Rajasthan High Court - Jodhpur
Rameshchandra Paliwal vs Seema And Company on 6 April, 2017
Author: Arun Bhansali
Bench: Arun Bhansali
HIGH COURT OF JUDICATURE FOR RAJASTHAN AT
JODHPUR
S.B.Civil Misc. Appeal No. 1286 / 2016
Rameshchandra Paliwal, Proprietor, M/s. Paliwal Perfumers, Indian
Ownership having main business, Address at Dhariawad, District -
Pratapgarh (Raj.).
----Appellant
Versus
Sima & Company, having address at - 32, RIICO Industrial Area,
Dahod Road, Banswara (Raj.)
Other Address :-
Sima & Company, B.O. 704, B-22, Sector-1, Shantinagar, Meera
Road, Mumbai (E), (Maharashtra).
----Respondent
_____________________________________________________
For Appellant(s) : Dr. Ashok Soni.
For Respondent(s) : Mr. R.S. Rathore.
Mr. G.S. Rathore.
_____________________________________________________
HON'BLE MR. JUSTICE ARUN BHANSALI
Judgment 06/04/2017 This appeal is directed against the order dated 19.01.2016 passed by the District Judge, Pratapgarh, whereby the application filed by appellant under Order XXXIX, Rule 1 and 2 CPC seeking injunction has been rejected.
The appellant-plaintiff filed a suit for permanent injunction alongwith an application for temporary injunction alleging infringement/passing of label trademark and infringement of copyright of 'Nikah' label in respect of perfumeries against the respondent.
It was claimed in the plaint that a label trademark with prominence of word 'Nikah' and depicting 'Rani' was adopted by (2 of 12) [CMA-1286/2016] the appellant in respect of the goods and he applied for trademark registration on 24.04.2003 and was granted registration under No.1184951 in Class-3 in respect of attar and perfumes. It was claimed that the appellant is also registered owner of label trademark with prominence of word 'Nikah', depicting 'Rani' (Queen) and 'Mor' (Peacock) bearing No.1770552 in Class-3 in respect of goods. It was claimed that the mark was continuously, openly and extensively used by the appellant since 01.06.2002. Further submissions were made that the trademark was adopted/originated by the appellant with his own creation, labour and capital, which includes light green colour in the background, which label is also used for box of perfumes for outer packaging. It was also claimed that the appellant is owner and proprietor of the artistic features involved in the trademarks and holds copyright registration No.A-87830/2009 and 87831/2009. Further claims were made that the appellant's goods and business under the trademark/label acquired tremendous goodwill and reputation in the markets and has attained sizable turnover.
Thereafter, it was alleged that the respondent was infringing and passing off the label trademark 'Nikah' in respect of attar and perfumes by imitating deceptively similar label with prominence of word 'Nagma'; the respondent was selling its goods with a copied label trademark to that of the appellant's trademark/label. The distinctive light green combination of colour alongwith the style of display of 'Rani' (Queen) and 'Mor' (Peacock) alongwith the word 'Nagma' was being used with a dishonest, malafide and fraudulent intention. It was alleged that the overall resemblance between the (3 of 12) [CMA-1286/2016] appellant-plaintiff's trademark/label and that of the respondent's trademark/label is so close that the same is apparently a result of deliberate imitation. The unwary customers are bound to get confused and deceived, resulting in loss of goodwill and reputation of the appellant-plaintiff. It was prayed that the respondent be injuncted by way of temporary injunction from using the similarly deceptive trademark/label.
A response was filed by the respondent to the plaint as well as the application seeking temporary injunction, inter alia, claiming that the label trademark 'Nagma' was being used for many years, the firm was registered since the year 1964 and is doing business since then, the label trademark is not deceptively and confusingly similar to the label trademark and there is no decrease in sale of the appellant's products and in absence of actual damage, evidence by affidavits of third party, no case is made out.
