Bombay High Court
Parle Products Private Limited vs Parle Agro Private Limited .. .. Defenda ... on 18 December, 2008
Equivalent citations: 2009 (3) AIR BOM R 525, 2009 A I H C 2831 2009 CLC 716 (BOM), 2009 CLC 716 (BOM)
Author: Roshan Dalvi
Bench: Roshan Dalvi
1
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
O. O. C. J.
Notice of Motion No.4431 of 2007
In
Suit No.3203 of 2007
Parle Products Private Limited. .. .. Plaintiff
V/s.
Parle Agro Private Limited .. .. Defenda nt
Dr.Veerendr a V. Tulzapur ka r, Sr. Advocate with Mr.Salil Shah,
Mr.Rames h Gajaria, Mr.M.R . Nair, Miss Deepa Hate and Miss
Chitra Paras nis i/by M/s.Gajria & Co. for Plaintiff.
Mr.Ja n a k Dwarkada s, Sr.Advocate, Mr.Navroz Seervai,
Sr.Advocate, Mr.Rahul Chitnis, Mr.Nishad Nadkar ni and
Mr.Shailendr a Bhanda de i/by M/s.DSK Legal for Defendant.
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CORAM : SMT.ROSHAN DALVI, J.
Dated : 18 th Decemb er 200 8
JUDGMENT :
1. The parties to the Suit are Companies incorporated by two Groups of the family of one Mohanlal Dayal Chau h a n who have been carrying on business in the name of "Parle" as a part of their corporate name in respect of products for which each has obtained registered tradema r k s, inter alia, for the word "Parle" singly or in conjunction with other words. Whereas the Plaintiff carries on business of biscuits and confectioneries in their corporate name, the other group of family of Mohanlal Dayal Chau h a n carrying on business of ::: Downloaded on - 09/06/2013 14:09:33 ::: 2 beverages has diversified also into the business of confectioneries which are man ufact u red and marketed by the Defendant. It is the Plaintiff's case that the two groups of the family of Mohanlal Dayal Chauh a n hailing from Vile Parle were to carry on distinct and separate fields of activities being biscuits and confectioneries on the one hand and beverages on the other and, therefore, neither can trample upon the field of business activity of another so as to use any trade name or market any product which would be similar to the registered trade marks of that other.
2. Several facts are admitted between the parties and require to be noted at the inception.
(a) The initial business was set up by Mohanlal Dayal Chau h a n in 1929 in the name of Parle Products Manufact uring Company.
(b) This was a partner s hip business of Mohanlal along with his 5 sons to carry on business of selling confectioneries.
-(c) In 1939, the said Firm expanded its activity into man ufact u re and sale of biscuits.
(d) Thereafter the said Firm further expanded its line of ::: Downloaded on - 09/06/2013 14:09:33 ::: 3 business to beverages through another Partners hip Firm, Parle Bottling Company. The 5 sons were the part ners of that Firm.
(e) In 1950 the Plaintiff was incorporated. All the partner s were its first Directors.
(f) In 1952 Parle Bottling Compa ny was converted into a Limited Company owned by all the brothers.
(g) There was division of labour between the brothers :
Kantilal and Pitamber looked after the business of biscuits and confectioneries; Jayan tilal looked after the business of beverages. Hence the Plaintiff was looked after essentially by 2 of the sons Kantilal and Pitamber and Parle Bottling Compa ny Limited was looked after essentially by Jayantilal.
(h) Yet all of them earlier continued to hold shares in both the Companies. Subseq ue n tly Jayantilal and his family "exited" from the Plaintiff and Kantilal and Pitamber and their families "exited" from Parle Bottling Compa ny Private Limited.
(i)Both the Firms contin ued to use the word "Parle" as a part of their corporate name as well as a trade mark on the products manufact u re d, marketed and sold by them.::: Downloaded on - 09/06/2013 14:09:33 ::: 4
(j) Both the groups marketed and sold their respective products under specific product identification marks / b r a n d s e.g. Monaco, Crackjack, etc. by the Plaintiff's group and Fruiti, Appy and Bailley by the Defenda nt's group. This was with the word "Parle" as its prefix or suffix.
(k) The decendent s of Jayantilal incorporated the Defenda nt- Company. The Defenda nt also has used the words "Parle Agro" in its corporate name.
It is accepted by both that each of them can use the word "Parle" for the specific products which each group was initially man ufact u ri ng or looking after. Hence the Plaintiff has no quarrel with the use of the word "Parle" by the Defenda nt in respect of its beverage products. The Defenda nt has no quarrel with the use of the word "Parle" by the Plaintiff in respect of confectioneries and biscuits. Each has however been nat ur ally using separate names / m a r k s / b r a n d s for each of their separate products as illustrated above.
3. It must be appreciated that the initial business was of a Partners hip Firm. The business expanded and diversified. The part ners formed a Limited Company. All the businesses were carried on by that Limited Company. That was the Plaintiff- Company. Thereafter they formed another Company.
