Bombay High Court
Chimanlal Narsaji Suhan vs Parasmal Mithalal Parmar And Another on 18 February, 1997
Author: S.S. Nijjar
Bench: S.S. Nijjar
ORDER S.S. Nijjar, J.
1. This Notice of Motion has been taken out by the plaintiff praying for an order of injunction restraining the defendants form in any manner using in relation to milk cans and buckets the trade marks bearing devices of Cow and or Ox or words COW BRAND and/or OX BRAND or any other mark or word or device deceptively similar thereto in any manner whatsoever so as to infringe the plaintiffs's trade mark No. 307852. Similar injunction is sought in respect to the trade mark OM PARAS in relation to sieves.
2. According to the case pleaded in the plaint, the plaintiff adopted and commenced use of trade mark and label mark consisting of the word "OM PRABHAT" commenced use of trade mark and label mark consisting of the word "OM PRABHAT" written in English and device of "Cow" in respect of buckets, milk cans and sieves in the year 1972. The trade mark and label are at Exhibits A-1 and A-2 to the plaint. The essential features of the trade mark given in Exhibit A-1 are the device of Cow within two curved lines. Above the said device of Cow, the word OM PRABHAT is represented along the top curved line and the bottom curved line similarly followed along with the word BOMBAY so as to form the ground or base of the said device. The plaintiff commenced use of the trade mark OM PRABHAT is respect of sieves also. On 20th August, 1975, the plaintiff applied for registration of the trade mark, Exhibit A-1, under the Trade and Merchandise Marks Act, 1956 (hereinafter called "the Act") and the same has been registered under No. 307852 in respect of buckets included in Class 21 for sale in the State of Maharashtra, Gujarat, Madhya Pradesh, Union Territory of Goa, Daman and Diu. On 18th July, 1979, the trade mark OM PRABHAT was registered under the Act as a trade mark No. 351518 in respect of sieves, milk cans and winnowing baskets. According to the plaintiff the device of cow is the most essential integral and memorable part of the trade mark registered under No. 307852. The milk dhabbas, milk cans and buckets of the plaintiff bearing the said label are identified by the members of the public as the COW BRAND products of the plaintiff alone and of none else in the market. In or about 1990 the plaintiff added words GAI CHHAP above the upper curved line and commenced describing the said device in Devnagiri script also. The said trade mark is continued to be used till today in respect of buckets including milk cans. Thus the complete trade mark shows the device of cow within two curved lines, one each at the top and bottom, preceded at the top by the word OM PRABHAT above the top curved line followed by words COW-BRAND writed in devnagiri script and the word BOMBAY appearing below the bottom line. This trade mark is embossed on the product. It is stated that the plaintiff has also been using the trade mark consisting of the words OM PRABHAT registered No. 351518 in respect of sieves since 1972. The said trade mark OM PRABHAT is written within an oval-like device and is embossed on the product in addition to the printing on the outer package. According to the plaintiff the products bearing the aforesaid trade marks of the plaintiff are very popular.
3. In or about 1993, the plaintiff came across an advertisement bearing No. 493945 in the Trade Mark Journal No. 1067 dated 16th November, 1993 for a label mark sought to be registered by the first defendant in respect of milk cans and buckets in respect of which the plaintiff's trade mark is already registered. The essential feature of the said trade mark sought to be registered was a device of a cow enclosed within two curved lines. The words COW BRAND were written under the top curved line and the word BOMBAY was written below the bottom curved line. Since the said trade mark was nothing but a slavish copy of the plaintiff's trade mark No. 307852 the plaintiff opposed the registration of the said trade mark by filing a notice of opposition in or about 9th March, 1994. In the reply filed by the defendant to the opposition it was contended that he had applied for registration of another trade mark bearing No. 493946 having a device of OX and has been using both the trade mark. On taking search at the Trade Marks Registry, the plaintiff found that the said trade mark had been advertised in the Trade Mark journal No. 1064 dated 1st October, 1993 in respect of milk cans in Class 21. The essential feature of the said trade mark sought to be registered was a device of an OX enclosed in two similar curved lines. The words OX BRAND were written under the top curved line and the word BOMBAY was appearing below the bottom curved line. The trade mark was proposed to be used in respect of milk can. The plaintiff has inadvertently not opposed the said trade mark bearing the device of OX. Thereafter the plaintiff came across another advertisement in the Trade Mark Journal No. 1102 dated 1st May, 1995 of a trade mark consisting of the device of cow within two curved lines and words COW BRAND written above the said device and the word BOMBAY below the bottom curved line. The said trade mark was advertised under Application No. 493946 B. This was stated to be the correct mark to be read and deemed under the said application. This application was also opposed by the plaintiff. It is stated that the entire label under application referred to above is also a slavish copy of the plaintiff's registered label mark except that the word OM PRABHAT has been replaced with the words COW BRAND. On enquiries having been made the plaintiff found that no goods bearing the marks COW BRAND and OX BRAND were available. However, it came to the plaintiffs notice in July, 1995 that the defendant had commenced the sale of milk cans and buckets bearing the trade marks COW BRAND and OX BRAND and had embossed the same on his goods. The plaintiff also learnt that in or about the first week of August, 1995 the defendants have also commenced sale of sieves being the trade mark OM PARAS which is deceptively similar to the word OM PRABHAT. Thus it is pleaded that the defendants have infringed the plaintiff's registered trade marks Nos. 307852 and 351518. The plaintiff by an advocate's notice called upon the defendants to cease and desist from infringing the plaintiff's trade mark and further from using the said marks so as to pass off their goods as and for that of the plaintiff. These facts have been reiterated in the affidavit in support of the notice of motion.
