Bombay High Court
Parksons Cartamundi Pvt. Ltd vs Suresh Kumar Jasraj Burad on 21 March, 2012
Author: Chief Justice
Bench: Mohit S. Shah, Ranjit More
1 APPEAL NO.57-2012
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
APPEAL NO.57 OF 2012
IN
NOTICE OF MOTION NO.2665 OF 2011
IN
SUIT NO.2249 OF 2011
PARKSONS Cartamundi Pvt. Ltd.
41/B, Lalbauag Industrial Estate,
Dr. Ambedkar Road, Lalbaug,
Mumbai-400 012. ig ... Appellant
versus
Suresh Kumar Jasraj Burad,
Sole Priprietor, trading in the business
name and style of M/s.J.K.Sons,
having his office at "J K House" No.80,
Shreeji Industrial Estate, Raipur Mill Compound,
Saraspur, Ahmedabad-380018. ... Respondent
Mr.V.R.Dhond, Senior Advocate with Mr.R.S.Khandekar, Ms.Bhagwati
Trivedi and Ms.Bijal Trivedi i/by M/s.Bhagwati & Co. for the appellant.
Mr.Rahul Chitnis with Ms.Deepa Hate i/by Gajaria & Co. for the
respondent.
CORAM : MOHIT S. SHAH, C.J. AND
RANJIT MORE, J.
DATE : March 21, 2012
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ORAL JUDGMENT (Per Chief Justice):
This appeal is directed against order dated 28 November 2012 of the learned Single Judge declining to grant ad-interim injunction in the appellant's Notice of Motion in the suit for infringement of the registered mark of the plaintiff and copyright and for passing off.
2. The products in question are playing cards. The plaintiff is the registered proprietor of the word mark "MERELANE" and a label mark of which "MERELANE NO.7" is a prominent feature. The defendant's mark is "MARICELL No.7". The learned Single Judge on perusal of the two marks came to the conclusion that there was no prima facie similarity between the words "MARELANE" and "MARICELL".
3. The appeal was admitted on 31 January 2012 and in view of history of past litigation, respondent-defendant was permitted to file affidavit-in-reply to raise all available contentions for arguing the Notice of Motion in the suit. The appeal has been taken up for final hearing and learned counsel for the parties have been heard at length on the Notice of Motion in the suit.
4. Before enumerating rival contentions, it is necessary to refer to relevant facts and also the history of litigation between these two very parties in suits filed by either the appellant-plaintiff or its sister concerns against the defendant herein, in actions for infringement of plaintiff's registered marks and for passing off.
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5. The trade name "MERELANE" was registered on 17 May 1971 with Trademark No.272074 in favour of Badriprasad Gulraj Kejriwal and thereafter upon death of Badriprasad Kejriwal in 1975, the mark was registered in favour of partnership firm of his family members on 6 February 1976. Thereafter the registration was renewed in favour of successive partnership firms including M/s. Kejriwal & Sons. The last registration is in favour of Parksons Games & Sports by virtue of Deed of Assignment dated 14 September 2004 executed by M/s.Kejriwal & Sons. By order dated 29 September 2009 the said assignment was taken on record and the status of M/s. Parksons Games and Sports was reorganised and recorded by the Registrar of Trade Marks. Subsequently, as stated in the plaint, the partnership firm was incorporated as a private limited company- "Parksons Games & Sports Pvt.Ltd." on 15 September 2010 and a Deed of Assignment was executed by the partnership firm in favour of the private limited company. The said Deed of Assignment was submitted to the Registrar of Trade Marks alongwith an application for change of registration on 29 October 2010. Thereafter, the name of plaintiff-company was changed to PARKSONS Cartamundi Pvt.Ltd. on 22 January 2011. A copy of certificate of change of name is produced at Exhibit-A to the plaint.
