Delhi High Court
M/S Three-N-Products Pvt. Ltd. vs M/S Kairali Exports And Anr. on 3 January, 2018
Author: Sanjeev Sachdeva
Bench: Sanjeev Sachdeva
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment delivered on: 03rd January, 2018
+ CS(OS) 709/2011
M/S THREE-N-PRODUCTS PVT. LTD. ..... Plaintiff
Versus
M/S KAIRALI EXPORTS AND ANR. ..... Defendants
Advocates who appeared in this case:
For the Appellant : Mr. Sharab Sriastava, Advocate.
For the Respondents : Mr. Manu T. Ramchandran, Advocate
for the defendant No. 1.
Ms. Poonam Atey with Mr. Birendra
Mishra, Advocates for defendant
No.2.
CORAM:-
HON'BLE MR. JUSTICE SANJEEV SACHDEVA
lA No.4708/2011 (under Order XXXIX Rules 1 & 2 CPC & lA
No.10589/2011 (under Order XXXIX Rule 4 CPC
1. The plaintiff has filed the subject Suit seeking inter alia the
relief of permanent injunction for passing off, infringement of
trademark, rendition of account, etc. The plaintiff claims to be the
registered proprietor of the mark "AYUR" in various classes. It is
claimed that the predecessor of the plaintiff adopted the mark in the
year 1984 and has used the same continuously and uninterruptedly.
The plaintiff also claims to hold a registration in respect of tissues,
(piece goods), bed and table cover, textile article not included in other
IA 4708/2011 & IA 10589/2011 in CS(OS) 709/2011 Page 1 of 10
classes, in class 24 and in respect of clothing including boots, shoes
and slippers in class 25. The plaintiff also claims to hold registration
in several countries internationally of the trademark "AYUR". In
these circumstances, the plaintiff claims to be the proprietor of the
mark "AYUR" having used the same continuously since 1984.
2. As per the plaintiff, defendant no. 1 adopted the mark
"AYURVASTRA" which is stated to be identical and similar to the
plaintiff‟s trademark "AYUR" in respect of clothes, sarees, dress
materials and fabrics, bed sheets and table covers, bleached clothes,
textiles and textile piece , readymade garments, clothing, footwear,
caps, headgear. As per the plaintiff, it became aware of the use of the
trademark "AYUR" by the defendants for the first time in October,
2009, when defendant no. 2 made an application seeking registration
of the mark "AYURVASTRA"
3. The plaintiff thereafter claims to have issued a cease and desist
notice, consequent to which the defendant no. 2 is alleged to have
admitted their improper adoption and agreeing to discontinue the
mark "AYUR" and "AYURVASTRA". Believing the representation
of the defendants to be correct, the plaintiff treated the matter as
closed, however, subsequently once again came across use of the
mark "AYURVASTRA"; accordingly, instituted the present suit.
4. The plaintiff seeks permanent injunction against the defendants
on the ground that plaintiff is the prior adopter of the mark "AYUR"
IA 4708/2011 & IA 10589/2011 in CS(OS) 709/2011 Page 2 of 10
in respect of its goods and services since the year 1984 and has
extensively and uninterruptedly used the same. Plaintiff has
substantial reputation and goodwill because of the use of the said
mark and has the exclusive right in respect of the mark "AYUR" and
its derivatives in respect of goods and services established in classes
24 and 25, the classes in which the defendants‟ goods fall. The
plaintiff enjoys global reputation and goodwill and has made huge
sale and has substantial turnover and has substantially advertised the
mark "AYUR" through various media - prints as well as electronic,
besides making its goods available online through its website. It is
contended that the adoption of the mark by the defendant is a
colourable invitation of the well-known trademark of the plaintiff, as
the same comprises of identical and deceptively similar word element
"AYUR". The adoption of the mark by the defendants is malafide and
dishonest.
5. It is contended that the mark of the plaintiff „AYUR‟ is an
invented word and has no meaning whatsoever and is associated only
with the goods of the plaintiff. The plaintiff relies on the decision of
this Court in the case of the plaintiff itself, i.e., M/s Three-N-Products
Pvt. Ltd. Vs. Yashwant & Ors. 95 (2002) DLT 271.
