Calcutta High Court
Biswanath Hosiery Mills Limited & Anr vs Micky Metals Limited on 24 August, 2021
Equivalent citations: AIRONLINE 2021 CAL 495
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IA NO. GA 1 of 2020
In
CS NO. 113 of 2020
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction
COMMERCIAL DIVISION
BISWANATH HOSIERY MILLS LIMITED & ANR
V.
MICKY METALS LIMITED
For the Plaintiffs : Mr. S.N Mookherjee, Sr. Adv.
Mr. Debnath Ghosh, Adv.
Mr. Sarosij Dasgupta, Adv.
Mr. Pubali Sinha Chudhury, Adv.
Mr. Harshita Ginodia, Adv.
Ms. Mini Agarwal, Adv.
For the Respondents : Mr. R. Bachawat, Sr. Adv
Mr. R. Mitra, Adv.
Mr. S. Roychowdhury, Adv.
Mr. Bhaskar Mukherjee, Adv.
Ms. Debjani Ghosh, Adv.
Mr. Nafisa Yasmin, Adv.
Hearing concluded on : March 22, 2021
Judgment on : August 24, 2021
DEBANGSU BASAK, J. :-
1. In a suit for infringement of trademark and passing off the plaintiffs have sought interim protection by way of the present application.
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2. Learned advocate appearing for the plaintiffs has submitted that, the plaintiff No. 1 is a registered proprietor of various "LUX" trademarks. The mark "LUX" had been adopted by the founder of the plaintiff No. 1 in the year 1957. The plaintiff No. 1 has also copyright over "LUX" label having certificate of registration dated August 8, 1972. The plaintiff No. 2 is a subsidiary of the plaintiff No. 1 and that the plaintiff No. 2 has been using the name "LUX" since 1995 as its corporate name. He has relied upon the photographs of the packaging of the products of the plaintiffs. According to him, the packaging of the plaintiffs is distinct.
3. Learned advocate appearing for the plaintiffs has submitted that, the plaintiffs have in total 22 registrations in India. He has referred to the sales figure and the advertisement and promotional expenses of the plaintiffs from the year 2008 - 2009 onwards. He has also referred to the sale invoices of the plaintiff from the year 1986 showing massive business and popularity of the trademark "LUX". According to him, the sales, publicity, quality and product and uninterrupted and continuous user of the word "LUX" has been recognised by the Intellectual Property Appellate Board in Biswanath Hosiery Mills Ltd. versus Friends Hosiery and Another 3 on July 15, 2020. He has referred to the other orders which the plaintiffs have obtained from various Court proceedings in order to protect the trademark "LUX". He has contended that, by virtue of such popularity, brand value, public demand and quality of products the mark "LUX" of the plaintiffs has become well-known. The plaintiffs have received awards. The launch events of various "LUX" brands by the plaintiffs have been usually covered by leading media houses. He has referred to the personalities who have been the brand ambassador of the plaintiffs. He has submitted that, the products of the plaintiffs are sold all over the world. The plaintiffs have market presence in 47 countries around the world. The plaintiffs have obtained trademark registration in various countries abroad.
4. Learned advocate appearing for the plaintiffs has submitted that, the defendant applied for registration of "LUX TMT" as a device in class 6 on October 25, 2019 on proposed use basis. Such application had been withdrawn by the defendant. The defendant had obtained registration of the word "LUX TMT 500+ ISI" in class 6, for TMT Bars and Rods on April 30, 2012 with User Date shown as January 1, 2008. The plaintiffs have challenged the same. The 4 defendant has obtained registration of "LUX TMT DURGAPUR"
mark in class 6 on proposed to be used basis. Such application is also under challenge by the plaintiffs. The defendant had applied for registration of the mark "LUX-EK SOLID SOCH" on December 5, 2019 "on proposed to be used basis" and the same is also under challenge at the behest of the plaintiffs.