There is also registered label mark at Exhibit-J being Trademark No.1664801 which was registered in the name of M/s.Parksons Games & Sports Pvt.Ltd. on 14 March 2008 with the packet bearing the following words:
"MERELANE NO.7 PLAYING CARDS"
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6. The plaintiff has also pointed out history of the litigation instituted by the plaintiff or its sister concerns against the respondent- defendant, which is summarized as follows, all the orders, except the order under appeal, having been passed against the respondent-defendant in respect of the same class being playing cards:-
Sr. Plaintiff's Trade Defendant's Trade Date of Ad-Interim/ No. Mark Marks Interim Order 1 555 MERELANE 555 MARILYN DX 24 September 2010 PREMIUM, Appeal Order dated 18 555 MERELANE ig March 2011 DELUX, Order of Apex Court MEREDIAN 555 dated 10 May 2011 2 MERELANE No.7 No.7 MARILYAN Decree dated 14 January 2011
3. BRIDGE 575 BRIDGE 576 Ad-interim order dated 7 October 2011
4. Nylon No.7 Nilon no.7 Decree dated 12 January 2011
5. Nylon no.7 NAIKAN NO.7 Interim order dated 6 February 2012
6. MERELANE 555 MARICELL 555 Ad-interim order dated 22 September 2011
7. MERELANE No.7 MARICELL NO.7 Ad-interim order dated 28 November 2011 (Order under appeal)
7. A Division Bench of this Court in Hiralal Prabhudas v. Ganesh Trading Company and others3 laid down the following propositions for judging deceptive similarity of products of rival trademark :-
3 A.I.R. 1984 BOM. 218 =1984- PTC 155 SRK 4 Of 22 ::: Downloaded on - 09/06/2013 18:19:08 ::: 5 APPEAL NO.57-2012 "What emerged 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 than 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 put 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".
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8. Applying the above principles and considering the colour schemes of the playing cards having two Ducks and the label marks on the packets and the cartons and their colour scheme and also the material printed on those packets, it is clear that the defendants' products are deceptively similar to those of the plaintiff. The plaintiff's playing cards has the picture of two Ducks; the defendants' playing cards also have two Ducks, though in the opposite direction. But as held time and again and as laid down by the Supreme Court in Parle Products v. J. P. & Co., 4 what must be considered are the broad and essential features of the two marks which should not be placed side by side in order to find out the differences in design. It is enough, if the impugned mark bears 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. Each case must be judged on its own features and it would be of no use to note on how many points there was similarity and in how many others there was absence of it. In fact, with the addition of the words "NEW ARRIVAL" on the packet with the colour combination scheme of green and red and also the words "No. 7" prominently mentioned near the words MARICELL, it is clear that a man of average intelligence and imperfect recollection would be likely to be confused. In our view, the appellant has succeeded in showing deceptive similarity between the defendant's playing cards and the plaintiff's playing cards and the packets and the cartons.
9. We have also gone through all the orders referred to in the above chart. It is clear from the said orders that the defendant was earlier using the trademark "555 MARILYAN" and this Court held that defendant had violated the plaintiff's registered trademarks "555 MERELANE 4 AIR 1972 SC 1359 SRK 6 Of 22 ::: Downloaded on - 09/06/2013 18:19:08 ::: 7 APPEAL NO.57-2012 PREMIUM", "555 MERELANE DELUX" and "MEREDIAN 555" and passed off its packets and playing cards as those of the plaintiff. By interim order dated 24 September 2010, the learned Single Judge of this Court granted injunction in favour of the plaintiff and against the defendant. That order came to be confirmed by this Court in appeal on 18 March 2011 and Special Leave Petition filed by the defendant came to be dismissed by the Apex Court vide order dated 10 May 2011.
Similarly, the defendant had used the trademark "NO.7 MARILYAN" infringing the plaintiff's trademark "MERELANE No.7".
By a consent order dated 14 January 2011, the learned Single Judge of this Court decreed the suit filed by the plaintiff against defendants.
Another attempt made by the defendant was to use the trademark "MARICELL 555" infringing the plaintiff's trademark "MERELANE 555" and by order dated 22 September 2011, the learned Single Judge of this Court granted interim injunction against the defendant.