::: Downloaded on - 09/06/2013 14:09:33 ::: 5Thereafter the partners divided their manageme n t as aforesaid. Yet each of them had shares in both the Companies. Subseq ue n tly the shares of both the brothers were sold so as to "exit" from one of the Companies.
4. Both the brothers / d ivisions / c o m p a nies used the word "Parle" in their respective field of activities without objection of the other. Their tradema r k s have been registered under Clauses 29, 30 and 32 of the Trade Marks Act, 1999.
5. In July 2007, the Defenda nt expanded and diversified into confectionery business. It man ufact u red toffees under its product identification mark and brand name "Mintrox" and "Buttercup". The Defendant used this product identification mark along with the words "Parle" or "Parle Confi" on the labels of the products. It is to this that the Plaintiff has taken exception in view of its registered tradema r k s "Parle" as well as Parle along with other names relating to the business of biscuits and confectioneries by way of words or labels.
6. Exhibit- A to the Plaint shows the various products man ufact u red by the Plaintiff under the tradem a rk "Parle", "Parles" or "Parle" with the relevant brand of the distinct product. Exhibit- 3 to the Affidavit- in- reply are the ::: Downloaded on - 09/06/2013 14:09:33 ::: 6 Defenda nt's tradema rk s including "Parle" and Parle as the prefix to several of its products. The Plaintiff's product s are biscuits and confectioneries and the Defenda nt's products are beverages.
7. There is no Agreement between the parties, by which either of the groups is restrained from carrying on business of the other group for any period of time or within any place upon the brothers "exiting" for any of the businesses of the family.
The Plaintiff has not disputed
ig the Defendant's right of
carrying on busines s in confectioneries or biscuits. The
Plaintiff only contends that the Defenda nt cannot use the tradema rk "Parle" singly or in conjunction with its product identification marks such as "Buttercup" or "Mintrox".
8. The Defenda nt contend s that Parle is a "house mark" and it can be used by members of the family of Parle to denote the family lineage for any business - confectionery and biscuits or beverages. The Defenda nt further contends that it can carry on busines s of confectioneries and biscuits by virtue of Clause- 3 of the object clause in its Memorand u m of Association. It is argued on behalf of the Defendan t that initially all the brothers as partner s and later as the directors of the Limited Compa ny which was formed, being Parle Bottling Company Private Limited, have knowledge of ::: Downloaded on - 09/06/2013 14:09:33 ::: 7 the said object. It can use the house name "Parle" for the beverages man ufact u red by it as also for the diversified businesses viz. confectioneries. The Defendant was incorporated in 1985 as one of the Compa nies in the group of Companies of the Jayan tilal group and one division of the Defenda nt is called "The Parle Confi Company" which belongs to the Parle Group of Companies. It is, therefore, contended that use of the word "Parle" for the product s man ufact u red by the confectionery division of the Defenda nt is honest and bonafide. The Defenda nt also contends that it has enormou s reput ation and goodwill in its product identification mark under the house mark "Parle". It denies confusion or likelihood of confusion upon it marketing confectionery product s.
9. The tradema r k s of the Plaintiff by words and labels, more specially on the labels must be first seen and appreciated. The tradema rk registration is indeed for biscuits and confectioneries. The earliest registration of 1940s is in the name of "Parles" and "Parle". This continued until about 2001 for various products showing Parle on their labels. In 2005, the Plaintiff registered the tradem a rk "Parle Mint". The mark "Parle Logo" is also stated to have been registered by the Plaintiff. It is an admitted position that the Plaintiff man ufact u red various biscuits such as Glucose, Monaco, ::: Downloaded on - 09/06/2013 14:09:33 ::: 8 Krackjack, etc. The name of its biscuit products are not shown to be separ ate tradema r k s. They are, therefore, the identification marks of those products which the Defendan t calls "product identification marks." As the Plaintiff's business expanded and as it man ufact u red a number of products it could not continue selling the products only in the name of Parle or Parles. The product s being different were also sold under different names - Glucose, Monaco, Krackjack, etc. The Defenda n t man ufact ur ed Fruit juices and mineral waters again under the name "Parle" along with its distinctive and identifiable marks for each of its items such as Fruiti, Appy, Bailey, Soda etc. Mintrox and Buttercup are such product identification marks or brand names for its products being toffees. The labels show the distinctive and identifiable marks, "Buttercup" and "Mintrox"
which the Defenda nt calls product identification marks.
10. A Compa ny or a business house which man ufact u re s an array of products would require separate brand s for each product to give an identity to the product. Such identity would enha nce the recognition of the product and distinguish it from the others. In an increasingly brand conscious and brand recognizing world it is the brand of a particular business house or a family which would attract and acquire goodwill. The sale of a product under that ::: Downloaded on - 09/06/2013 14:09:33 ::: 9 brand requires a separate mark of the product. The product would be identified and sold under such mark .