5. Learned advocate appearing for the plaintiffs has submitted that the defendant is a subsequent user of an identical and deceptively similar mark as that of the plaintiffs. He has referred to the affidavit in opposition of the defendant and submitted that, the defence that the defendant have put forward, are unacceptable.
6. Learned advocate appearing for the plaintiffs has referred to the conduct of the parties subsequent to the cease and desist notice issued on November 18, 2019. He has submitted that, since the plaintiffs are the prior users of the mark "LUX", the rights of the plaintiffs are superior to the registration and are unaffected by registrations obtained under the Trade Marks Act, 1999. He has relied upon 2016 Volume 2 Supreme Court Cases 683 (S. Syed Mohideen v. P Sulochana Bai). He has contended that, the Court while assessing whether a mark is well-known or not has to refer to 5 Section 11(6) of the Trade Marks Act, 1999. He has referred to Section 29(1)(2) and (3) of the Act of 1999 and submitted that, confusion and deception among the general public which are ingredients for success under such subsections are not ingredients for Section 29(4) of the Act of 1999. According to him, the ingredients are trespass, innovation and dilution. He has referred to and relied upon Section 32 of the Act of 1999.
7. Learned advocate appearing for the plaintiffs has relied upon 2011 Volume 4 Supreme Court Cases 85 (T.V. Venugopal v. Ushodaya Enterprises Ltd. and Another), 1997 SCC Online Bom 578 (Aktiebolaget Volvo of Sweden v. Volvo Steels Ltd. of Gujarat), 2013 (56) PTC 243 (Bloomberg Finance Lp v. Prafull Saklecha & Others), 2018 Indlaw CAL 408 (Exxon Mobil Corporation v Mr P K Sen), 2011 (5) MhLJ 369 (Kalpataru Properties Private Ltd. Mumbai and Another v. Kalpataru Hospitality and Facility Management Services Private Limited), 2009 SCC Online Cal 531 (Sony Kabushiki Kaisha v Mahaluxmi Textile Mills), 1997 SCC Online Bom 253 (ESSEL Packaging Ltd. and Others v. Essel Tea Exports Ltd.), 2005 Volume 2 Calcutta High Court Notes 278 (Amar Nath 6 Chakraborty v. Dutta Bucket Industries and Others) and 1994 Volume 2 Supreme Court Cases 448 (M/s Power Control Appliances and Others versus Sumeet Machines Private Limited). He has contended that, interim orders as prayed for should be granted.
8. Learned senior advocate appearing for the defendant has submitted that, the plaintiffs have filed the suit by an authorised representative which is not permissible. He has referred to Order XXIX Rule 1 of the Code of Civil Procedure, 1908. According to him, pleadings should be signed and verified on behalf of the Corporation by the secretary or any director or other principal officer of the Corporation. Since the application has been affirmed by an authorised representative who is not the secretary nor the director or principal officer of the plaintiffs, the application is liable to be dismissed. In support of such contentions, reliance has been placed on the order dated July 26, 2016 passed in IA GA No. 82 of 2016 in CS No. 4 of 2014 (PKS Limited v. State Trading Corporation of India Ltd and Others) and the order dated May 4, 2017 passed by the Division Bench in APO 259 of 2017 GA 7 689 of 2017 in CS 269 of 2009 (Ghanshyam Sarda v. Gobind Kumar Sarda).
9. Learned senior advocate appearing for the defendant has submitted that, the plaintiffs are in the business of hosiery goods and have various label mark registrations in class 25. The defendant has two registered trademarks in class 6 in its favour for TMT bars and rods. He has relied upon 2016 volume 2 Supreme Court Cases 683 (S. Syed Mohideen v. P. Sulochana Bai) in support of his contention that, one registered proprietor cannot sue another registered proprietor for infringement of trademark in view of section 28(3) of the Trade Marks Act, 1999. Therefore according to him, the plaintiffs are not entitled to any relief in respect of infringement of trademark.
