Bombay High Court
Vidarbha Distillers vs Vidarbha Bottlers Pvt. Ltd. on 10 December, 2004
Equivalent citations: 2005(3)BOMCR282, 2005(2)MHLJ753, 2005(31)PTC427(BOM)
Author: B.P. Dharmadhikari
Bench: B.P. Dharmadhikari
JUDGMENT B.P. Dharmadhikari, J.
1. Original plaintiff has filed this appeal against Order under Section 104 read with Order 43, Rule 1(r) of the Code of Civil Procedure challenging order dated 27th January, 2003 passed in Trade Mark Suit No. 3 of 2002 below Exh. 5 by learned Second Additional District Judge, Nagpur. The learned Judge has rejected the application for grant of temporary injunction in favour of the applicant in the pending trade mark suit. Relief sought was for restraining the present respondent/defendant from imitating label of product "Santri 5000" and other similar labels.
2. The appellant filed suit against the present respondent stating that it is carrying on business of manufacturing and sale of country liquor since 1975 and since then it is using Tiger head as its monogram. It is the case of the appellant that the said monogram is printed not only on its product but on its stationery, printing material, calendars etc. In 1992 appellant manufactured country liquor under the name "Santri 5000". On the label thereon, above monogram of Tiger Head and in the middle of the label there is design of Goblet with brand name 'Santri 5000' printed in yellow colour. Rest of the label is in red colour with emphatic black border. Except brand name 'Santri 5000' other words are in black while brand name is printed on the goblet is in red colour. It is stated that appellant was granted requisite permission by Commissioner of State Excise on 25-3-1992 to use this label. It is further mentioned that sometime in the month of August, 2000 the appellant learnt about the product of respondent which is styled as "Santra Deluxe 5000". This product of respondent is introduced in the month of May, 2002. There appears to be some mistakes while narrating the facts in this connection as the knowledge is of August, 2000. It is further stated that the respondent have copied label of the appellant. It is alleged that the colour scheme style and design of their label are almost similar and also imitating the brand name of the product of the appellant. It is stated that instead of Tiger Head they are using Panther and it is mentioned that it is Panther Brand. It is the case of the appellant that the said label is deceptively similar and customers are misled by it. The appellants have filed their labels and also disputed labels on record along with appeal memo.
3. The appellants filed Civil Suit vide Trade Mark Suit No. 3 of 2002 under Section 105 of Trade and Merchandise Marks Act, 1958 and prayed for decree of declaration that respondents have no right to imitate their labels with further direction to the respondent to destroy the offending labels which are under their possession on the finished goods in the factory as well as finished goods lying with the wholesalers and dealers and also to take steps for cancellation of the said labels from Commissioner of State Excise. The respondent appeared in that suit and filed their reply denying all the allegations. It was their case that their label was distinct and can be easily distinguished and customers were not confused. The learned lower Court after hearing both sides rejected the prayer for grant of temporary injunction on 27-1-2003. The said order of rejection is challenged in the present appeal against order which appears to have been filed on 20th March, 2003. The matter was first circulated for 10th April, 2003 on which date notices were issued. Thereafter the matter was fixed on various dates for admission and on 27-11-2004 also it was for admission. On the said date, parties requested the Court to dispose of the appeal finally since it was pending for a long time. On 29-11-2004 both the parties have filed list of citations on record.
Hence, Rule.
Heard finally by consent of the parties.
