Karnataka High Court
United Breweries Ltd vs Khodays Breweries Limited on 1 April, 2013
Equivalent citations: 2013 (3) AKR 625, AIR 2013 (NOC) (SUPP) 1414 (KAR.)
Author: Aravind Kumar
Bench: Aravind Kumar
1
R
IN THE HIGH COURT OF KARNATAKA AT BANGALORE
DATED THIS THE 1st DAY OF APRIL, 2013
BEFORE
THE HON'BLE MR.JUSTICE ARAVIND KUMAR
REGULAR FIRST APPEAL NO.66/2008
BETWEEN:
UNITED BREWERIES LTD
100/1, 'UB ANCHORAGE'
RICHMOND ROAD
BANGALORE ...APPELLANT
(BY SRI.GURURAJ & ASSOCIATES, ADVOCATES)
AND:
KHODAYS BREWERIES LIMITED
INDUSTRIES LTD
NO.9, SESHADRI ROAD
BANGALORE-560 009 ..RESPONDENT
(BY SRI. K.N.SRINIVASAN, ADVOCATE)
This Appeal is filed Under Section 96 of C.P.C.
against the judgment & decree dated 01.06.2007 passed
in O.S.No.747/1993 on the file of XXV Addl. City Civil and
Sessions Judge, Bangalore (CCH-23) dismissing the suit for
permanent injunction and mandatory injunction.
This Appeal having been heard and reserved for
judgment, coming on for pronouncement of judgment this
day, the Court delivered the following:
2
JUDGMENT
This is a plaintiff's appeal questioning the correctness and legality of the judgment and decree passed by XXV Addl. City Civil Judge, at Bangalore City - CCH No.23 in O.S.No.747/1993 dated 01.06.2007, whereunder the plaintiff's suit for permanent and mandatory injunction against the defendant came to be dismissed.
2. Parties are referred to as per their rank in the trial Court namely, appellant is referred to as 'plaintiff' and respondent is referred to as 'defendant'. BRIEF BACKGROUND:
3. Plaintiff filed a suit seeking the relief of perpetual and mandatory injunction against the defendant alleging that it has caused infringement of its registered trade mark, label "Kalyani Black Label" and passing off the beer manufactured by it to the customers under the trade mark "Hercules Black Label". Plaintiff has contended that it has got the trade mark registered under the Trade and Merchandise Marks Act, 1958 and the words used by the 3 defendant insofar as the beer manufactured by it and selling the same by creating confusion in the minds of the plaintiff's customers since the mark of the defendant is deceptively similar to that of trade mark of the plaintiff and as such the cause of action for the suit in question has arisen.
4. Defendant filed detailed written statement and denied the averments made in the plaint. Defendant contended that plaintiff is not having registration of the trade mark "Black Label" and the alleged registration is with a disclaimer. Defendant also contended that its trade mark "Hercules Black Label" is neither identical with nor deceptively similar to the plaintiff's registered trade mark "Kalyani Black Label" and comparison of the two would indicate that they are dissimilar and no consumer will be confused or deceived to take one for the other if they are placed side by side or apart. It is also contended that there is no phonetic similarity between the plaintiff and defendant's trade mark. It has also contended that through its attorney plaintiff had got issued a notice in the year 1989 to the defendant alleging that use of words "Black Label" as part of the mark "Khoday's Black Label" conflicted with its 4 registered trade mark "Kalyani Black Label" and while replying to the said letter on 16.06.1990 defendant had specifically contended that defendant has been using the words "Black Label" along with the word "Hercules" as trade mark of the beer manufactured by it ever since 1982 and as such the plaintiff was aware of the use of trade mark by defendant in the year 1990 itself and by suppressing this fact the plaintiff has filed the suit in question and also by suppressing the fact of having filed a suit i.e., O.S.706/1990 before the High Court of Calcutta. On these grounds amongst others raised in the written statement defendant sought for dismissal of the suit.
5. On the basis of the pleadings of the parties, trial court formulated the following issues for its adjudication:
1. Whether plaintiff proves that label of Beer bearing mark "Kalyani Black Label" is deceptively similar to that of defendant's brand "Hercules Black Label"?