10. There were also other orders passed by this Court restraining the defendant from using the trademark "NILON NO.7" infringing the trademark "NYLON NO.7". Further this Court passed another order against the defendant from using the trademark "NAIKAN NO.7"
infringing the trademark "NYLON NO.7". Those orders were passed on 12 January 2011 and 6 February 2012 respectively.
11. In the background of the above facts, we have heard learned counsel for the parties on the question whether use of mark "MERICELL NO.7" printed on bigger cartons as well as small packets containing playing cards infringes plaintiff's registered trademark "MERELANE" and "MERELANE NO.7". Having examined both the trademarks and also SRK 7 Of 22 ::: Downloaded on - 09/06/2013 18:19:08 ::: 8 APPEAL NO.57-2012 having seen the designs and colour schemes of the playing cards, the packets and bigger cartons, and also having gone through the orders dated 22 September 2011 in Notice of Motion No.1948 of 2011 where "MARICELL 555" has been considered to be deceptively similar to "MARELANE 555" and the order dated 6 February 2012, where "NAIKAN No.7" has been considered to be deceptively similar to "Nylon No.7" we have no manner of doubt that the defendant's playing cards as well as the packets and cartons are deceptively similar to the plaintiff's playing cards, packets and cartons. The reasoning of the learned Single Judge based on microscopic examination that there is no similarity between the words "MARICELL" and "MARELANE" cannot be accepted.
12. Learned counsel for the respondent-defendant has made the following submissions :-
(a) Since the learned Single Judge has passed discretionary order at the ad-interim stage, the same may not be interfered with. In support of this contention, reliance is placed on decision of Apex Court in Wander Limited and another Vs. Antox India (P) Limited1
(b) The plaintiff does not have registered trademark of the words "MERELANE" because as per the entries in the Trademark Registry, the trademark is assigned to M/s.Parksons Games & Sports and not to the plaintiff herein-Parksons Cartamundi Private Limited. In support of this contention reliance is placed on the decision of a learned Single Judge of this Court in Cott Beverage Inc, A Georgia Corporation Vs. Silvassa Bottling Company2 1 1991-PTC-1 2 2004(29)PTC-679 (Bom) SRK 8 Of 22 ::: Downloaded on - 09/06/2013 18:19:08 ::: 9 APPEAL NO.57-2012
(c) Relying on provisions of Section 17(2) of the Trademarks Act, it is submitted that the words "No.7" is not something on which the plaintiff can claim any exclusive right as it is common to the trade of playing cards.
(d) In view of the matter printed on the bigger cartons and the packets, the defendant's goods are distinguishable from the plaintiff's goods.
13. It is true that the learned ig Single Judge has passed the impugned order in favour of the respondent-defendant. The question is whether the same can be considered as a discretionary order. In M/s.
Hiralal Prabhudas v. Ganesh Trading Company and others3, where a similar contention was raised that the appellate court should not disturb the discretionary order of the learned Single Judge, a Division Bench of this Court speaking through Justice Lentin held as under:
"It was finally urged by Mr. Kale that the discretion exercised by the Deputy Register under Section 56 of the Act in the respondents' favour should not be lightly disturbed and the appellate Court should therefore not disturb the judgment and order of the learned single Judge. We ask ourselves; Pray where at all arises the Deputy Registrar did not exercise any discretion under Section 56 in rejecting the appellants application for rectification. It must be remembered that the concept of discretion is distinct from that of adjudication. When the Deputy Registrar rejected the appellants application for rectification on the ground that the two marks are not deceptively similar, she did not use any discretion but adjudicated upon the rival contentions of the parties. It would be trite to say that exercise of discretion can arise in favour of a party when adjudication by the Registrar is against that party. In the present case, the Deputy Registrar's adjudication was in fact in favour of the respondents, with the result that there was 3 A.I.R. 1984 BOM. 218 =1984- PTC 155 SRK 9 Of 22 ::: Downloaded on - 09/06/2013 18:19:08 ::: 10 APPEAL NO.57-2012 no occasion for the Deputy Registrar to exercise any discretion. If the Deputy Registrar had held that the two marks were deceptively similar (which she did not ) but that in exercise of her discretion she did not consider it necessary to pass an order for rectification , it could be said that the Deputy Registrar having exercised the discretion in favour of the respondents , interference with such discretion was not called for. Nothing of the kind can be said in the present case where in fact the Deputy Registrar has held that the two marks are not deceptively similar. In any event, this court having come to the conclusion that the two marks are deceptively similar, this cannot be a case for the exercise of discretion in favour of the respondents as their case is not founded on truth and also in view of the uncontroverted evidence of actual deception perpetrated and confusion caused.