4. The learned counsel appearing for appellant has contended that the order passed by lower Court is contrary to the settled law and shows total non-application of mind. The trial Court has not considered the labels of both the sides and has not compared them to find out whether resemblance is deceptively similar. It is the contention of the appellant that size, colour scheme and other similarities of the label are confusing and the consumers of country liquor are likely to be misled by these similarities. It is slated that the only difference is about the name of brand and monogram which are insignificant. It is further argued that sanction to a particular label by the Commissioner of State Excise cannot be interpreted to mean that the respondent can use deceptively similar label. It is further stated that the same Judge has in earlier case i.e. Trade Mark Suit No. 2 of 2002 allowed temporary injunction application on 15-5-2002 against one M/s Royal Drinks and in favour of the appellant and the said order was unsuccessfully challenged before High Court in A. O. No. 41 of 2002. It is contended that learned lower Court has failed to appreciate this order and withdrawal of the appeal against it. It is contended that affidavits filed on record by the appellant clearly reveal that the customers were getting misled because of such deceptive label. It is alleged that the respondent changed label on their product after the appellant established its product in the market. It is stated that the reasoning given by trial Court that other distilleries in Nagpur are using, selling and marketing their products with labels similar to that of appellant is not relevant factor because it does not permit the respondent to imitate the labels of the appellant, It is the case of the appellant that two of the distilleries whose examples were cited belonging to the same group of partners and that of appellant and infact, are sister firms/companies of the appellant firm. It is further stated that the trade mark suit have been filed against M/s Kokan Agro Marine Industries Pvt. Ltd, and M/s Royal Drinks. It is stated that M/s Kokan Agro Marine Industries Pvt. Ltd. have already changed their labels and restraining orders are passed against M/s Royal Drinks. It is argued that passing off action is separate species of unfair trade competition and the learned trial Judge ought to have taken notice of deceit and ought to have injuncted the respondent.
5. As against this learned counsel Mr. Shah appearing for respondent has stated that label used by the present respondent is totally different and there is no imitation. He contends that appellant has failed to show any deceptive similarity. It is contended that the appellants have not proved any goodwill or reputation insofar as their label is concerned. It is the contention of respondent that the matter between M/s Royal Drinks and present appellant is totally separate and different one and it was only an interlocutory order and hence, reference to the said proceedings in present matter is not relevant and proper. The grounds raised by the appellant are all denied by the respondent and it is stated that the respondent is also a company with reputation and is manufacturing country liquor with due licence from the department. It is stated that trade mark being used by it is also legal and duly approved by the Commissioner of State Excise vide order dated 30th January, 2002 and the order is still valid. It is further stated that the respondent is using Panther Head and has distinctively mention his product as Panther Brand and these words are printed in Marathi around the picture of encircled Panther Head. It is further mentioned that white colour has been used in circle around the Tiger Head by the appellant while in the label of respondent around Panther Head there is no such white colour. It is further stated that shades of white yellow and black colours used in the labels of respondent are brighter than those of the appellant's. It is further mentioned that appellant's product is known as 'Santri 5000' while respondent's product is known as 'Santra Deluxe 5000' and these words are printed in Marathi in red ink. It is further mentioned that size of goblet and thickness of stem between the mouth and base of goblet is also different. The name of manufacturer is also mentioned at the bottom of both the labels which is different. It is further mentioned that flavour and taste of the product of the respondent is altogether different and distinct from others. It is further alleged that the colour scheme and pattern of labels is common in the area and one more industry M/s Kopargaon Shetkari Sahakari Sakhar Karkhana, Gautam Nagar, District : Ahmednagar which manufactures country liquor by brand name 'Bhingri Santra' also used similar label and the said label is also approved by the Commissioner of State Excise. It is alleged that the appellant has pirated and imitated the design/layout and colour scheme and general get up of its label from this label of 'Bhingri Santra' and appellant is not originator of this label. It is further mentioned that Nagpur Distilleries, Kamptee Road, Nagpur, Somras Distilleries, Nagpur, M/s Kokan Agro Marine Industries Pvt. Ltd. and M/s Royal Drinks (P) Ltd., Nagpur who also manufacture country liquor used similar type of labels with same design layout and colour scheme of red, black and yellow. It is further mentioned that Nagpur Distilleries is using picture of encircled Tiger head on its label of "Lavani Santra" and 'Firki Santra'. It is mentioned that M/s Kokan Agro Marine Industries Pvt. Ltd. is using encircled Lion head with words 'Sher Brand' on its Santra 5000 brand of country liquor. The respondent have also produced some such labels along with its affidavit before this Court. In this background respondents have contended that orders passed by the trial Court are just and proper and in view of the said fact it is not open for this Court to take any other of the view in the matter.