11. The labels, Exhibit- D to the Plaint, show the words "Parle Confi" in much smaller handwriting on a part of the label below which is mentioned "The Parle Confi Division" almost illegibly. The relief that the Plaintiff wants is to restrain the Defenda nt from using these words "Parle Confi" on its labels on a premise that the Defenda nt has infringed the Plaintiff's tradema rk "Parle".
12. The fact that the two groups hail from a single seminal partner s hip Firm and would, therefore, be entitled to carry on both the businesses of the partner s hip Firm has not been disputed. It will have to be seen whether the Defenda nt can use the word "Parle", be it a house mark or otherwise along with a new word "Confi" which has not been a part of the tradema rk of any of the parties on their labels containing another distinct and bold identification mark of the product.
13. In the case of Anderson & Lembke Limited vs. Anderson & Lembke Inc., (198 9) R.P.C. 124 the right of the parties having a common origin but trading under dissimilar name using the word of the original Company was considered. The Plaintiff and the Defenda nt carried on advertising agencies.
::: Downloaded on - 09/06/2013 14:09:33 ::: 10They had a common origin in Sweden. Whereas the Plaintiff carried on business in the U.K., the Defenda nt carried on business in the U.S. They formed subsidiaries in other countries. Certain local Managers, who were appointed, purcha se d the shares of both the parties. The Plaintiff's products came to be sold under a contract containing a covenant that the vendor would not be involved in any Company or organization in the United Kingdom, using either the name Anderson or Lembke or combination thereof. The Defenda nt opened a branc h office in London under the name BUSINESS ADVERTISING EUROPE. The Defendant's stationery showed "Proprietor : Anderson & Lembke Inc., U.S.A." to which the Plaintiff took exception. It was contended that the U.S. Company was entitled to trade in U.K. but there was a risk or confusion under those circumst a n ce s. The Plaintiff contended that the Defenda nt could not show that it was a part of the U.S. Compa ny in the U.K. in view of the reputation enjoyed by the Plaintiff in the U.K. The partition of the initial Compa ny of Mr.Anderson and Mr.Lembke which had started in Sweden resulted in the Defenda nt- Company carrying on busines s in the U.S. but having gained reputation also off-shore. The Business Advertising Europe was constituted as a branch under an Agreement of the U.S. Compa ny with a Dutch Company which required the U.S. Compa ny to perform its contract in ::: Downloaded on - 09/06/2013 14:09:33 ::: 11 London and not in the U.S. It was observed by Justice Hoffman n thus:-
" It is no more than the truth. The casual reader might wonder what, if any, was the connection between the U.S. and the U.K. companies, but this puzzle is caused by the lawful existence of the two companies with similar name s and not by any representation by the defenda nt s. ..... In this case the defen da nt's trading name could not have been more different. All that this is doing is to include the additional truthful information that it is a branch of the United States compan y ."
The reference to the name of the original business of Anderson and Lembke carried on by the Plaintiff and the Defenda nt earlier was dealt with thus :-
" .... the defen d ant say s that "Anderson & Lembke"
wa s intende d to be a collective name for itself and other European companies associated under the umbrella of Anderson & Lembke International Limited. But the reference to "Europe" made it clear that the name did not necess arily refer to the plaintiff, and the fact that the United States company was carrying on busines s in the United Kingdom under an entirely different name, as I have already said, should have suggested to any reader that it was unlikely to be associated with the plaintiff ."
In this case, the Defenda nt has manufact ured toffees which are confectionery items under the aforesaid identifiable ::: Downloaded on - 09/06/2013 14:09:33 ::: 12 product names Buttercu p and Mintrox and have in smaller print referred to, not the Plaintiff, but its own division of its Company which looks after the confectionery business.
14. The Plaintiff does not have a registered tradem ar k "Parle Confi". Hence the use of that mark by the Defendan t cannot per se be forbidden. It will have to be seen whether the use of the word "Parle Confi" (which includes the word Parle for confectionery items) would amou nt to any misrepresent a tion by the Defenda nt. Misrepresent ation, if any, would result if the undiscerning public who would buy the Defenda nt's toffees, at best, think that it is of the Parle Group of Companies who man ufact u re confectioneries such as toffees, but under a different product name. The Plaintiff's sale of the confectioneries, even of toffees, would not be affected adversely by virtue of the Defendant selling its toffees under two other names.
15. If a third party were to man ufact u re toffees and include on its label the word "Parle" in any font he would, at once, be restrained by the Court from doing so. The Defenda nt's man ufact u re of the toffees coming from the Parle family as it does, is quite another matter. The Defenda nt certainly cannot use the precise mark of the Plaintiff since it is a separate legal entity. However only a reference to the word ::: Downloaded on - 09/06/2013 14:09:33 ::: 13 Parle, the tradem a rk that which both the parties enjoyed due to their lineage from the family of Parle, as has been done by the Defenda nt, is "stating no more than the trut h". Since the Defenda nt's product's name is entirely different, the words "Parle Confi" would at best include the additional trut hful information that it is a division, which is confectionery division, of the Defendant which is otherwise a beverage man ufact u ri ng Compa ny. As in the case of Anderson (supra) the words "Parle Confi" has merely the reference to the parent Compa ny which the Defenda nt calls a house name. But the fact that the corporate name of the Defenda nt is Parle Agro Private Limited, it makes it clear that it does not refer to the Plaintiff or the Plaintiff's businesses.