ig (emphasis supplied)
14. It is thus clear that the concept of discretion is distinct from that of adjudication. What the learned Single Judge has done in the instant case is making prima facie adjudication that the defendants' trademark is not deceptively similar to that of the plaintiff. Therefore, there is no question of any discretion exercised by the learned Single Judge. We have already held that the defendant has been infringing the plaintiff's trademarks and has been attempting to pass off its playing cards as those of the plaintiff. This has happened in respect of the very trademark "MERELANE, which is registered since the year 1971 and also the label mark on the packets containing the playing cards prominently bearing the words "MERELANE No. 7". Hence, there is no question of applying the principle enunciated in the case of Wander Limited and another Vs. Antox India (P) Limited1.
1 1991-PTC-1
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15. As regards the contention that the trademark registered in the year 1971 was last registered in favour of Parksons Games & Sports and not in favour of the plaintiff PARKSONS Cartamundi Pvt.Ltd., the plaintiff has pointed out that the plaintiff has already made an application to the Registrar of Trademarks on 29 October 2010 for making the necessary changes in the trademark register, pursuant to Deed of Assignment dated 29 September 2010 upon incorporation of the partnership firm Parksons Games & Sports into Parksons Games & Sports Pvt. Ltd. on 29 September 2010, which will enure for the benefit of PARKSONS Cartamundi Pvt.Ltd., as indicated in the fresh certificate of incorporation consequent upon change of name issued by the Registrar of Companies, Maharashtra, Mumbai, as per the approval of the Central Government under Section 21 of the Companies Act, 1956 on 22 January, 2011. The plaintiff has also made statement to that effect in the plaint.
16. Learned counsel for the respondent-defendants has, however, vehemently submitted that there is still no registration in favour of either Parksons Games & Sports Pvt. Ltd. Or PARKSONS Cartamundi Private Limited. Strong reliance has been placed on the provisions of Section 45 of the Trade Marks Act, 1999 and on the decision of this Court in Cott Beverage Inc, A Georgia Corporation Vs. Silvassa Bottling Company 2. In that case a learned Single Judge of this Court (Coram : V.M. Kanade, J.) held that the procedure of registration of assignment is not a mere formality. The legislature has though it fit that application for assignment and transmission be scrutinized keeping in view various other Acts including the import restrictions, foreign exchange, etc. as also any inter se disputes between the assignor and assignee and only thereafter, if the Registrar is satisfied the application for assignment would be registered.
2 2004 (29) PTC-679 (Bom)
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17. However, after making those observations, the learned Single Judge further observed that though the plaintiff in that case was a non-
registered assignee it cannot be said that he is prevented from filing a suit during pendency of the registration, Sub-section (2) of Section 45 clearly vests discretion with the Court either to admit the deed of assignment in evidence or to reject the admissibility of the same in evidence as a proof of title to the trademark. Section 45 has been incorporated as a safeguard by the Legislature in order to avoid the multiplicity of proceedings and also in order to ensure that the various other laws prevailing in the country are safeguarded while registering the assignment, as contemplated in Rules 73 to 75 of the Trade Mark Rules, 2002. In the facts of that case, the Court found that the assignor in a foreign country had assigned the trademark in India to the assignee without goodwill and that the application for registration was made to the Registrar after more than one year from the date of assignment. The Court in the facts of that case held that the assignment itself had not taken effect.