The trial court after hearing the parties, came to the conclusion that from the perusal of the two trademarks, there was no deceptive similarity, colour scheme was different. The respondent was using the trademark 'Rani' (Queen) and 'Mor' (Peacock), from before the same was got registered by the appellant and, therefore, there was no violation of provisions of the Trade Marks Act. No material has been produced to indicate any confusion and the names of the product were also different and, therefore, did not find any prima facie case in favour of the appellant. While considering the aspect of balance of convenience and irreparable injury, it was found that besides the fact that (4 of 12) [CMA-1286/2016] phonetic similarity has not been proved, the appellant has failed to prove that there has been any loss in business. There was material available on record to show that the respondent firm was registered since the year 1964 and was using 'Rani' (Queen) and 'Mor' (Peacock) for selling perfumeries. The appellant has obtained the registration in the year 2009 and, therefore, there was no question of any irreparable injury and, consequently, dismissed the application.
It is submitted by learned counsel for the appellant that the trial court committed error in rejecting the application for temporary injunction filed by the appellant while applying wrong parameters. It was submitted that side by side comparison is not permissible, actual damage is not necessary and, therefore, the very foundation of the order being contrary to law, the order impugned deserves to be set aside.
With reference to the pleadings, it was submitted that there was no plea raised by the respondent regarding use of trademark from prior to appellant's registration and only plea raised was regarding registration of the firm, which has been wrongly read by the trial court, resulting in a perverse finding in this regard. It is submitted that the respondent despite being aware of appellant's registration has not filed any application for rectification and has simply claimed that as others are also using similar trademarks/labels, the respondent was entitled to use the same. It was further submitted by learned counsel for the appellant that the trial court committed error in finding out the dissimilarities between the two trademark labels, whereas it is settled principle (5 of 12) [CMA-1286/2016] that the two label trademarks are to be examined as a whole and a perusal thereof, would reveal that both the labels are deceptively similar. Submissions were also made that merely because a firm exists since 1964, is of no consequence and it is only when the respondent sought to violate the registered trademark that the proceedings were initiated.
Reliance was placed on judgment of Hon'ble Supreme Court in Parle Products (P) Ltd. V. J.P. and Co., Mysore : (1972) 1 Supreme Court Cases 618; Heinz Italia and Anr. v. Dabur India Ltd.: (2007) 6 SCC 1; Corn Products Refining Co. v. Shangrila Food Products Ltd.: PTC (Suppl) (1) 13 (SC) and a judgment of Delhi High Court in Century Traders v. Roshan Lal Duggar & Co. and Ors.: AIR 1978 Delhi 250.
It was prayed that the order impugned passed by the trial court be set aside and application filed by the appellant be allowed.
Vehemently opposing the submissions made by learned counsel for the appellant, learned counsel for the respondent submitted that the trial court has found the prima facie case against the appellant, issues of balance of convenience and irreparable injury have been decided in favour of the respondent, which finding is justified in the circumstances of the case and, therefore, the same does not call for any interference. It was submitted that there is no substance in the allegations made by the appellant regarding deceptive similarity between two label trademarks and the trial court has clearly indicated the said aspect in the order impugned, which is in accordance with the material (6 of 12) [CMA-1286/2016] available on record. The use of Peacock, a national bird and pictorial representation of woman as Queen or Bride, cannot be claimed as violation of the registered trademark.
From the material, which has already come on record, the appellant has failed to show any irreparable injury being caused to him, inasmuch as, his business from the figures available on record, has increased over a period of time and he has failed to show any loss. On the other side, if the respondent is restrained from dealing in the product, the same would lead to irreparable injury to him. The balance of convenience is also in favour of the respondent, inasmuch as, both the Peacock and Bride being used by the respondent are different from the marks being used by the appellant. Further submissions were made that the court should be slow in interfering in exercise of discretion by the trial court in this regard.
Reliance was placed on Wander Ltd. & Anr. V. Antox India P. Ltd.: 1990 (Supp) SCC 727; Ramdev Food Products Pvt. Ltd. v. Arindbhai Rambhai Patel & Ors.: AIR 2006 SCC 3304 and Rajendra Singh Shekawat v. M/s. Shrinath Heritage Liquor Pvt. Ltd.: (2014) 1 DNJ (Raj.) 416.
I have considered the submissions made by learned counsel for the parties and have perused the material available on record.