10. So far as the claim for infringement of copyright is concerned, learned senior advocate appearing for the defendant has contended that, the plaintiffs have a copyright registration dated August 8, 1972. He has referred to the copyright registration. He has contended that, the defendant became aware of a judgement reported that 2002 (25) PTC 86 (Hindustan Lever Limited v. Biswanath Hosiery) wherefrom it appears that Hindustan Unilever 8 Ltd had filed an application under Section 50 of the Copyright Act, 1957 for rectification of the copyright register by expunging the registration in favour of the plaintiffs No. 1 before the Copyright Board. The Copyright Board had held that Biswanath Hosiery had copied the word "LUX" from Hindustan Unilever Ltd and the same is not an original word. It had ordered the Register of Copyrights be rectified by expunging the word registered in favour of the plaintiff No. 1.
11. Learned senior advocate appearing for the defendant has submitted that, the plaintiffs being aware of the litigation between them and Hindustan Unilever Ltd ought to have disclosed the same. Not having done so, the plaintiffs are not entitled to any relief. In support of such contention he has relied upon 2017 SCC Online Cal 16310 (M/S Sudarshan Seeds Pvt. Ltd. v. Vishal Krishi Products Pvt. Ltd.).
12. Learned senior advocate appearing for the defendant has submitted that, "LUX" is not a well-known mark. He has relied upon a list of entities/persons that have got "LUX" registered in various classes. The plaintiffs' mark "LUX" does not feature in the 9 list of well-known marks published on the website of the trademark registry.
13. Learned senior advocate appearing for the defendant has submitted that, in case of different field of activity no injunction is granted. In support of such contentions he has relied upon 2010 (44) PTC 209 (Skol Breweries v. Unisafe Technologies), 2011 (47) PTC 129 (IHHR Hospitality Pvt. Ltd. v. Bestech India Pvt. Ltd.), 2016 (66) PTC 173 (Essel Propack Ltd. v. Essel Kitchenware Ltd.), 2016 (67) PTC 271 (Reliance Industries Ltd. v. Concord Enviro System Pvt. Ltd.). He has submitted that the application of the plaintiffs should be dismissed.
14. The plaintiffs have claimed that the defendant infringed the trademark of the plaintiffs, infringed the copyright of the plaintiffs and is guilty of passing of the product of the defendant as that of the plaintiffs.
15. In S. Syed Mohideen (supra) the Supreme Court has considered the interplay of Section 27(2) and 28(3) of the Trade Marks Act, 1999 and held that, the rights conferred by registration are subject to the rights of the prior user of the trademark. The 10 rights of prior user are superior than that of registration and are unaffected by the registration rights under the Act of 1999. In common-law jurisdiction passing off right is broader remedy than that of infringement.
16. Even if the mark is found to be a generic word, yet if it is such that has attained distinctiveness and is associated with the business of the plaintiff for considerable time and thereafter the defendant adopts a similar word as one of his two marks to induce innocent users to use or buy the product of the defendant, which establishes dishonest intention and bad faith, the court should grant an injunction to protect the business of the plaintiff. User of similar word by a competitor coupled with dishonest intention and bad faith would empower the court to restrain such user and misuser to do equitable justice to the aggrieved party. This has been observed in TV Venugopal (supra) by the Supreme Court. In the facts of that case, the plaintiff had been engaged in the business of publishing a newspaper in Telugu entitled as Eenadu. The defendant had been engaged in the manufacture of incense sticks and marketed such products as Ashika's Eenadu. In the facts of that case, the Supreme Court had found that the mark of the 11 plaintiff Enadu had acquired extraordinary reputation and goodwill. The products and services of the defendant had been found to be, related, identified and associated with the word Eenadu. In such circumstances, the Supreme Court had found that the defendant could not be referred or termed as an honest concurrent user of the mark Eenadu.
17. In Aktiebolaget Volvo of Sweden (supra) it has been observed that, existence of common field of activity is not an essential feature as a matter of law in a passing off action. In the facts of that case, the court had found that, although the projects of the parties were not similar, but there was some overlapping between the field of activity between the plaintiffs and the defendants. The court has also held that, the plaintiffs enjoyed a very wide and large goodwill and reputation over the brand name Volvo almost throughout the world.