2. Whether defendant is guilty of passing off?5
3. Whether defendant is liable to account for loss suffered by plaintiff?
4. Whether plaintiff is entitled for mandatory injunction directing the defendant to produce all infringing label and goods in its custody and possession?
5. Whether plaintiff is entitled for any relief?
6. What Order? What decree?
6. In order to substantiate its contentions raised, plaintiff got examined four witnesses as PW-1 to PW-4 and in all produced 26 documents and got them marked as Exhibits P-1 to P-26. Defendant examined six witnesses to support its stand taken in the written statement as DW-1 to DW-6. In all defendant produced 18 documents and got them marked as Exhibits D-1 to D-18. It is noticed from the records that evidence of DW-2 to DW-6 has been deleted vide order dated 26.10.2006 in view of memo filed on the said date.
7. Trial court on appreciation of evidence tendered by the parties namely both oral and documentary answered the 6 issues 1 to 5 in the negative and dismissed the suit. It is this judgment and decree which is assailed in the present appeal.
8. Heard the arguments of Sri.Gururaj, learned Advocate appearing for the appellant and Sri.K.N.Srinivasan, appearing on behalf of Sri.S.Sukumar, for respondent. Perused the Judgment and decree passed by the Trial Court, evidence both oral and documentary tendered by the parties and the Judgments relied upon by the respective learned advocates in support of their contentions. CONTENTIONS OF PLAINTIFF'S COUNSEL:
9. It is the contention of Mr.Gururaj that plaintiff has registered its trade mark in the year 1971 namely "Kalyani Black Label" and defendant is deceptively using the trade mark for sale of the beer manufactured by it and has started using the trade mark "Hercules Black Label" on its beer which is in clear violation of the Trade and Merchandise Marks Act, 1958; he contends that the trial court erred in improperly assessing the evidence and it failed to assess the degree of similarities and phonetical similarities between the 7 plaintiff company's trade mark and trade mark of the defendant company; he contends that the trade mark of the defendant company belongs to the same class as that of the plaintiff's product and the consumers of the products are also same and as such it would create confusion in the mind of the consumer. He has further elaborated his contention by contending that trial court has failed to consider the class of purchasers who are likely to purchase the goods and their intelligence and degree of care they are likely to exercise in purchasing the goods and in this background if the trade mark of the plaintiff and the trade mark being used by the defendant on the beer manufactured by it are compared there is likelihood of confusion being created in the mind of consumers; he also contends that regular trading places of the products of both companies are bars and wine stores which places are almost dark and a prudent consumer cannot properly identify the similarities of both trade marks in the usual course of trading and as such there is likelihood of an intoxicated consumer being deceived.
10. He would further submit that under Exhibit P-8 plaintiff has obtained the registration of the mark "Kalyani 8 Black Label" which artistic work is produced and marked as Exhibit P-8a and when the same is compared with the mark "Hercules Black Label" it would clearly go to show that defendant is attempting to pass off the beer manufactured by it to the consumers as though it is beer manufactured by the plaintiff company. He submits that initially the defendants were using mark "Khodays Black Label" and later on they are using the mark "Hercules Black Label". He submits that the trial court failed to consider that the rights provided to the registered proprietor of a trade mark under section 28 of the Act would be nullified in the event of such rights not being protected by grant of perpetual injunction; he also contends that DW-1 has admitted in cross examination that initially defendant was using the trade mark "Khodays" over the rum bottles sold in the market and by that time the beer market was dominated by the plaintiff company in the trade mark of "Kalyani Black Label" and there was no beer selling companies under the trade mark "Black Label" except defendant company and knowing the goodwill and reputation the plaintiff earned in the sale of beer manufactured by it the defendant introduced its beer under 9 the trade mark "Hercules Black Label" which nearly resembles the trade mark of the plaintiff and as such the defendant with an intention to encash the wide market and goodwill the plaintiff had earned had introduced the impugned trade mark to the beer manufactured by it and non considera0tion of this aspect by the trial court has resulted in erroneous judgment being passed; he would also contend that in the notice dated 16.06.1990 marked as Exhibit P-1 no reference has been made with regard to usage of the trade mark over the beer bottle sold by the defendant and as such the trial court was in error in coming to a conclusion that plaintiff was acquainted with the use of the trade mark "Black label" by the defendant ever since 1982 or 1988 and thereby it erroneously held that no cause of action arose for the suit. He would also submit that in cases of passing off, delay in filing the suit would not be fatal and date of acquiescence will not be subject matter for adjudicating. He also contends that while considering the claim for passing off what has to be considered is the reputation of the plaintiff company, deception caused by the defendant, class of consumer who are likely to purchase 10 both the products and the likely loss that may be suffered by the plaintiff, which aspects has not been taken note of and as such the judgment of the trial court is erroneous. In support of his submission he has relied upon the following judgments:
1. (1972) 1 SCC 618 - Parle Products (P) Ltd. Vs J.P. and Co., Mysore
2. (2001) 5 SCC 73 - Cadila Health Care Ltd., Vs Cadila Pharmaceuticals Ltd.