16. There are, therefore, two concepts i.e. the "product name"
or the "brand name" and the "house name". The parties' house name is Parle. Their various product s have separate and distinct identification names and marks for each of their products. It is justifiably argued by Mr.Dwarkad a s on behalf of the Defenda nt that a customer who walks into the store cannot ask for "Parle" to be sold. He will have to ask for Glucose, Monaco, Buttercu p, Mintrox, etc.
17. Dr.Tulzap urk a r on behalf of the Plaintiff drew my attention to the case of Ramdev Food Products Pvt. Ltd. vs. ::: Downloaded on - 09/06/2013 14:09:33 ::: 14 Arvindbhai Rambhai Patel & ors., 200 6 (33) PTC 281 (SC) . The judgment of Justice S.B. Sinha in that case dealt with the tradema r k used by the members of a family carrying on business in the name of "Ramdev". In that case the business commenced in 1965 by one Rambh ai in the name of "Ramdev Masala Store". He had 3 sons Arvindbh ai, Hasm u k h b h ai and Pravinbhai. He constituted a partner s hip with his sons in 1975. The tradem ar k "Ramdev" was registered in 1986. Another partner s hip Firm "Ramdev Masala" was constituted in 1991 and Ramdev Masala Store was dissolved. The tradem ar k and the goodwill of the Firm was assigned to the Plaintiff in 1992. Under an un us u al Agreement, the Plaintiff allowed the Firm to use the registered tradem a rk for 7 years. Another partner s hip Firm of Ramdev Exports was constituted to export the spices man ufact u red by the Plaintiff- Company. The busines s of man ufact u ri ng spices under the tradem a rk "Ramdev" was run by the 3 brothers in the name of the Plaintiff- Company. The Firms Ramdev Masala and Ramdev Exports were distinct and separate. Their areas of operation were also different as suggested by their names. A Memoran d u m of Understa n di ng (MOU) had come to be executed between the brothers by way of a family settlement to bring to an end their disputes with regard to their respective businesses. All ::: Downloaded on - 09/06/2013 14:09:34 ::: 15 the Directors of the Plaintiff- Company were the brothers.
They held all the shares in the Company along with their family members. A division of the assets was arrived at with the eldest brother Arvindbhai separating from other 2 brothers Hasm u k h b ai and Pravinbh ai. Arvindbh ai became the exclusive owner of busines s of Ramdev Exports and Ramdev Masala. Hasm u k h b h ai and Pravinbhai carried on business in the name of the Plaintiff- Company. The Company was to man ufact u re Masala. Several tradema r k s were registered and belonged to the Compa ny. Arvindbhai started man ufact u ri ng spices in the name and style of "Swad". He got the mark registered as his Firm's tradem ar k. The action by the Plaintiff was upon its case that that mark was deceptively similar to the Plaintiff's registered tradema rk. The Plaintiff's tradema r k enabled the Plaintiff's goods to be identified and thus distinguis hed from the goods of the Defendan t. In paragrap h 58 of the judgment the use by the Defenda nt s was seen to be leading to confusion based upon the three- fold tests in the case of Canon Kabushiki Kaisha vs. Metro- Goldwyn- Mayer Inc., (199 9) RPC 117 thus :
(i)The public would confuse the sign and mark in question.
(Direct confusion).
::: Downloaded on - 09/06/2013 14:09:34 ::: 16(ii)The public would make a connection between the proprietor of the sign and the mark and confuse them. (Indirect confusion).
(iii)The public would consider the sign to be similar to the mark although the two are not confusing. (Association).
18. It was observed that the trade name "Swad" was printed on the labels and packing materials of the Respondent-
Arvindbhai with "Ramdev Masala" as the name of the man ufact u rer in a prominent manner such as would create an impression in the mind of the ordinary unwary customer that the product is of the Plaintiff- Company and not Arvindbhai's partner s hip Firm. It was observed that packing material as well as the wrapper of both the parties were phonetically and visibly similar to the registered mark of the Plaintiff - it contained the masala similarly shown as also the picture of a horse. It was, therefore, held that they were deceptively similar to that of the Plaintiff and would create deception and confusion in the minds of ordinary customers. In that case under the MOU there was a restriction upon Arvindbh ai to carry on wholesale business of Masala and his products were to be sold directly to consu mer s and marked "Not for resale". Hence the ambit of Arvindbhai's busines s was to sell the products through the Appellant's 7 outlets. He could only sell the product s of the Appellant but were not restrained from ::: Downloaded on - 09/06/2013 14:09:34 ::: 17 man ufact u ri ng spices in his own factory. Arvindbhai could also use the Plaintiffs' retail outlets for promoting his own product s. It was however held that under those circumst a n ce s he could not use the mark registered by the Plaintiff as his own.