18. Bloomberg Finance Lp (supra) has noted the distinctions between Sections 29(4) and Sections 29(1)(2)(3). It has observed that, a stronger protection is afforded to a mark that has a reputation without the registered proprietor of such mark having to demonstrate the likelihood of confusion arising from the use of an 12 identical or similar mark in relation to the similar goods and services. In the facts of that case, the plaintiff had been enjoying an injunction granted by the US Court.
19. In Exxon Mobil Corporation (supra) the plaintiff was a part of Fortune 500 companies and the plaintiff and the defendant had a registration in the same class. It has observed that, the protection extended by Section 29(4) of the Act of 1999 even to the similar goods and services, is based upon the doctrine of dilution. It has explained dilution to be at type of violation of trademark, in which the defendant's use, while not causing a likelihood of confusion, blurs the distinctiveness or tarnishes the image of the plaintiff's mark.
20. Kalpataru Properties Private Limited (supra) has held that, an action for infringement of registered trademark and for passing off is maintainable even if goods and services being dealt with by the parties are not similar.
21. In Sony Kabushiki Kaisha (supra) the Full Bench of the Calcutta High Court has considered an appeal in a suit for infringement and passing off. It has considered 2001 Volume 5 13 Supreme Court Cases 73 (Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.). It has observed that none of the authorities cited before it laid down in absolute terms that the difference in the class or category of goods of the rival traders would defeat an action for passing off. It has further observed that, it is not their Lordships opinion that the class or category of goods or services to which a trademark is applied ought to be altogether ignored while testing the passing off action.
22. ESSEL Packaging Ltd. and Others (supra) has held that trading must not only be honest but must not even intentionally be unfair. Applying such test, an injunction had been granted.
23. In Amar Nath Chakraborty (supra) the Division Bench of the Calcutta High Court has considered an application for injunction in a suit for declaration and injunction alleging violation of a registered trademark and copyright and complaining of passing off. In facts of that case, the Court had considered the two labels of the contesting parties and held that they were similar in size and shape. The Court had also found that in both the trademarks, colour combination were similar. Taking into account the shape, colour combination and other artistic design of the label, the Court 14 had found that the word 'MAJ' was deceptively similar to the word 'TAJ'. It has observed that once it is established that the label of the defendant is deceptively similar to that of the plaintiff and the plaintiff has been using the label from an earlier point of time, the Court has no other alternative but to grant injunction restraining the defendant from using such trademark unless the defendant can show positive act of the plaintiff consenting the use of the trade mark of the defendant.
24. In Power Control Appliances and Others (supra) the Supreme Court has considered Section 30(1)(b) and 105 of the Trade and Merchandise Marks Act, 1958. It has observed that, acquisence is one of the defences available under Section 30(1)(b) of the Act of 1958. It has held as follows:-
"26. Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc. It implies positive acts; not merely silence or inaction such as is involved in laches. In Harcourt v. White [(1860) 28 Beav 303 : 54 ER 382] Sr. John Romilly said: "It is important to distinguish mere negligence and acquiescence." Therefore, acquiescence is one facet of delay. If the plaintiff stood by knowingly and let the defendants build up an important trade until it had 15 become necessary to crush it, then the plaintiffs would be stopped by their acquiescence. If the acquiescence in the infringement amounts to consent, it will be a complete defence as was laid down in Mouson (J.G.) & Co. v. Boehm [(1884) 26 Ch D 406] . The acquiescence must be such as to lead to the inference of a licence sufficient to create a new right in the defendant as was laid down in Rodgers v. Nowill."
