixes "SAFF" and "SHAP" are not phonetically or visually similar. It is further the case of the defendant that the Indian Standards Institute has recommended that the tin containers for the edible oils in respect of 5 kilograms should have two horizontal grooves in the upper and the lower parts of the container as this strengthens the tin and prevents it from collapsing. It. is further the case of the defendant that the plaintiff did not have a design registration in respect of such containers. The defendant further states that it has incurred a lot of advertisement expenditure during the period of March to December 1987 and further sold sunflower oil under the trade mark "SHAPOLA" to the tune of Rs. 70,000 per month. Giving justification for the prefix "SHAP", it is the case of the defendant that this is derived from the word "SHAPE" so as to suggest to the consumers that the oil is free from fat and other impurities. Furthermore, according to the defendant an ordinary illiterate consumer is unlikely to purchase such an expensive edible oil and the consumers of poly unsaturated oils are well educated people belonging to the elite section of the society. The prayer made in the application, therefore, is that the ex parte injunction which has been granted should be discharged.
(6) When no reply was filed to the application under Order 39, Rule 4 Cpc, and the lawyers were on strike, on 9th March 1988 the ex parte injunction was vacated. Thereupon I.A. No. 1298/ 88 was filed by the plaintiff paying for 'an injunction. It was alleged that some talks of compromise were going on between the parties and secondly, the plaintiff was under tile impression that because of the strike no adverse orders would be passed. An ex parte injunction was granted on 9th March 1988 and thereafter by an order dated 16th March 1988 it was directed that all applications be listed today for final disposal and representatives of the parties argued in the absence of lawyers.
(7) The only submission on behalf of the plaintiff has been that its trade mark has been infringed because the mark "SHAPOLA" which h'as been adopted by the defendant is phonetically similar to "SAFFOLA", which is the registered trade mark of the plaintiff.
(8) The defendant has not denied that the mark "SAFFOLA" is registered in favor of the plaintiff. The defendant has not as yet got the mark "SHAPOLA" registered in its favor under the Trade Marks Act, though an application for registration has been filed. As has been stated in the application under Order 39, Rule 4 Cpc, it has been contended before me by the defendant's representative that the mark "SHAPOLA" is not phonetically similar to "SAFFOLA". It is further the submission of the defendant that what is being sold by the defendant is sunflower oil which is different from the product of the plaintiff, which is safflower oil. It is further submitted that the general public uses vanaspati for its cooking and the use of types of edible oil sold by the plaintiff and the defendant is to a very limited section of the society and they are discerning consumers, who would know the difference amongst the two products. It was accordingly submitted that there is little likelihood of any person getting the impression that "SAFFOLA" and "SHAPOLA" are one and the same product.
(9) Under the provisions of Section 28 of the Trade and Merchandise Marks Act, 1958, the registered proprietor of a trade mark has an exclusive right to the use thereof. This mark is infringed if any person uses, in the course of the trade, a mark which is identical or deceptively similar to the trade mark of the owner in relation to any goods in respect of which the trade mark is registered. Section 29(2) of the said Act, inter alia, provides that an injunction or other relief will not be granted to the plaintiff, if the defendant establishes to the satisfaction of the Court that the use of the mark of which the plaintiff complains is not likely to deceive or cause confusion between the pods in respect of which the trade mark is registered.
(10) If the two marks are visually or phonetically similar, then there can be no doubt that an infringement would be regarded as having occurred. Dealing with a similar question, where the two marks in question were "GLUCOVITA" and "GLUVITA", the Supreme Court in the case of Corn Products Refining Co. v. Shangrila Food Products Ltd. observed as follows:- "IT is well known that 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. English cases proceeding on the English way of pronouncing an English word by Englishmen," which it may be stated is not always the same, may not be of much assistance in our country in deciding questions of phonetic similarity. It cannot be overlooked that the word is an English word which to the mass of the Indian people is a foreign word. It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole. So considered, we are inclined to agree with Desai J. that the marks with which this case is concerned are similar. Apart from the syllable 'co' in the appellant's mark. the two marks are identical. That syllable is not in our opinion such as would enable the buyers in our country to distinguish the one mark from the other."
It was also observed in this case that "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."
(11) Applying the aforesaid principle to the present case, it appears to me that the marks "SAFFOLA" and "SHAPOLA" are phonetically similar. The suffix, namely "OLA" is common. There is a difference in spelling as regards the prefix is concerned. While the plaintiff's prefix is "SAFF", the prefix in the mark of the defendant is "SHAP". The number of letters of the two marks, whether written in English or Hindi are the same i.e. seven in English and five in Hindi. It is not uncommon, and it is quite common, that the letter "S" is at times pronounced as "SH". The letters "F' and "P" P in a particular setting can also sound phonetically similar. Viewing the mark as a whole there is every likelihood that the two marks may give rise to confusion as they are phonetically similar.