6. Both sides have placed on record number of rulings to support their propositions. The appellants have placed on record 22 rulings running into 274 pages to point out what is trade mark, what is passing off action, how deceptive similarity is to be scrutinized what is effect of delay in initiating action, principles governing grant of injunction in such matters, loss of prior user, whether fate of defendant's business is relevant consideration and important judgments governing the aspect of passing off. The respondent have also placed on record 13 rulings in support of its contentions.
7. Perusal of the impugned order dated 27th January, 2003 reveals that the learned trial Court has relied upon the judgment reported at 1957(2) Mad.L. A. 573 to analyse principles governing grant of temporary injunction in such matters. It has also made reference to the judgment of the Hon'ble Apex Court reported at AIR 2001 SCW 4989 and thereafter judgment of Hon'ble Apex Court reported at AIR 2001 SCW 4679, also to AIR SCW 141. Thereafter in para 5 of its order it has found that it was incumbent upon the plaintiff before it to show that it was using its trade mark for quite a long period and continuously, whereas the defendant has entered into the said field recently, that there has not been much delay in filing of the suit for injunction, that the goods of plaintiff have acquired distinctiveness and are accepted in the mind of general public as the goods of the plaintiff, that nature, of the activity of the plaintiff and defendant is same or similar, that the goods of the parties to which trade mark of the plaintiff is associated are same or similar, that user of the said trademark or trade name by the defendant is likely to deceive and cause confusion in the mind of public and injury the business and reputation of the plaintiff that this sphere of activity and the market of goods of both the parties is same and that customers of the plaintiff include uneducated, illiterate and unwary customers who are capable of being deceived or confused or misled by the defendant. Thus, the trial Court has tried to find out whether name of brand 'Panther' or use of identical colour scheme by the defendant on its label by defendant can be assailed by the plaintiff before it in this background. In paragraph No. 7 the learned trial Court has considered characteristics of the label of the plaintiff with label of the defendant. It has found that label of the plaintiff is orange and saffron with imprint of Tiger Head on top. It has found that lettering, wording, design, colour, complexion and placement of slogan as also M.R.P. all have their own distinguishing features on the label. It has found that label of the defendant is orange and red with imprint of Panther on the top and material printed on it (on the goblet) is also different. It has also found that litigating parties used the labels with these distinguishing features. It has further found that Sugar Factory of Kopargaon, Nagpur Distilleries, M/s Kokan Agro Marine Industries and Somras Distilleries also used similar type of labels. It has found that it appears common in the trade to use such type of labels and therefore, it cannot be said that defendant before it is doing so as intention to deceive the customers or to injure the business of the plaintiff. The trial Court has also considered in paragraph No. 9 the grievance of the plaintiff before it and has recorded the findings that authenticated and credible material is placed on record go to establish the element of fraud or dishonesty on the part of the defendant. It has further found that if similar type of labels are used by so many manufacturers in the market, the person of common prudence would not be misled or confused and will correctly go for the brand needed by him. It is on account of this reason that the learned trial Court has refused the prayer for grant of temporary injunction, The present appeal, as already stated above, has been filed thereafter on 20th March, 2003. Admittedly, no interim orders are passed in it. The suit filed is of the year 2002. Thus, for almost period of more than two years and six months no temporary injunction is operating in favour of the appellant/plaintiff.
8. In this case it is not shown that the appellant is originator of design and infact, it is on record that on one point of time there were several manufacturers of country liquor using more or less similar type of labels. If the plaintiff himself is not originator of the said design and he has adopted or imitated the colour pattern of label as it was prevailing in the market, the plaintiff would definitely would not be entitled to relief, as held by Delhi High Court in judgment reported at AIR 1990 Del 233, Prem Singh v. Ceeam Auto Industries, Even in judgment of the Hon'ble Apex Court reported at (2000)5 SCC 573. S. Y. Dychem Ltd. v. Cadbury (India) Ltd., it is held that it must be shown that essential features of mark of the plaintiff are copied by the defendant. Thus, the plaintiff has to show that the, label or colour pattern or mark used by him is his mark. In AIR 2001 SC 1952, Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. in paragraph 35 the Hon'ble Apex Court has laid down the test to find out deceptive similarity in actions for passing off on the basis of unregistered trade mark. These tests are as under :
"Broadly stated in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered :
a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.
b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
c) The nature of the goods in respect of which they are used as trade marks.
d) The similarity in the nature, character and performance of the goods of the rival traders.
e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
f) The mode of purchasing the goods or placing orders for the goods and
g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
Weightage to be given to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case."