It can be seen that in that case though a mark "Swad" was registered by Arvindbh ai, the name of the man ufact u rer Ramdev Masala was prominently on the packing material.
This was phonetically and visibly similar to the mark "Ramdev Masala" of the Plaintiff.ig The registration of the tradema rk "Swad" came to be diluted. The use of the mark "Ramdev Masala" in a prominent manner was held amoun ting to infringement of trademar k. In this case, the use of the Defenda nt's marks Buttercup and Mintrox are prominent - in fact so prominent that that is about the only word which can be prominently read on the labels, Exhibit- D to the Plaint. The words "Parle Confi", a part of which contains the tradem a rk of the Plaintiff which is not visibly similar and which is the initial business name of both the parties is put on the packing material most unpromine ntly and is visibly dissimilar to the Plaintiff's tradema r k either "Parle" or Parle with another name but not Confi.
19. Hence though the parties agreed to divide their businesses as per the initial division of labour or specialisation amongst ::: Downloaded on - 09/06/2013 14:09:34 ::: 18 themselves as partner s of the initial partner s hip Firm and could carry on their trade using the name "Parle" in respect of their respective busines se s, they could not use the name "Parle" if it was deceptively similar to the registered tradema rk of the other in the business field of that group.
20. It is argued on behalf of the Plaintiff that the object clause notwithst a n di ng and the Defendan t entering the confectionery business thereu n der, the Plaintiff's tradema rk could not be used by the Defendant.
ig As per the ambit set out in the case of Ramdev (supra) this would be correct up to the point that if the Defenda n t entered the business of confectioneries and biscuits, it would do so without using the tradem a rk deceptively similar to that of the registered tradema rk of the Plaintiff for man ufact u ri ng and marketing its confectionery products and biscuits. Yet it can carry on such businesses without infringing the Plaintiff's tradem a rk. It could not man ufact u re or mark its new products under the same name. It could not adopt a part of the Plaintiff's registered tradema rk as a part of its corporate name as it could not "traffick in trade". [Para- 63 in Ramdev (supra) ].
21. The Defenda nt has not used the same name i.e. the name of the Plaintiff in man ufact u ri ng its products of confectionery items or biscuits. Part of the registered tradem a rk used by ::: Downloaded on - 09/06/2013 14:09:34 ::: 19 the Defenda nt is only the business name "Parle" written unpromine n tly on the labels and as a part of its corporate name. Would that amoun t to trafficking in the Plaintiff's tradema rk ? The case of Ramdev Food Products Pvt. Ltd. (supra) showing the parameters of such trafficking in paragrap h s 60 and 61 of the judgment answers this in the negative. The tests, which are laid down in paragrap h s 63 and 64, are also not satisfied.
22. In paragrap h 77, it is observed that there are 3 elements of Arvindbh ai's tradem ark viz. "Ramdev", "Masala" and "Horse".
These are the prominent features on the labels and packing material of the owner of the registered trade mark. It was held that reprod uction of the tradem ar k to such an extent would cause confusion and deception and amoun t to trafficking despite the fact that Arvindbh ai was otherwise entitled to man ufact u re and sell the same products under the MOU with the Plaintiff. Conseque ntly the argume nt that the label was registered by the Plaintiff and not the name "Ramdev" was rejected in paragrap h 82 of the judgment and as a tradema r k would, inter alia, include a name, in paragrap h 83 the tradema r k which is deceptively similar has been held to be the mark which not only merely resembles the other mark, but is likely to deceive or cause confusion.
::: Downloaded on - 09/06/2013 14:09:34 ::: 20In this case, the mark "Parle Confi" is not deceptively similar to any of the Plaintiff's tradem ar k s. All that it has is the use of the initial business name which the Defenda nt calls a house mark.
23. In paragrap h 92 of the judgment, the conseque nces of a passing off act of the Defenda nt have been set out. It observes that though the Defendan t may not be using the actual tradem ar k of the Plaintiff, the get up of the Defenda nt's goods may be so much like the Plaintiff's that the clear case of passing off could be proved. It is further observed that in an infringement action an injunction would be issued if the Defenda nt improperly used the Plaintiff's mark. If the Defenda nt's mark is identical with the Plaintiff, the question of confusion would not be seen. In paragrap h 93 of the judgment, referring to the case Parle Product s (P) Ltd. vs. J.P. and Co., Mysore (197 2) 1 SCC 618, an overall similarity of the impugned mark with the registered mark is held sufficient as being likely to mislead.
In this case, there is no overall similarity of the words "Parle Confi" to the Plaintiff's registered tradem ar k. None can, therefore, "easily mista ke the Defendant's wrapper for the Plaintiff's if shown to it sometime after it has seen the Plaintiff's ."