(12) It is true that the oil which is sold by the plaintiff, namely, safflower oil is different from the oil which is sold by the defendant, namely, sunflower oil. but what is sold by both is the same thing, namely, edible oil. It is not quite right to say that the oils which are sold by the parties have restricted use only among the elite of the society. In fact, it is now common knowledge that medically it is recommended, and it is so advertised, that vanaspati is injurious to health, and it is recommended that non saturated edible oils should be used. Though there are various types of cooking media which are available in the market, the two main categories are vanaspati 'and other edible oils.
(13) In order to contend that the two marks were not phonetically similar, the representative of the defendant relied upon the Supreme Court decision in the case of F. Hoffimann La Roche v. Geoffrey Manners and Co. Private Ltd. In that case the appellant had got the mark "PROTOVIT" registered in its name. The respondent had obtained registration of a similar product having the mark "DROPOVIT". The registration of "DROPOVIT" was sought to be cancelled and it was contended that the two were phonetically similar. The Supreme Court, however, observed that the two were not phonetically similar and held that "the letters 'D' and 'P' in 'DROPOVIT and the corresponding letters 'P' and 'T' in 'PROTOVIT' cannot possibly be slurred over in pronunciation and the words are so dissimilar that there is no reasonable probability of confusion between the words either from the visual or phonetic point of view". In the instant case, however, the letters "S" and "FF" in "SAFFOLA" and the corresponding letters "SH" and 'P' in "SHAPOLA" can be slurred over in pronunciation so at to sound phonetically similar.
(14) It is not necessary to multiply the instances where courts have held that words though spelt differently, may still be regarded as being phonetically similar. Nevertheless, it will be appropriate to refer to the case of K. R. Chinna Krishna Chettiar v. Sri Ambal & Co. in which case the two competing marks were "AMBAL" and''ANDAL". The said marks were in respect of the same item, namely, snuff. It was held by the Supreme Court that "There is a striking similarity and affinity of sound between the words "Andal" and "Ambal" ............we are satisfied that there is a real danger of confusion between the two marks". It was further held that even though there was no visual resemblance between the two marks, but the ocular comparison is not always the decisive test and the resemblance between the two marks must be considered with reference to the ear as well as the eye. The Supreme Court concluded that there was close affinity of sound between "AMBAL" and "ANDAL".
(15) In the case of Essco Sanitations v. Mascot Industries (India) , the two competing marks were "ESSCO" and "OSSO". The court enumerated the following factors which must be taken into consideration while determining whether the marks were deceptively similar :- "(1) the nature of the marks; (2) the degree of resemblance between the marks-phonetic, visual as well as similarity in idea; (3) the mature of goods in respect of which they are used or are likely to be used as trade marks; (4) the similarity in the nature, character and purpose of the goods of the rival traders; (5) the class of purchasers who are likely to buy the goods bearing the marks, their level of education an inteligence, and the degree of care they are likely to exercise in purchasing the goods; (6) the mode of purchase of the goods or of placing orders for the goods; and (7) any other surrounding circumstances." Applying the aforesaid test this Court held. in that case that the mark "OSSO" adopted by the Mascot Industries was deceptively similar to the registered trade mark "ESSCO".
(16) Applying the aforesaid seven tests .laid down by G.C. Jain, in the case of Essco Sanitations to the present case, lam of the opinion that, as at present advised, the two marks in 'question in this case are phonetically similar. Both the marks are in respect of edible oils, therefore, the nature of the goods is same. All classes of people purchase the same and the mode of purchase is similar, namely, ordinarily by cash and across the counter. There is a marked degree of phonetic similarity between the two marks.
(17) In the case of Tata Oil Mills Co. Ltd. v. M/s. Wipro Ltd. and another (AIR 1986 Delhi 345) (5) the question involved was whether the defendant which had started marketing soap under the trade mark "BUBBLES" had infringed the plaintiff's registered trade mark "DUBBLE" also in respect of soap. It was held that there was an infringement of the registered trade mark "DUBBLE".
(18) Lastly, reference may be made to the decision of the Supreme Court in the case of Amritdhara Pharmacy v. Satya Deo Gupta was concerned with the two trade marks, namely, "AMRITDHARA" and "LAKSHMANDHARA". The Supreme Court while following the ratio of its earlier decision in the case of Corn Products Refining Co. (supra) held that the two words were similar and an Indian could mistake one for the other; and that they could cause deception or confusion in the minds of the unwary purchasers.
(19) For the aforesaid reasons, I confirm the ad interim injunction dated 9th March, 1988 and till th pendency of the suit restrain the defendants, their agents and servants from manufacturing, selling, offering for sale, directly or indirectly, dealing in or using in relation to edible oils, the trade mark "SHAPOLA" or any other trade mark which is deceptively similar to the plaintiff's registered trade mark "SAFFOLA".
(20) I. A. Nos. 177/88 and 1298/88 are allowed and I.A. No. 416/88 is dismissed. It is, however, made clear that any expression of opinion in this order is only tentative and will in no way influence the outcome of the suit. There will no orders as to costs.