18. In the facts of the present case, however, the plaintiff has shown that after the Deed of Assignment was executed in favour of the Parksons Games & Sports Pvt. Ltd.on 29 September 2010, the plaintiff had applied to the Registrar of Trademarks on 29 October 2010 to make the necessary entries in the trademark register in respect of the trademark registered in the year 1971. Since both the assignor and assignee are Indian entities, in the facts of the present case there is no question of any impediment on account of any import restrictions, foreign exchange violations etc. nor is there any case of any inter se dispute between the assignor and the assignee.
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19. Our attention is also invited to the much broader view taken by another learned Single Judge of this Court (Coram : S.J. Vazifdar, J.) in SKOL Breweries Ltd. v. Som Distilleries and Breweries Ltd. and another, (Petition No.159 of 2007 in Suit No.603 of 2007, decided on 28 August 2009). The principles enunciated by the learned Single Judge in the SKOL Breweries case (supra) commend to us as the correct exposition of law on the subject of rights of the assignee of a registered trade mark pending an application made to the Registrar of Trade Marks for registration of his title to the trade mark.
20. We may hasten to add that the observation of the learned Single Judge in para 10 of the judgment, that registration of assignment under Section 45 is a mere formality was not borne out by the language of Section 45(1) as it then stood, but by virtue of substitution of Section 45 by Amending Act 40 of 2010, Section 45 has undergone a sea change and amply supports the plaintiff's contention that the registration of assignment of a registered trademark would now ordinarily be a formality because of deletion of the words "and on proof of title to his satisfaction" in sub-section (1), the tenor of newly added sub-section (2) and insertion of the underlined words in sub-section (3). Moreover, sub-section (2) of Section 45, as it stood prior to amendment, directing that an assignment of trademark before its registration with the Registrar of Trademarks, shall not be admitted in evidence by the Registrar/Appellate Board/Court, unless the said forum otherwise directs, has been completely deleted.
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21. Section 45 prior to amendment and as it stands now after the amendment by Act 40 of 2010 need to be set out in juxtaposition:-
Before Amendment After Amendment
45. Registration of assignments and 45. Registration of assignments and
transmissions.- (1) Where a person becomes transmissions.- (1) Where a person becomes
entitled by assignment or transmission to a entitled by assignment or transmission to a registered
registered trade mark, he shall apply in the trade mark, he shall apply in the prescribed manner
prescribed manner to the Registrar to register his to the Registrar to register his title, and the Registrar
title, and the Registrar shall, on receipt of the shall, on receipt of the application, register him as
application and on proof of title to his satisfaction, the proprietor of the trade mark in respect of the register him as the proprietor of the trade mark in goods or services in respect of which the assignment respect of the goods or services in respect of which or transmission has effect, and shall cause particulars the assignment or transmission has effect, and shall of such assignment or transmission to be entered on cause particulars of the assignment or transmission the register.
to be entered on the register. ig (2) The Registrar may require the applicant to furnish evidence or further evidence in proof of title only where there is a reasonable doubt about the veracity of any statement or any document furnished.
Provided that where the validity of an assignment or (3) Where the validity of an assignment or transmission is in dispute between the parties, the transmission is in dispute between the parties, the Registrar may refuse to register the assignment or Registrar may refuse to register the assignment or transmission until the rights of the parties have been transmission until the rights of the parties have been determined by a competent court. determined by a competent court and in all other cases the Registrar shall dispose of the application within the prescribed period.
(2) Except for the purpose of an application before the Registrar under sub-section (1) or an appeal from an order thereon, or an application under section 57 or an appeal from an order thereon, a document or instrument in respect of which no entry has been made in the register in accordance with sub-section (1), shall not be admitted in evidence by the Registrar or the Appellate Board or any court in proof of title to the trade mark by assignment or transmission unless the Registrar or the Appellate Board or the court, as the case may be, otherwise directs.
(4) Until an application under sub-section (1) has been filed, the assignment or transmission shall be ineffective against a person acquiring a conflicting interest in or under the registered trade mark without the knowledge of assignment or or transmission.