::: Downloaded on - 09/06/2013 14:09:34 ::: 2124. What is material is the observation in paragrap h 115 of that judgment. The judgment observes about the use of a tradem a rk by a party which is an outsider and by a party within the family thus :-
" It may be true that there exists a distinction between a suit in a trade mark action against the whole world and a suit for implementation of division of asset s amongst the members of the family ."
However, in that case after the MOU was entered into, the parties separated and ceased to be members of the joint family.
The covenant in the MOU determined the rights of the parties. Hence in that case the rights of Arvindbh ai came to be restricted as contained in the MOU for sale of the Plaintiff's products from the 7 outlets, man ufact u re of Arvindbh ai's own products as well as its sale from those outlets but not the use of the tradem ar k.
In this case, there is no restrictive MOU between the parties. The parties have merely "exited" from each others' businesses by sale of their shares. They never ceased to be members of the house of Parles. There was no restriction upon the Defenda nt to enter into confectionery business which was in fact specifically allowed under the object clause of its Memorand u m of Association. The Defendan t has not used the entire of any ::: Downloaded on - 09/06/2013 14:09:34 ::: 22 of the Plaintiff's tradem a rk s. The Defendant has also not used even a part of the distinctive tradem ar k which was only of the Plaintiff. The Defenda nt has given its own brand name or its identification mark to its new product s just as the Plaintiff has given to its. All that the Defenda nt has done is to "state no more than the truth ", as observed in the case of Anderson (supra) , keeping its tradema r k different from that of the Plaintiff's and its product identification mark completely new and different which is the only prominent part of the Defenda nt's labels.
25. In the case of Ramdev Food Product s (supra) , Arvindbhai, inter alia, was restrained from using the tradem ar k of the Plaintiff, including the tradem ar k Ramdev Masala, but allowed to carry on the business of manufact u ri ng spices in any other name. He was directed to mention in minimu m permissible size how his product was man ufact u re d and marketed by the name of his Firm showing his group with the addition of the words "having no relationship what soever with " the Plaintiff- Company. This was inconson a n ce with the stand a rd s of Weights and Measures Act and Prevention of Food Adulteration Act.
26. The judgment in the case of Ramdev Food Product s (supra) squarely governs the rights and entitlement s of the ::: Downloaded on - 09/06/2013 14:09:34 ::: 23 parties in respect of their tradema r k s and their businesse s in other tradem ar k s and hence stricto senso the judgment s referred to and elaborated in that case need not be separately considered. The five of these judgment s have been specifically relied upon by Dr.Tulzapur k a r in this case though.
27. In the case of Ruston and Hornby Ltd. vs.Zamindara Engine ering Co., AIR 197 0 SC 164 9 the Defendant's tradema rk was identical with the Plaintiff's tradem ar k.
ig The Defenda nt used the word "Rustam India". The Plaintiff, who is the registered proprietor of "Ruston" was granted an injunction on account of the deceptive resemblance of the two words "Ruston" and "Rusta m", the addition of the word "India" being held to be of no conseque nce.
28. In the case of Kirloskar Diesel Recon Pvt. Ltd. & anr. vs. Kirloskar Proprietary Ltd. & ors., AIR 199 6 Bombay 149 , the employee of the otherwise famous Defenda nt- Company, whose surn a m e was Kirloskar started another incorporated Company bearing that name holding that the word "Kirloskar" had acquired a secondary meaning and had almost become a household word. The Defenda nt was restrained from using it in his corporate name. The saving under Section 34 of the Trade and Merchan dise Marks Act, ::: Downloaded on - 09/06/2013 14:09:34 ::: 24 1958, which applied to the name of the person, was held not applicable to a corporate name which was specifically given.
29. In the case of Optrex India Ltd. vs. Optrex Ltd. & anr. , 19 9 0 (1) PLR 29 8 , the Plaintiffs' name being used as essential part of the corporate name of the Defendant for similar goods was held to be of such a man ner as to enable passing off of the goods of the Plaintiff. The get up of the cartons of the Defendan t containing eye drops was shown to be similar in the format as well as style upon a visual examination so as to cause clear confusion to the customers.
Such name was adopted immediately upon the commencemen t of the termination of the user agreement by the Defenda nt. It was held that the Defendant's product s could be "given or sold even quite innocently for the other ". It was held that such name could not be made bearing the corporate name since that would result in confusion. The order that came to be passed in that case was thus:-
" The Defenda nt s are hereby restrained from in any manner using the word "Optrex" as part of their corporate name in such a manner as to pass off or enable others to pass off their goods as those of the 1 st Plaintiffs; and to make it clear that use of the corporate name in the usual manner on the medicines manufactured by the Appellants- Defendant s, that is, in small lettering on one side of the panel of the package / c arton or at the foot of the labels of such medicines, will not amount ::: Downloaded on - 09/06/2013 14:09:34 ::: 25 to a breach of the injunction ."