From the bare perusal of the order passed by the trial court, it is apparent that the trial court rejected the application essentially by side by side comparing both the labels and on its coming to the conclusion that there were several dissimilarities between the two products and apparently did not take an overall (7 of 12) [CMA-1286/2016] view of the two labels. Further the trial court was also swayed by the fact that the respondent's firm was registered since the year 1964 and was allegedly using pictures of Queen and Peacock on its products, whereas the appellant's firm got the registration in the year 2009.
So far as the procedure adopted by the trial court in comparing the two trademark labels and pointing out dissimilarities is concerned, the law in this regard was settled way back in the case of Parle Products (P) Ltd. (supra), wherein it was, inter alia, laid down as under:-
"9. It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken by the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case we find that the packets are practically of the same size, the color scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence. The word "Gluco Biscuits" in one and "Glucose Biscuits" on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in our opinion who has a look at one of the packets today may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs' goods, he might easily mistake the defendants' wrapper for the plaintiffs' if shown to him some time after he had seen the plaintiffs'. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes. We have therefore no doubt that the defendants' wrapper is deceptively similar to the plaintiffs' which was registered. We do not think it necessary to refer to the decisions referred to at the Bar as in our view each case will have to be, judged on its own features and it would be of no use to note on (8 of 12) [CMA-1286/2016] how many points there was similarity and in how many others there was absence of it.
10. It was argued before us that as both the Trial Court and the High Court had come to the same conclusion namely, that the defendants' wrapper was not deceptively similar to the plaintiffs', the finding is one of fact which should not be disturbed by this Court. Normally, no doubt this Court does not disturb a concurrent finding of fact. But where, as here we find that the finding was arrived at not on proper consideration of the law on the subject it is our duty to set the same aside on appeal."
The Hon'ble Supreme Court laid down that the broad and essential features of the two marks are required to be considered for deceptive similarity and that they should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other and it would be enough if the mark in question bears an overall similarity to the registered mark and is likely to mislead a person, whereby one product is accepted in place of the other.
Further in the case of Heinz Italia (supra), wherein the judgment in the case of Wander Ltd. (supra) relied on by counsel for the respondent was also considered, it was laid down that in the case of passing off action the similarities rather than the dissimilarities have to be taken note of by the court and the principle of phonetic 'similarity' cannot be ignored and the test is as to whether a particular mark has obtained acceptability in the market so as to confuse a buyer as to the nature of product he was purchasing.
In view of the settled position of law, the entire consideration of the trial court, which has merely focused on pointing out the (9 of 12) [CMA-1286/2016] dissimilarities between two products, therefore, the same cannot be sustained.
Coming to the other aspect, relied on by the trial court for denying the application on the basis that the firm of the respondent was existing since 1964.
A bare look at the response filed by the respondent to the temporary injunction application, would reveal that the respondent though claimed that the firm existed since the year 1964, it was not the case of the respondent that it was utilizing the pictures of Queen and Peacock from before the appellant. The relevant paras of the reply of the temporary injunction application, in this regard read as under:-
"5& ;g fd izkFkZuk i= dh pj.k laŒ 5 lEiw.kZ dFku xyr gksus ls Lohdkj ugha gSA vrj o lqxU/kh cukus okyh dbZ QeZ vius vius mRiknksa ij jkuh o eksj ds fp= izkFkhZ ds mRiknksa ds igys ls ;kuh lu~ 2000 ls iwoZ ls djrs pys vk jgs gSaA ftudh viuh&viuh jkuh o eksj ds Lo:iksa ls vyx&vyx igpku gSaA ,slh fLFkfr esa izkFkhZ dks vius mRiknksa ij jkuh o eksj ls xks.k vFkZ izkIr gks x;k gks ;g Lohdkj ugha gSA blls izkFkhZ dks dksbZ dkuwuh vf/kdkj izkIr ugha gksrs gSaA fdUrq oknh ds fudkg uke ds mRikn ij nqYgu dk fp= gS] jkuh dk dksbZ fp= ugha gSA bl dkj.k oknh dks jkuh ds fp= ds lEcU/k esa dksbZ vkifÙk mBkus dk dkuquu vf/kdkj ugha gSA"
"--:: fo 'ks "k & d Fk u ::--
1& ;g fd foi{kh izkFkhZ ds O;olk; izkjEHk djus ds dbZ o"kksZa iwoZ ls bl O;olk; esa dk;Zjr gSaA foi{kh QeZ 1964 ls gh jftLVMZ gSa ,oa m|ksx foHkkx ,oa dj foHkkx o izko/kkuksa ds vuqlkj vU; foHkkxksa ls iaftd`r gSA "
(Emphasis Supplied) A bare reading of the above averments in the reply would reveal that it was claimed by the respondent that many firms manufacturing attar and perfumes were using pictures of Queen and Peacock from before products of the appellant i.e. from before (10 of 12) [CMA-1286/2016] 2000, however, it was not the case of the respondent that the respondent firm was using the same from before the product was got registered by the appellant. Merely because certain other firms were allegedly doing something, the same cannot justify the action of the respondent in committing the violation of the registered trademark.