The learned trial Court has also mentioned these tests in its impugned order. It will be apparent that there is no phonetical similarity between the products of present appellant and respondent. It is to be further seen that other rival traders in the market have been using mostly similar type of labels with their distinctive marks and as such, it cannot be said that the respondent had any dishonest intention in the matter. In judgment reported at 2002(3) RAJ 241(Del), Jolen Inc. v. Doctor and Company Delhi High Court has considered the effect of delay in applying for interlocutory relief and has held that such a delay has very vital effect and may prove to be fatal. The effect of delay is also considered by the Hon'ble Apex Court in the judgment reported at 2004(3) SCC 90, Midas Hygene Industries (P) Ltd. v. Sudhir Bhatia, the Hon'ble Apex Court has held that the Division Bench of High Court was wrong in vacating the injunction merely on the ground of delay and laches. There the Single Judge of the High Court granted interim injunction preventing the respondents from using name "Laxmanrekha" and the respondents filed appeal before the Division Bench. The Division Bench in spite of noticing factors which have been set aside by the learned Single Judge vacated the injunction merely on the ground that there was delay and laches in filing the suit. Perusal of paragraph No. 6 of this ruling shows that in 1992 respondent for the first time started using mark "Laxmanrekha" on cartons containing red, white and blue colours. There was no explanation given as to why the carton was changed to look almost identical to that of appellant subsequently. The Hon'ble Apex Court found that thus, prima facie dishonest intention to pass off the goods as those of appellants was proved in the matter. In the facts of the present case, it is not possible for this Court to arrive at any such prima facie finding.
9. In the judgment reported at 7990 (Supp) SCC 727, Wander Ltd. v. Antox India P. Ltd. the Hon'ble Apex Court has clarified the scope of jurisdiction available to this Court while considering such appeals. Paragraph No. 9 of the said ruling reads as under :
"Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The court at this stage acts on certain well settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The object of the interlocutory injunction, it is stated.
'.....is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the balance of convenience lies'.
The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie case. The court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into a scales, as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted."
In paragraph No. 14 the Hon'ble Apex Court has observed as under : 'The appeals before the Division Bench were against the exercise of discretion by the Single Judge. In such appeals, the appellate court will not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle. Appellate court will not reassesses the material and seek to reach a conclusion different from the one reached by the Court below if the one reached by that court was reasonably possible on the material. The appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the trial Court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial Court's exercise of discretion. After referring to these principles Gajendragadkar, J. in Printers (Mysore) Private Ltd. v. Pothan Joseph, SCR 721.
".....These principles are well established, but as has been observed by Viscount Simon in Charles Osenton and Co. v. Jhanaton,' .. the law as to the reversal by a court of appeal of an order made by a judge below in the exercise of his discretion is well established, and any difficulty that arises is due only to the application of well settled principles in an individual case'. The appellate judgment does not seem to defer to this principle."
In this case it has not been pointed out that the trial Court has acted either arbitrarily or capriciously or perversely. The trial Court has considered the entire material and has exercised its discretion in the matter correctly. Further as already stated above no interim relief is operating in favour of the appellant/plaintiff since last more than two years and six months. The suit itself is of the year 2002. Hence, interest of justice will be met by directing expeditious disposal of the suit on merits.
The learned trial Court is therefore, directed to dispose of the Trade Mark Suit No. 3 of 2002 as early as possible and in any case within a period of six months from the date of receipt of this order by it.
In the circumstances, I do not find any merits in this appeal, the appeal accordingly fails and is dismissed. No order as to costs.