6. Defendant no. 1 in its written statement has contended that the
marks of the plaintiff as well as defendant are different. The plaintiff
has no exclusive right in the word "AYUR" per se as the word
IA 4708/2011 & IA 10589/2011 in CS(OS) 709/2011 Page 3 of 10
"AYUR" is a word of very distinctive character and word "AYUR"
being an abbreviation of „AYURVEDA‟ signifies that the product is
of Ayurvedic qualities and in view of Section 17 of the Trademarks
Act, the plaintiff cannot obtain exclusive proprietary rights over the
word "AYUR". It is contended that the plaintiff has failed to produce
any evidence of the use of the mark in respect of the goods in class 25
in which the goods of the defendants fall.
7. Defendant no. 1 claims to be engaged in manufacturing and
selling eco-friendly organic handloom fabric, which is dyed using
Ayurvedic herbs. It is contended that the mark "AYURVASTRA" is a
composite mark comprising of the word „AYUR‟ derived from the
word „AYURVEDA‟ and the word „VASTRA‟ meaning clothes. It is
contended that the word "AYUR" per se is publici juris. Defendant
no. 1 claims to be using the said mark with a unique logo, which is
capable of identifying its own independent source of identity. The said
defendants also claim to have spent substantial amounts on promotion
on its products under the trademark "AYURVASTRA". Defendant
no. 1 relied on the decision, in the case of the plaintiff itself, of the
Calcutta High Court in Three-N-Products Private Limited Vs. Emami
Limited dated 29.01.2010 in APO No. 248 of 2008 in CS No.
204/2007 to contend that the plaintiff cannot claim exclusive right to
the use of the word "AYUR" as the same is a generic word. Reliance
is also placed on the order of the Supreme Court dismissing the
Special Leave Petition against the said judgment.
IA 4708/2011 & IA 10589/2011 in CS(OS) 709/2011 Page 4 of 10
8. Defendant no. 2 in its written statement has contended that
defendant no. 2 is neither a necessary nor a proper party to the suit.
Defendant no. 2 claims to be a society of weavers who make clothes
of different types of different agencies including private agencies as
well as Central Government and is engaged in the upliftment of the
handloom weavers community in Kerala. The handloom weavers have
been calling their clothes "AYURVASTRA" since times immemorial
as they were doing herbal dying using Ayurvedic medicinal plants.
Defendant no. 2 contends that it had initially agreed to the cease and
desist notice of the plaintiff because of the pressure from the attorneys
of the plaintiff and incorrect legal advice. It is denied that there is any
working partnership between defendant no. 1 and defendant no. 2
except few contract based job works.
9. Section 17 of the Trademarks Act, 1999 confers on the
proprietor of a mark exclusive right to use of the trademark taken as a
whole. Section 17(2) lays down that notwithstanding Section 17(1)
where a trademark contains any matter, which is common to trade or
is otherwise of a non-distinctive character, the registration thereof
shall not confer any exclusive right in the matter forming only a part
or the whole of the trademark.
10. The plaintiff has based its suit primarily on the ground that the
trademark of the plaintiff is an invented word and has no other
meaning whatsoever. The entire basis of the claim of the plaintiff is
IA 4708/2011 & IA 10589/2011 in CS(OS) 709/2011 Page 5 of 10
that it has invented the word "AYUR" and by extensive use of the
word "AYUR" and the association thereof with its goods since 1984,
the said mark has acquired distinctiveness and is identified with the
goods of the plaintiff alone.
11. The claim of the plaintiff ex-facie appears to be the incorrect.
The word "AYUR" finds mentioned in the Hindu Religious Texts i.e.
the Vedic Puranas, which has used the word "AYURVEDA". The
word "AYUR" signifies healthy life and the word "VEDA" signifies
knowledge. The word "AYURVEDA" is a Sanskrit term comprising
of two words - „AYUR‟, which means life or vital power, and
„VEDA‟ - which means science or knowledge. The word
„AYURVEDA‟ signifies knowledge or science of life. The whole
basis of the claim of the plaintiff that word "AYUR" is invented by
the plaintiff and adopted for the first time in 1984 is ex-facie
incorrect. The word "AYUR" has been used historically and is
derived from the Hindu Vedic Texts.