3. ILR 1993 Kar 2393 - Mangalore R.K.Beedies Vs Mohammed Hanif
4. (1994) 2 SCC 448 - M/s.Power Control Appliances and others Vs Sumeet Machines Pvt. Ltd.
5. (1998) 9 SCC 531 - Godfrey Phillips India Ltd., Vs Girnar Food and Beverages Pvt. Ltd., "5. The order made by the Division Bench is based on its view indicated as under:
"In view of the mark which is now registered, the word `Super Cup' having been disclaimed, the only effective part of the registered mark of the plaintiff is `TEA CITY'. The plaintiff/respondent therefore prima facie, cannot claim exclusive right to use the words Super Cup by virtue of any alleged user".
6. The proposition in the above extract is clearly in conflict with the decision of this Court in Registrar of Trade Marks Vs Ashok Chandra Rakhit Ltd. (SCR at pp.262-263). There is no dispute before us that even on disclaimer, a passing-off action lies and that is the reason why Shri Jaitley did not support the above reason given by the Division Bench in its order". 11
6. O.S.A. No.456/2009 and 8/2010 disposed of by the High Court of Madras in the matter of SNJ Distilleries Ltd. Vs Imperial Spirits Private Ltd.
CONTENTIONS OF DEFENDANT'S COUNSEL:
11. Per contra, Sri.K.N.Srinivasan, learned counsel appearing for the defendant would support the Judgment and decree passed by the trial court and in furtherance of it he would contend that Exhibit P-1 and P-1a cannot be looked into and they are inadmissible in evidence since what is permissible under the Act is the certificate issued under section 127 of the Trade and Merchandise Marks Act, 1958.
He also submits that the certificate issued under the 1958 Act the photo copy of which was produced by the plaintiff though not admissible since it is photo copy it is only such original certified certificate that can be admitted in the legal proceedings and admittedly at the time of filing of the suit Exhibit P-15 was not filed and by producing Exhibit P-1 and P-1a which was inadmissible in evidence plaintiff attempted to obtain exparte interim order of injunction. He further elaborates his submission by contending that plaintiff is guilty of suppression of facts namely it had filed 12 O.S.706/1990 on the file of the High Court of Calcutta against this defendant seeking similar relief and an ad interim exparte order was granted by the High Court of Calcutta on 11.09.1990 and on 17.09.1990 it came to be clarified that `Order of injunction will not prevent the respondent from manufacturing or selling the beer in the brand name of "Hercules" a Black Label'.
12. An appeal bearing No.135/1990 was preferred by the defendant herein before the Division Bench of High Court of Calcutta and the order of the Single Judge was stayed for 7 days and same was extended from time to time and thereafter by order dated 13.11.2003 extended the stay till the disposal of the appeal and contempt petition filed by the plaintiff in No.531/1992 by the time had been dismissed and later on the suit itself came to be dismissed for default on 22.06.2006. These facts being within the knowledge of the plaintiff has not been stated in the present suit and it has been suppressed.