30. In the case of Poddar Tyres Ltd. vs. Bedrock Sales Corporation Ltd. & anr., 199 3- PTC-253 the word "BEDROCK" used by the Defenda nt s for tyres and tubes for which that precise name was registered as the tradem ar k of the Plaintiff for those precise goods and which formed a part of the Defendant s' corporate name was restrained as being an infringement of the Plaintiff's registered tradem a rk since it was held to be nearly resembling the Plaintiff's registered tradema rk though it may not be its exact imitation.
31. An injunction in the case of Ellora Industries vs. Banarasi Dass Goela, AIR 19 8 0 Delhi 254 came to be considered and it was observed that when the Defendan t's goods which were sold under the distinctive mark "Gargaon" and his busines s name was prominently displayed on his goods amou nted to infringement of the registered tradem a rk.
A part of the corporate name of the Defenda nt being the tradem a rk of the Plaintiff was, therefore, held to tanta mo u n t to passing off as the public would believe that the Defendant's business is the Plaintiffs' due to the common or overlapping field of activity.
::: Downloaded on - 09/06/2013 14:09:34 ::: 26In this case, neither is the Plaintiff's tradem ar k prominen tly displayed, nor is the word "Parle" as the prefix to the word "Confi" prominently displayed, nor is the Defendan t's corporate name promine ntly displayed on the labels, Exhibit- D to the Plaint. The use being only of the earlier used business name, which the Defenda nt calls house name, is, therefore, not seen to be lacking in bonafides or honesty or adopted dishonesty "so as to cash in on the goodwill and reputation " attached to the tradem a rk of the Plaintiff as observed in paragrap h 37 of the judgment in the case of Poddar Tyres Ltd. (supra) upon the facts of that case specifically set out in paragrap h 38 therein.
32. It may be mentioned that each of the aforesaid 4 cases which are in turn considered in the case of Ramdev Food Product s (supra) are cases of the attempt of infringement and / o r passing off by outsiders and not family members, a distinction which is specifically made in paragrap h 115 in the case of Ramdev Food Product s (supra) as quoted above.
33. Mr.Dwarka da s on behalf of the Defendant relied upon a judgment in the case of Astra Pharmac eu t i cals (P) Ltd. vs. Collect or of Central Excise, Chandigarh, (1995) 2 SCC 84 in which the concept of a house mark has been considered from Narayan's book on Trade Marks and Passing Off.
::: Downloaded on - 09/06/2013 14:09:34 ::: 27Though the judgment with regard to the product being covered or not under the Central Excise and Salt Act, 1944, is irrelevant, the concept of a house mark stated by the Defenda nt can be seen from that judgment thus :-
" 677- A. House mark and product mark (or brand name). - In the pharmaceutical busines s a distinction is made between a house mark and a product mark.
The former is used on all the products of the manufacturer. It is usually a device in the form of an emblem, word or both. For each product a separate mark kno w n as a product mark or a brand name is used which is invariably a word or a combination of a word and letter or numeral by which the product is identified and aske d for. In respect of all products both the product mark and house mark will appear side by side on all the labels, cartons etc. Goods are ordered only by the product mark or brand name. The house mark serves as an emblem of the manufacturer projecting the image of the manufacturer generally ."
::: Downloaded on - 09/06/2013 14:09:34 ::: 28Hence the word "Parle" which is used on all the product s of the Plaintiff as well as the Defenda nt is their house mark. For each of their products a separate mark is given and registered.
The product is identified by that separate mark, e.g. Glucose as much as Buttercu p. The product mark as well as house mark may appear side by side. The case of Ramdev Food Products (supra) has decided how they may appear - the house mark cannot appear prominently on the new goods man ufact u red by the Defendan t; the product mark instead should and thus.
34. The mark of the Defenda nt s has been termed as "housema r k" in the case of Bioche m Pharmaceu t i c al Industries vs. Biche m Synergy Limited, 199 8 PTC (18) .
In that case the parties carried on various businesse s using the word "Biochem" in their corporate names. It was observed in paragrap h 20 of the judgment that there were 28 registered tradem a rk s belonging to the Plaintiffs in use with the letters "Bio" as prefix. The Defendant s also used the word "Biochem" as a house mark. They did not use any other tradem ar k for their goods. In that case the goods of both the parties fell in the same class for registration of tradema rk s, though their trade channels were different. But since the goods that they dealt with were drugs, they were common product s though the parties operated in different ::: Downloaded on - 09/06/2013 14:09:34 ::: 29 fields of activities. The marks used by the parties were, therefore, referred to as the house mark, they being a part of the tradem a rk or a part of the tradem ar k for a number of products in their various businesses.