Further, the plea raised in the additional plea is only regarding its working/registration since 1964 and not that it was using the trademark since 1964 as has been read by the trial court, which finding of the trial court based on the misreading of the pleadings is vitiated.
Further, while considering the issue of irreparable injury, the finding recorded by the trial court regarding lack of actual loss in a suit for injunction of the present nature is apparently baseless, inasmuch as, in a suit for injunction based on violation of the trademark and passing off action, a plaintiff cannot be made to wait till he suffers actual loss by the goods being passed off or his trademark being violated before approaching the court seeking injunction against the party. The action essentially is for preventing the violation/continuance of the violation of the trademark, therefore, it cannot be said that for lack of actual loss, balance of convenience would not be in favour of the plaintiff.
In Century Traders (supra), it was laid down that proof of actual damage or fraud is unnecessary in a passing off action whether the relief asked for is injunction alone or injunction, accounts and damages, if there is likelihood of the offending (11 of 12) [CMA-1286/2016] trademark invading the proprietary right, a case for injunction is made out.
In view of the above, the finding of the trial court regarding balance of convenience and irreparable injury also cannot be sustained.
Coming to the merits of the case of the appellant, a bare look at the two packages, which have been reproduced by the trial court in its order as well as by the appellant in its memo of appeal, it would be seen that the colour scheme of the attar-'Nikah' and attar-'Nagma' is almost identical that with a pictures of woman as Queen and Bride and that of Peacock on both. Merely because the picture of Peacock and Bride used are dissimilar, the colour scheme and the overall effect of the package, if seen, the same can easily confuse a purchaser and in those circumstances and the fact that appellant's label marks are registered and admittedly the respondent has started using the same much later in point of time, the appellant has been able to make out prima facie case for grant of injunction.
As already noticed hereinbefore, the issue of balance of convenience and irreparable injury not being dependent on the actual loss caused to the appellant, the very fact that the deceptively similar product was sought to be marketed by the respondent, the same would violate the rights of the appellant, resulting in irreparable injury to him and balance of convenience also lies in his favour.
So far as the submissions made by learned counsel for the respondent regarding not disturbing the finding recorded by the (12 of 12) [CMA-1286/2016] trial court is concerned, as already noticed hereinbefore, the findings of the trial court have been arrived at against the settled position of law regarding consideration of the trademark cases besides being factually incorrect and against the record based on misreading of pleadings, the plea raised in this regard by the respondent cannot be sustained.
In view of the above discussion, the appeal filed by the appellant is allowed. The order dated 19.01.2016 passed by the trial court is quashed and set aside. The application filed by the appellant under Order XXXIX, Rule 1 and 2 CPC is allowed and the respondent is restrained from using the registered trademark of the appellant bearing No. 1184951 in Class-3 in respect of attar and perfumes and label trademark baring No.1770552 1184951 in Class-3 in respect of attar and perfumes depicting 'Nikah', 'Rani' and 'Mor' and/or anything similar to the said registered trademark/label trademark during the pendency of the suit.
It is clarified that this order is confined only to the limited question of grant of temporary injunction, any observations in this regard would not bind the trial court in the proceedings in the suit.
(ARUN BHANSALI)J. PKS