13. He contends that the cause of action pleaded in the present suit as 28.01.1993 is contrary to the plaintiff's claim 13 itself and as such on the ground of delay, laches and acquiescence the suit had to be dismissed. He draws the attention of the court to Section 33 of the Trade Marks Act, 1999 to contend that registered user cannot interfere with or restrain the use of a trade mark identical or resembling in relation to goods to which that person has continuously used that trade mark and in support of his submission he relies upon Exhibit D-1 letter dated 16.06.1990 to contend that defendant has been using the word "Black Label" over the beer manufactured by it. He would also submit that section 41(g) of the Specific Relief Act bars grant of such relief.
14. The learned counsel appearing for defendant would also contend that action for passing off brought against the defendant is without merit and contends that averments in paragraphs 18 to 20 of the plaint is not substantiated by the plaintiff and in this regard he draws the attention of the court to cross examination of PW-1 dated 25.10.2004 whereunder PW-1 has admitted that the word "Hercules" and the words "Black Label" are in different colours and it is written in distinct style. He also brings to the notice of the court that plaintiff's trade mark word 14 `Kalyani' and the word 'Hercules' are not written in same letters. He also submits that PW-1 has admitted that registration obtained under Exhibit P-2 has expired. In support of his submission he has relied upon the judgments produced along with the list which is placed on record of this file.
REPLY ARGUMENTS BY PLAINTIFF'S COUNSEL:
15. Sri.Gururaj, learned counsel appearing for plaintiff in reply to the Judgment of the Hon'ble Apex Court in the matter of Power Control Appliances and others reported in 1994 (2) SCC 448 would submit question of delay and acquiescence considered in the said judgment would not apply to the facts on hand since the alleged reply notice Exhibit D-1 letter dated 20.08.2004 was not at all issued by defendant to plaintiff's solicitor. He would also submit issue of acquiescence was not under consideration by the trial court and as such no issue has been framed. He would also contend that the certificate Exhibit P-15 disclaimer is restricted to the use of the word `Label' and `Masterbrew' and the words "Black Label" found in Exhibit P-1 is not disclaimed and by way of alternate submission he contends 15 that even in case of disclaimer is found to be available that does not prevent the defendant from seeking for an action for passing off being restrained by an order of perpetual injunction.
FURTHER ARGUMENTS OF DEFENDANT'S COUNSEL:
16. With the leave of the court Sri.Srinivasan, learned counsel appearing for defendant would supplement his arguments by contending that trial court while answering Issue No.5 has considered the defence of acquiescence and has recorded its finding in the background of evidence tendered by parties and contends that even in a given case if issues are not framed the trial would not get vitiated and in support of said submission he has relied upon the Judgment of the Hon'ble Apex Court in the case of Nedunuri Kameswaramma Vs Sampati Subba Rao reported in AIR 1963 SC 884. He would also draw the attention of the court to the counter affidavit filed by the defendant in O.S.706/1990 before the High Court of Calcutta whereunder at paragraphs 9 and 15 it has been specifically contended about defendant having introduced "Khoday Black Label"16
beer in the year 1988 itself and plaintiff having been notified on 16.06.1990 through their solicitors as per Exhibit D-1 and as such the trial court in the background of said evidence has considered the issue of acquiescence. He would also submit that original of Exhibit P-15 was not produced before the Trial court.
17. Having heard the learned advocates appearing for the parties I am of the considered view that following point arises for my consideration:
1. Whether the judgment and decree passed by the trial court in O.S.747/1993 dated 01.06.2007 suffers from any patent error or the findings recorded by the trial court is contrary to material evidence available on record and as calls for interference ?