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22. We will now set out the relevant paragraphs from the above judgment which lay down the correct principles:-
"14. Section 45 does not confer title to the trade marks assigned or acquired by transmission. The registration granted by the Registrar under section 45 is proof of title to the trade mark of the assignee or the person who acquires the same by transmission. Thus a person who has acquired title to a trade mark by assignment or transmission cannot be non-suited for want of title per se on the ground that the assignment or transmission is not entered on the register. This is clear from the plain language of section 45 (1). The opening words: "Where a person becomes entitled by assignment or transmission to a registered trade mark ..."
posit the acquisition of title thereto by assignment or transmission. ................................. Thus the acquisition of title to a trade mark by assignment or transmission precedes and is essential to an application under section 45.
18. Where the court is satisfied at the interlocutory stage prima-facie of the validity of the assignment or the transmission and the intention of the parties acquiring title to the trade mark thereby bringing themselves on the register it must decide the application on merits. Where the court is of the view that despite a strong prima-facie case in this regard it would require to be established at the trial then, at the highest, pending the decision of the application under section 45 the decree may not be passed. Such a situation can arise for instance where the assignment is denied or opposed on any ground by the assignor. It may also arise where others challenge the plaintiffs acquisition of the trade mark by transmission. In such cases it may be necessary to implead the assignor or such other persons and also seek reliefs against them to establish the assignment. The grant of interlocutory relief would naturally also depend upon whether the plaintiff has made out a strong prima facie case even in respect of the acquisition of the trade mark by assignment or transmission."
SRK 15 Of 22 ::: Downloaded on - 09/06/2013 18:19:08 ::: 16 APPEAL NO.57-2012 The learned Single Judge also repelled the contention that Section 53 read with Section 2(1)(r)(ii) debars a suit by assignee of a registered trademark prior to registration of the assignment:-
"24. Section 2 (1) (r) (ii) recognizes the use of a registered trade mark by persons other than the registered proprietor and registered user in certain circumstances and situations. Section 2 (1) (r) (ii) does not deal with persons who have acquired a proprietary right in the trade mark by assignment or transmission. In the present case the second defendant has assigned all its rights in the said trade mark in favour of the plaintiff and the same now stands vested in the plaintiff. The fact that the plaintiff has not as yet been shown in the register as the proprietor thereof does not lead to the conclusion that the rights in respect of the trade mark are not vested in the plaintiff. In any event the bar contained in section 53 does not apply to a person not covered by section 2 (1) (r) (ii).
25. A view to the contrary would not only cause enormous prejudice to bonafide assignees of trade marks but would also create havoc in the entire field of assignments of trade marks. Indeed this would be so even in respect of persons who acquire trade marks by transmission.
26. The rights of a bona-fide assignee could be set at naught not merely by a dishonest assignor but even by an honest assignor who not surprisingly may lose all interest in defending the trade mark against infringement upon assigning the trade mark and receiving the consideration for the same thereby leaving the field wide open for infringement of the trade mark pending the assignee being brought on the register as the proprietor of the mark assigned to him. Upon the registered proprietor entering into an agreement of assignment of a trade mark the assignor may well not be interested in doing anything further including involving himself in any litigation in respect of the trade mark. In other words if Mr. SRK 16 Of 22 ::: Downloaded on - 09/06/2013 18:19:08 ::: 17 APPEAL NO.57-2012 Bookwalla's submission is accepted it would mean that even where a trade mark is validly assigned and the assignor being no longer interested in the trade mark having assigned it, may do nothing to protect the same the assignee can do nothing to protect the trade mark which he has validly acquired, during the pendency of an application under section 45. In any event the process in an application under section 45 is bound to take some time. The submission if accepted would entitle the world at large in the meantime to infringe the trade mark at will. There would be nothing to prevent them from doing so although their act would be in violation of law. I find nothing in the act which supports Mr. Bookwalla's submission.
27. A person who acquires a trade mark by transmission would suffer a similar fate if Mr. Bookwalla's submission is accepted. It would take considerable time between the acquisition of a trade mark by transmission and the person being shown as the registered proprietor thereof pursuant to an application under section 45."