35. Such was the use of the mark in the case of Reed Executiv e Plc vs. Reed Busines s Informati on Ltd., [2004] R.P.C. 40 to which my attention has been drawn by Mr.Dwarka da s. It was held that the word "Reed" is the only "trade marky" bit and is used in general. It is observed that "Reed" was a common surna me and the additional words used by the Defendant "Reed Business Information" in its corporate name would not go unnoticed by the average cons u mer. It was further observed that the average cons u mer would not connect "Reed Business Information"
with an organisation called "Reed". The judgment considered the core activities of the Defenda nt as a service provider and not the mere use of a part of the Plaintiff's name as a part of the Defenda nt's corporate name to grant an injunction to the Plaintiff.
36. Similar was the case of Parker- Knoll Limited vs. Knoll Internati o nal Limited, 196 2 RPC 265 which has been extensively considered in the case of Hindustan Embroidery Mills Pvt. Ltd. vs. K. Ravindra & Co., PTC (Suppl) (2) 666 (Bom) . In the case of Parker- Knoll (supra) , the Plaintiffs ::: Downloaded on - 09/06/2013 14:09:34 ::: 30 had registered the tradem ar k "Parker- Knoll". It sued for its injunction and passing off the use of the word "Knoll" or "Knoll International" on the ground that that was the essential feature of the Plaintiffs' name. An injunction with regard to the infringement action was directed to be qualified so as to permit bonafide user by the Defenda nt s of their full name "Knoll Intern ational" or "Knoll Intern ational Limited"
and with regard to the passing off action, the use of the words "Knoll International" was directed to be qualified by the words "without clearly distinguishing their goods from the goods of the plaintiffs ". Only the word "Knoll" was held not to be permitted to be used by the House of Lords in appeal from the said directions.
37. Kerly on Law of Trade Marks and Trade Names, Thirteen t h Edition (200 1) in Chapter 14 paragrap h 90 states that a partner or employee who has left a well-known firm and set up a similar business of his own is entitled to advertise his former connection, but must take care to do it so as not to suggest that the connection is still existing between them and him, or that they have ceased to carry on business and he is their successor. Further in paragrap 201 of that chapter Kerly has warned that an injunction would be granted if such business was calculated to lead to the belief that it was an agency or depart me nt of the ::: Downloaded on - 09/06/2013 14:09:34 ::: 31 claima nt compa ny. This shows that otherwise than in a case of intended misdirection, an erstwhile partner or employee can even advertise his former connection taking care to show that it is only history and that there is no current agency or branch of the other business firm.
38. It is seen that the real test of the Plaintiff's action and the Defenda nt's use of the word "Parle" in its corporate name as well as in the mention of "Parle Confi" as a division of the Defenda nt would be governed by the detailed analysis of such user amongst family members made in Ramdev Food Product s (supra) and as per guidelines reflected in the Reed's case (supra) and in Parker- Knoll's case (supra) .
39. It may be mentioned that the corporate name of the Defenda nt would have been adopted upon following the procedure under Section 20 of the Companies Act, 1956. No exception taken by the Plaintiff under Section 21 thereof at the time of registration of the name of the Defenda nt is shown. The Plaintiff can have no objection to the use of the corporate name per se by the Defenda nt as the business of the Defenda nt in the field confectioneries or biscuits is not challenged.
40. Reliance upon the other judgment s by Mr.Dwarkad a s would ::: Downloaded on - 09/06/2013 14:09:34 ::: 32 also fall in line with the reliance upon the various judgment s of the Plaintiff which do not deal with family members and are concerned with only outsiders.
41. It is urged on behalf of the Defenda nt that in view of the housem a r k that the Defenda nt is entitled to, it must be allowed to use the housem a r k "Parle" as a prefix to the word "Confi" on the labels of the Defenda n t showing its corporate name. The use of the corporate name of the Defenda nt and considering the judgment s supra, the use of the words "Parle Confi" by the Defenda nt may be permitted upon certain directions.
42. The Defenda nt, therefore, cannot be completely restrained from using the labels, Exhibit- D to the Plaint. The Defenda nt's use of the two- product identification marks, with which the Plaintiff can and do have no complaint, can remain at that. The use of the word "Parle Confi" as is shown in the labels need also not to be restrained. However, in line with the directions passed in Ramdev Food Product s (supra) with regard to the statu tory obligations of the Defenda nt under Standar d of Weights and Measures Act and the Prevention of Food Adulteration Act, the Defendan t shall mention the following on the labels for the products henceforth man ufact u red by the Defenda nt :-
::: Downloaded on - 09/06/2013 14:09:34 ::: 33" Manufactu red by Parle Agro Pvt. Ltd."
followed by the following in a little larger font:-
"[Jayantilal Group] - having no relationship whatsoever with Parle Products Private Limited."
43. The Notice of Motion is disposed of accordingly. No order as to costs.
(SMT.ROSHAN DALVI, J.)
44. On application of the learned Advocate for the Defenda nt, this order is stayed for six weeks.
(SMT.ROSHAN DALVI, J.) ::: Downloaded on - 09/06/2013 14:09:34 ::: 34 ::: Downloaded on - 09/06/2013 14:09:34 :::