4. The defendants have filed an affidavit in reply in which the whole claim of the plaintiff has been controverted. It is stated that the notice of motion is liable to be dismissed in limine. The plaintiff has not made out any prima facie case for granting any reliefs. The plaintiff's trade mark consisting of the words OM PRABHAT and the device of a cow is registered only in respect of buckets whereas the defendant is using the trade mark OX BRAND and COW BRAND along with the devices of an OX and COW respectively only in respect of milk cans. As far as the sieves are concerned, the plaintiff's mark OM PRABHAT (word per se) is registered subject to a disclaimer of the word OM whereas the defendant is using the trade mark OM PARAS which is visually, phonetically and conceptually quite different. The products of the defendant are sold under a totally different trade mark. Similarly on the question of alleged passing off the claims of the plaintiff are not supported by any documentary evidence. The plaintiff has failed and neglected to offer inspection of his invoice books for the period commencing from the year 1986 upto the date of the institution of the suit. The invoices produced for inspection are of a suspicious nature. The plaintiff has made false statements in the plaint to the effect that defendant No. 1 is using trade mark OX BRAND and COW BRAND in respect of milk cans and bucket whereas in fact the defendant is using these marks only in respect of milk cans. The plaintiff has fraudulently suppressed the fact that the trade mard OM PRABHAT (word per se) is registered in respect of, inter alia, sieves, subject to a disclaimer of the word OM. Consequently the plaintiff has no exclusive right to use the word OM. The registration of Plaintiff's trade mark No. 307852 is suspicious. The advertisement in the trade marks journal in respect of buckets included in class 21 was for sale in the State of Gujarat, Madhya Pradesh and Union Territory of Goa, Daman and Diu whereas the State of Maharashtra is included in the registration certificate. This is relevant because the defendant's products under the trade mark OX BRAND and COW BRAND are exclusively sold within the State of Maharashtra. It is the plaintiff's own claim that the words GAI CHHAP in the trade mark was used only since the year 1990. On the other hand defendant had been using the word OX BRAND and COW BRAND in respect of milk cans since the year 1988. Hence the application of defendant No. 1 for registration of these two marks dated 6th July, 1988. Thus the rights of the defendant are protected under Section 33 of the Act. The notice of motion is also liable to be rejected on the ground of gross and unconscionable delay and laches on the part of the plaintiff in filing the above suit and in taking out the notice of motion. The defendants have been selling the products under the disputed trade marks over the last 7 years to the full knowledge of the plaintiff. Having slept over the matter, the plaintiff cannot be granted any interim relief. There is no similarity let alone any deceptive similarity between OM PRABHAT on the one hand and OX BRAND, COW BRAND and OM PARAS on the other.
5. Counsel for the plaintiff has referred to various sections of the being Sections 2(d), 11, 12, 27, 28, 29, 30, 31, 33 and 56. It is stated by the Counsel that the principles with regard to the various factors to be taken into account in a suit of this kind have been culled out by a Division Bench of this Court reported as M/s. Hiralal Prabhudas v. M/s. Ganesh Trading Co. (AIR 1984 Bom 219).
After taking into consideration the long chain of authorities and the commentaries of the experts the Division Bench has culled out certain principles in deciding the question of similarly of two marks. In paragraph 5 it is observed as under :
"What emerges from these authorities is (a) what is the main idea or salient features, (b) marks are remembered by general impressions or by some significant detail rather then by a photographic recollection of the whole, (c) overall similarity is the touchstone, (d) marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection, (e) overall structure, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied, (f) the purchaser must not be port in a state of wonderment, (g) marks must be compared as a whole microscopic examination being impermissible, (h) the broad and salient features must be considered for which the marks must not be placed side by side to find out differences in design and (i) overall similarity is sufficient. In addition, indisputably must also be taken into consideration the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances."