23. The learned counsel for the appellant-plaintiff has also invited our attention to the decisions of the Delhi High Court in M/s. Modi Threads Limited v. M/s. Som Soot Gola Factory and another 5, Sun Pharmaceuticals Industries Ltd. v. Cipla6 and M/s.Grandlay Electricals (India) Ltd. and others v. Mrs. Vidya Batra and others7, taking the view that even though the application of the plaintiff for getting transferred the registered trade mark in its name in the office of the Registrar was still pending for consideration by the Registrar of the Trade Marks, it would not debar him to protect the violation of its trade mark at the hands of unscrupulous persons by filing an action in Court of law for injunction and, therefore, the defendants could not be allowed to make use of the said 5 AIR 1992 DELHI 4 6 2009(39) PTC 347 7 AIR 1999 DELHI 1 SRK 17 Of 22 ::: Downloaded on - 09/06/2013 18:19:08 ::: 18 APPEAL NO.57-2012 trade mark in order to get themselves illegally enriched earning upon the reputation built up qua that trade mark by the predecessor-in-interest of the plaintiff. A dispute as to assignment can be raised by the assignor or by some person claiming prior assignment and not by strangers or by persons claiming adversely to the Assignor.
24. Having considered all the decisions discussed above, in our view, it must now be taken as the settled law that the provisions of Trade Marks Act, 1999 do not preclude a Court from granting interlocutory reliefs in favour of a person who becomes entitled by assignment or transmission to a registered trade mark, pending application under Section 45(1) to register his title to the trade mark.
25. In view of the above settled legal position and also having regard to the history of past litigation between the parties, the fact that the plaintiff's application submitted to the Registrar of Trade Marks on 29 October 2010 has remained pending and the plaintiff already has registered label mark on the packet "MERELANE No.7 PLAYING CARDS", we are inclined to exercise the discretion in favour of the plaintiff to take into consideration the Deed of Assignment dated 29 September 2010 assigning the trademark "MERELANE" in favour of the plaintiff.
26. The next contention of the respondent-plaintiff is that the words "No. 7" merely indicate a figure and it is not something on which the plaintiff can claim any exclusive right as it is common to the trade of playing cards.
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27. The plaintiff's trademark "MERELANE No. 7" is to be seen in its totality and not in parts. A learned Single Judge of this Court (S. J. Vazifdar, J.) in his order dated 6 February 2012 in Notice of Motion No. 719 of 2011 (M/s. Parvati Packers v. Narayan Shetty and others) has repelled this very contention raised by this very defendant when the defendant was defending the use of its mark "NAIKAN No.7" as infringing the registered trade mark "NYLON No.7".
"8. I will presume that the similarity between the words "NYLON" and "NAIKAN" by themselves is not adequate to maintain this action. The insufficiency in the degree of phonetic similarity between the words "NYLON" and "NAIKAN" is adequately compensated by the defendants adopting in their mark, the suffix "NO.7". The question of similarity, phonetic as well as visual, cannot be considered merely by comparing the words "NYLON" and "NAIKAN". The marks "NYLON NO.7" and "NAIKAN NO.7" must be compared as a whole. Both the marks have the suffix "NO.7". Any hesitation in accepting the plaintiffs contention only on the basis of the words "NYLON" and "NAIKAN" must disappear when the two marks are read as whole, as indeed they must be.
9. The defendants perhaps realising their difficulty upon the marks being read as a whole, contended that `No.7' is popular and a common practice in the playing cards industry and that, therefore, no one can claim an exclusive right in respect of the numeral `7'. Apart from a bald assertion to this effect, there is nothing to establish this contention. Even during the hearing, the defendants did not indicate anything to establish that the use of the numeral `7' is a common practice in the field of playing cards.
10. It is obvious, therefore, that the defendant No.5 adopted the mark and specially "No.7" therein to bring it deceptively close to the plaintiffs mark with a view to trading on the reputation developed by the plaintiffs in respect of the products sold under their mark".