12. The protection of a trademark is dependent on whether the mark
adopted is generic, descriptive, suggestive, arbitrary or fanciful. The
marks, which are generic, descriptive or suggestive have lower level
of legal protectability and the marks, which are arbitrary or fanciful,
have higher level of legal protectability. If a person adopts a mark,
which is generic or descriptive in nature, he runs the risk of the mark
having a lower level of legal protectability. In the present case,
IA 4708/2011 & IA 10589/2011 in CS(OS) 709/2011 Page 6 of 10
plaintiff had adopted the word "AYUR" to describe its products. The
word "AYUR" as noticed above is a word derived from the Sanskrit
Religious Texts of the Vedic Puranas. The word "AYUR" is neither
an arbitrary nor a fanciful mark having a higher level of legal
protectability. The Plaintiff thus cannot prima facie claim any
proprietorship on the word „AYUR‟ per se.
13. The plaintiff having adopted a mark, which is generic or
descriptive, cannot claim legal protectability for the mere asking. It is
not that a generic or descriptive mark will never have any legal
protectability but the burden of proof on the person claiming
distinctness in favour of a generic or descriptive mark is much higher.
The plaintiff not only would have to show that the mark adopted by
the plaintiff, because of its extensive use has acquired distinctness and
is identifiable only with the goods of the plaintiff but also that the
adoption of the mark by the defendants is identical and deceptively
similar to the mark of the plaintiff.
14. In the present case, the plaintiff is using the mark "AYUR" as
under:
IA 4708/2011 & IA 10589/2011 in CS(OS) 709/2011 Page 7 of 10
whereas the defendants have used the mark "AYURVASTRA" as
under:
15. Since the plaintiff has adopted the word "AYUR", it runs the
risk of lesser level of legal protectability. It is apparent from the mark
of the defendants that it is completely distinct and different from the
trademark of the plaintiff. The defendants used the mark
"AYURVASTRA" in a completely different style, design and getup
from that of the plaintiff. The defendants have also rendered an
explanation that their trademark "AYURVASTRA" is used on cloth,
for the manufacture of which herbal dying process is used, using
Ayurvedic medicinal plants. The explanation of adoption of the mark
"AYURVASTRA" by the defendants is plausible and reasonable.
16. The decision in the case of Yashwant & Ors. (Supra) relied on
by the plaintiff does not help the case of the plaintiff, in as much as, in
the said case. The Court held that the trademark of the defendants was
an exact replica of the plaintiff‟s trademark, which could not be a
IA 4708/2011 & IA 10589/2011 in CS(OS) 709/2011 Page 8 of 10
sheer coincidence. The Court held "assuming that AYUR is a common
dictionary word, its adoption by the defendants in exactly the same
style, design, getup as that of the plaintiff would prima facie indicate
that in doing so the defendants were motivated by the desire to cash
on the popularity, goodwill and reputation of the said trademark." In
the present case as noticed above, style, design, getup trade dress of
the defendants "AYURVASTRA" is not identical to that of the
Plaintiffs‟ but is different and distinct.
17. Prima facie I am of the view that the plaintiff has failed to
establish a prima facie case in their favour for grant of an ad-interim
injunction. The mere fact that plaintiff claims to be a prior adopter or
has substantial turnover and has spent substantial amount on the
development is of no consequence. The balance of convenience is not
in favour of the plaintiff or in favour to the grant of an ad-interim
injunction.
18. The plaintiff has also failed to show that by use of the mark
"AYURVASTRA" by the defendant, the public is likely to get
deceived or likely to associate the products of the defendants with the
plaintiff.
19. In view of the above, the plaintiff is not entitled to grant of an
ad-interim injunction. Accordingly, the application being I.A.
No.4708/2011 (under Order XXXIX Rules 1 & 2 CPC) is dismissed
and I.A. No. 10589/2011 (under Order XXXIX Rule 4 CPC) is
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allowed. The interim order dated 23.03.2011 is vacated.
CS(OS) 709/2011
List before the roster Bench for directions on 10.01.2018.
SANJEEV SACHDEVA, J.
JANUARY 03, 2018 'rs' IA 4708/2011 & IA 10589/2011 in CS(OS) 709/2011 Page 10 of 10