25. In Skol Breweries (supra) the plaintiff had complained of trademark infringement by dilution. In the facts of that case, the Court had found that, the plaintiff failed to establish its claim and therefore proceeded not to grant relief to the plaintiff. In IHHR Hospitality Pvt. Ltd. (supra) the Delhi High Court in the facts of that case did not find any material on record to establish that the mark of the plaintiff had acquired such a high brand equity in India that its use by persons other than the plaintiff in respect of totally unrelated goods/services will dilute the reputation which the brand of the plaintiff enjoys in India. In Essel Propack Ltd. (supra) the Bombay High Court had found that the mark 'Essel' was registered in several classes for various groups under the Trade Marks Act. The Court had refused the prayer for injunction. In Reliance Industries Limited (supra), the Court had considered whether the logo of the defendant was deceptibly similar to that of the logo of the 16 plaintiff or not. It had found that the rival logos were completely different and therefore proceeded not to grant any relief to the plaintiff.
26. Difference in the class or category of goods of the rival parties would not per se defeat an action for passing off. However, the difference in the class or category is one of the factors that the Court has to take into consideration. A plaintiff can also sustain an action for passing off even on the basis of a generic word if the plaintiff is able to establish that, the generic word used as a mark has attained such distinctiveness and has been associated with the business of the plaintiff for a considerable period of time. In such a situation the plaintiff has to establish that the defendant has used the mark subsequently to induce innocent buyers or users to buy or use the defendant's product as that of the plaintiff's. The plaintiff has to establish that the conduct of the defendant has been in bad faith and with dishonest intention.
27. The plaintiffs have been using the word "LUX" much prior to the defendant in marketing their products. The word "LUX" by itself is not a new coinage brought about by the plaintiffs. The word "LUX" means the measure of the light. There is nothing unique in 17 the word for the plaintiffs to claim that they coined the word. In fact the plaintiffs have not claimed to do so. The word "LUX" has been used by various legal entities to market their products.
28. The plaintiffs had been involved with litigation with Hindustan Liver Limited with regard to the registration of copyright existing in favour of the plaintiffs. Hindustan Liver Limited had applied under Section 50 of the Copy Right Act for rectification of the copyright register by expunging registration no. A 814-72. The Copyright Board in the case reported at 25 PTC 86 (CP) had directed the Register of copyright to be rectified by expunging the word "LUX" with registration no. A-814/72 in the name of Giridhari Lal Todi proprietor of M/s Biswanath Hosiery. The plaintiffs have placed on record a subsequent order of the Copyright Board which recalled its earlier order directing rectification of the copyright register.
29. The word "LUX" has been registered in favour of at least two parties namely the plaintiffs and Hindustan Liver Limited in different classes. The plaintiffs and the defendants are in different classes of business. The plaintiffs are in Hosiery Business while the defendant is a manufacturer of TMT Bars. It is highly unlikely that, Hosiery goods and TMT Bars would be sold in the same shop. 18
30. The mark of the plaintiffs does not feature in the list of well- known marks published on the website of the trademark registry prepared under Rule 124 of the Trade Marks Rules, 2017. The plaintiffs have not applied for their trademark to be treated as a well known trademark in terms of Rule 124 of the Trade Marks Rules, 2017.
31. Taking into account that, once the trademark of the plaintiffs was decided to be taken off the register and thereafter restored on consent it is apparent that there is superior right in respect of "LUX" if not the same right existing in favour of another legal entity. Such legal entity is not a party to this suit. The fact that there exists a superior if not similar right in respect of the word "LUX" in favour of a third party, discounts the claim of the plaintiffs of distinctiveness of the mark "LUX". On the consideration of the facts and circumstances of the case, it cannot be said that the plaintiffs' mark "LUX" has attained such distinctiveness so as to allow the plaintiffs to succeed at the interim stage of the suit.
32. The objection of the defendant that, the suit filed by an authorised representative on behalf of a company is not maintainable in law is not decided at this stage as the same can be 19 treated as a curable defect and that, the plaintiffs can be afforded one opportunity to correct such defects, if there be any.
33. In such circumstances, I find no reason to grant any interim relief to the plaintiffs. IA GA No. 1 of 2020 in CS No. 113 of 2020 is dismissed without any order as to costs.
[DEBANGSU BASAK, J.]