It is thus clear that the above observations were made by the learned Single Judge while making the notice of motion absolute for granting injunction SRK 19 Of 22 ::: Downloaded on - 09/06/2013 18:19:08 ::: 20 APPEAL NO.57-2012 against the present defendant in respect of the infringement of the trademark "NYLON No. 7" belonging to the plaintiff's sister concern M/s. Parvati Packers.
28. Similar contention was raised when the defendant's trademark "555 MARILYN DX" was considered as violating the plaintiff's trademark "555 MERELANE DELUX" and two other similar trademarks of the plaintiff. A Division Bench of this Court to which one of us (Chief Justice Shah) was a party rejected a similar contention about the use of the figure `555'.
29. Moreover, in the present case we are not passing any order on the basis of infringement of the plaintiff's copy right in the words "MERELANE No. 7" but on the basis that the plaintiff has acquired goodwill in the trademark "MERELANE No. 7" which is apparent from the figures of advertisement expenses and sales of the plaintiff's playing cards including "MERELANE No. 7" brand for the period from 1999-2000 to 2009-10, which figures are to be found in the certificate dated 29 October, 2010 of the plaintiff's chartered accountants at Exhibit-M particularly the annual turnover for the last two years being Rs.52.43 lakhs and Rs.61.93 lakhs respectively.
30. As regards the contention that the additional material on the cartons and packets make the defendant's case distinguishable from the plaintiff's case, we have seen the colour scheme and the words "MERELELANE No. 7" on the plaintiff's packet as well as on the defendant's packet bearing the label mark "MERICELL No. 7". There is some difference in the shade of green colour, but there is no difference in SRK 20 Of 22 ::: Downloaded on - 09/06/2013 18:19:08 ::: 21 APPEAL NO.57-2012 the red area having the words "MERELANE" or "MERICELL". As per the settled legal position, the matter must be examined from the point of view "a person of average intelligence and imperfect recollection". Marks are not to be compared microscopically and the marks have to be applied as a whole and broad and salient features must be considered without placing them side by side to find out differences in design. Applying the said well settled test, we are of the view that the additional material of two horses on and the two small ducks on the packet do not make any difference to the deceptive similarity. On the contrary, the words "New Arrival" on the packet, which are prominent, make it appear as if defendants have come out with a new product and therefore, the words "New Arrival" are added. The defendant not having earlier produced any playing cards with the trade name or trade label " MARICELL No.7", the words "New Arrival" on the packet appear to be added with a dishonest intention to pass off the defendant's playing cards as new playing cards of the plaintiff. Similarly adding the words "premium quality" on the defendant's carton in light blue colour as compared to the plaintiff's carton in navy blue colour appears to be done with similar dishonest intent.
31. In Midas Hygiene Industries (P) Ltd. and another v. Sudhir Bhatia and Others8, the Supreme Court has held that in cases of infringement either of trade mark or of copyright, injunction must be issued if it prima facie appears that the adoption of the mark was itself dishonest. The facts of this case in the background of the history of litigation leave no other option but to accept the plaintiff's case that the defendant has been infringing the plaintiff's trademark and label mark and has been dishonestly attempting to pass off the defendant's playing cards as 8 (2004) 3 SCC 90 SRK 21 Of 22 ::: Downloaded on - 09/06/2013 18:19:08 ::: 22 APPEAL NO.57-2012 those of the plaintiff in order to get himself illegally enriched caring upon the reputation built up qua that trade mark and label mark.
32. Having heard learned counsel for the parties at length, we are of the view that plaintiff has made out a strong prima facie case, both on the questions of prima facie case as well as balance of convenience, and, therefore, the interim injunction deserves to be granted during pendency of the Suit.
33. The appeal is accordingly allowed. The impugned order dated 28 November 2011 of the learned Single Judge is set aside and Notice of Motion is made absolute in terms of prayer clauses (b) and (d) during pendency of the Suit. As regards the remaining prayers in the Notice of Motion, the plaintiff will be at liberty to take out a fresh Notice of Motion at an appropriate stage, if required.
(CHIEF JUSTICE)
(RANJIT MORE, J.)
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