A perusal of the observations quoted above makes it clear that it is not necessary for me to refer to the catena of judgments offered by the Counsel for the parties in support of their propositions. The Division Bench has held that, applying the test that the marks must be looked at from the first impression of a person of average intelligence and imperfect recollection, the labels therein were deceptively similar to each other. Thus they were likely to deceive or cause confusion. Reason was that Hiralal and Himatlal are both common Indian names. There was a great deal of phonetic similarity in the two words taken in conjunction with the otherwise similarity in the get up of the offending label with the appellant's label. This would undoubtedly confuse an ordinary purchaser of average intelligence and imperfect recollection and who may even be illiterate. It is submitted by the Counsel for the plaintiff that keeping that above principles in view the trade names of the defendant are likely to cause confusion in the minds of an average customer. There is hardly any distinction between the trade mark of the plaintiff and that of the defendant which can be discerned by a person of average intelligence and imperfect recollection. Of course, on a very close scrutiny certain distinguishing features may be there. But that, according to the Counsel for the plaintiff, is not the test. It is stated that the broad and salient features must be considered for which the marks must not be placed side by side to find out the difference in design. The nature of the commodity, the class of purchasers and the mode of purchase and other surrounding circumstances must also be taken into consideration. Counsel has also referred me to commentary by P. Narayanan in the book titled "Law of Trade Marks and Passing Off, 4the Edition." To my mind, the principles referred to by the Counsel are elaborately discussed in the Division Bench Judgment in paragraphs 4, 5, 7, 8, 9, and 10 of the said judgment.
6. On the other hand, Counsel for the defendants has stated that the two trade marks are wholly distinguishable from each other. Apart from this, he has made a statement so far as the cow brand is concerned that the defendants themselves will not use the same in relation to the milk can during the tendency of the proceedings. This statement is made without prejudice to all the submission he may make at the final stage of the suit. It is submitted by the Counsel that even the case pleaded by the plaintiff himself in para 5 of the plaint is wholly vague. In paragraph 5 it is stated that the registered trade mark No. 307852 is in respect of buckets included in class 21. On July 18, 1979 the word OM PRABHAT was registered under No. 351518 in respect of sieves, milk cans and winnowing baskets. Thus it is submitted that it would not lie in the mouth of the plaintiff to claim that the trade mark registered under No. 307852 was also in respect of milk cans. Had that been so, then the same would have been registered as it has been done in the case of sieves. Further in paragraph 6, there is no date mentioned as to when the plaintiff started use of the word COW BRAND. Rather it is stated that in or about 1990 the plaintiff added the word GAI CHAAP above the upper curved line and commenced inscribing the said words in Devnagri script also. It is for this reason that when the defendants made application No. 493495 the same was not challenged. Opposition was filed only to the corrigendum which was subsequently issued. It is also submitted by the Counsel for the defendants that even otherwise the plaintiff has not produced any evidence in support of his claim. The affidavits attached to the affidavit in rejoinder are hardly of any evidentiary value. The cash memos all use the word OM and SHREE. These are words of universal application and are used as being auspicious words. Furthermore, the plaintiff has not given inspection of the original documents from 1987 till the filing of the suit. The inspection as stated in the affidavit in rejoinder was, offered only of the documents from the year 1973 to 1987-88. Thus it is stated that no case whatsoever has been made out by the plaintiff for the grant of interim relief. It is further submitted by the counsel that COW BRAND is of a descriptive nature. It is a trade mark which is directly linked with the product. Thus nobody could have exclusive use of the same. It has been argued by the counsel for the plaintiff that even if there is no registration in favour of milk-can the dictionary meaning of the word "bucket" makes it clear that "bucket" includes "cans". Refuting this argument, Counsel for the defendants has stated that the word "cans" is not a term of art which cannot be understood by the ordinary person. The general meaning of the "bucket" is that it is an open ended vessel whereas "can" is a closed ended vessel. Thus going to the dictionary meaning of "bucket" and "can" has no relevance. As for the use of the word OM PARAS as opposed to the use of the word OM PRABHAT, the two are distinguishable. There is no phonetic similarity. In fact a complete justification for the use of the word "PARAS" has been given by the defendants in their affidavit in reply. It is stated that the name of the defendant No. 1 is Parasmal Parmar. Thus the word "PARAS" has been taken from his personal name. On the other hand the word "PRABHAT" means morning. Thus there can be no similarity and no confusion is likely to arise between the said words.
7. I have considered the arguments put forward by both the Counsel. Very lengthy arguments were addressed and the well-settled law was reiterated. The arguments were buttressed by citing numerous authorities. I am of the considered opinion that in view of the law laid dawn by the Division Bench quoted above, it is not necessary for me to consider the other authorities cited. It is an admitted fact that the proceedings about the registration of the trade mark of the defendants are pending before the Registrar. It is also an admitted fact that wherever has been stated here has to be stated before the Registrar also. I am also consicous of the fact that the Registrar is an expert tribunal which is daily dealing with the questions which are involved in the present suit and the notice of motion. I am also inclined not to express any opinion which may prejudice the outcome of the proceedings before the Registrar. The defendants have been using the trade marks for quite some time. I have also given a superficial examination to the outer appearance of the trade marks in dispute. To my mind it would be difficult to conclude that the device of "cow" is likely to be confused with the device of a "bull". I do not think that a milkman who is going to buy the "can" for selling milk would not be able to distinguish a "bull" from a "cow". So far as OM PRABHAT and OM PARAS are concerned they are logos printed in English. Any customer who is going to buy on the basis of the English trademark would obviously be familiar with the English language. These words are not likely to be confused with each other. Keeping these facts and circumstances in view I find no merit in the notice of motion. The notice of motion is hereby dismissed with no order as to costs.