2. What order?
PLEADINGS OF THE PARTIES:
PLAINTIFF'S CASE:
18. Plaintiff filed a suit for injunction against the defendant to restrain it, its men, agents, servants, dealers, 17 distributors, subsidiaries or associate companies, licencees of anyone claiming through or under it from in any manner using the mark "Black label" on the beer manufactured and sold by the defendant in the districts of Bangalore and in any other district in the State of Karnataka and anywhere in India and for permanent injunction to restrain the defendant, its agents, servants, etc., from in any manner 'passing off' its beer as and for the beer of the plaintiff and for a decree of mandatory injunction directing the defendant to produce all the infringing trade mark, label, goods in its custody and possession of its men, agents, servants, etc., before Court and for a direction for same being destroyed without compensation to the defendant. Plaintiff also sought for a decree against defendant to pay to the plaintiff all profits that had accrued to it from the sale of beer in which the mark/trade mark is deceptively similar to the trade mark of the plaintiff which has been used, contending interalia that it is a company registered under the Companies Act, 1956 having its registered office at the address mentioned in the cause title of the plaint.18
18.1 It was contended that plaintiff is engaged in the business of manufacturing beer which it markets and sells under its well known trade mark, which it has been using over a long period all over India; since 1971 plaintiff has been and still is selling very large quantities of beer manufactured bearing the mark "KALYANI BLACK LABEL"
and by reason of extensive use, said mark has become very well known and for many years it has been distinctive product of the plaintiff; said mark of the plaintiff was adopted to distinguish the product of the plaintiff; said mark was duly registered as No.308025 in Part A of the Register dated 28.08.1975 in Clause 32 in respect of beer with the trade marks registry, Bombay under the Trade and Merchandise Marks Act, 1958 (henceforth referred to as 'Act') with the disclaimer and conditions mentioned therein; plaintiff is registered proprietor of said mark and said registration is valid and subsisting.
18.2. Plaintiff has further contended that defendant is a Bangalore based company which is also engaged in the business of manufacturing and selling of beer and other alcoholic products; it came to the notice of the plaintiff 19 recently that defendant is selling beer under the trade name "HERCULES BLACK LABEL", when the said product was purchased from M/s.B.R.L.Chetty and Sons, Bangalore; use of defendant's mark in connection with the beer is not of the plaintiff's manufacture or merchandise and it is an infringement of plaintiff's registered trade mark; defendant wrongfully is using said mark which is identical with the plaintiff's said mark or so nearly it resembles it as to deceive or likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the beer of the plaintiff and that of the defendant; plaintiff has been using its registered trade mark "Kalyani Black Label" of which the words "Black Label" constitute a prominent and integral feature of its beer since 1971; major portion of the plaintiff beer sales at present is under the name of "Kalyani Black Label" ; defendant has only recently started using its trade mark "Hercules Black Label" on its beer; words "Black Label" in which plaintiff holds proprietary rights by virtue of registration of trade mark "Kalyani Black Label" and extensive prior use have been wrongly appropriated by 20 defendant as its using the said words "Black label' as part of their trade mark "Hercules Black Label".
18.3. It was contended that defendant is using similar mark in connection with the beer which is identical with the plaintiff's mark or so nearly resembling it as to deceive or likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the beer manufactured by the plaintiff and that of the defendant; defendant is using the similar trade mark in order to have gain on the reputation and goodwill enjoyed by the plaintiff's beer sold under the trade mark "Kalyani Black Label". The use of words "black label" in which the plaintiff has proprietary rights and by use of the trade mark "black label"
is deceptively similar to that of plaintiff and defendant has attempted to misrepresent in the course of trade to the consumer that its beer originates from the plaintiff or has the seal of approval of the plaintiff or is made under a license or some association with the plaintiff or has the seal of approval of the plaintiff. Such misrepresentation is likely to cause immense damage to the plaintiff's business, reputation and goodwill as well as to the interest of the 21 consumers. It is further stated that defendant is invading or threatening to invade the rights of the plaintiff to exclusively use its said mark and label in relation to its said product and there exists no standard for ascertaining the actual damage caused or is likely to be caused by such invasion and compensation in money would not be adequate relief.
18.4. It is further contended by the plaintiff that its product beer sold under the trade mark "Kalyani Black Label", enjoys tremendous reputation and goodwill in the market and defendant being aware of it has still chosen to use the plaintiff's trade mark of which the words "Black Label" constitute an important feature which is to be ascribed to the defendant's intention to make illegal profits by trading upon reputation and goodwill of the plaintiff by misleading the consumer into believing that its beer is the product of the plaintiff or has been manufactured in association with the plaintiff.
18.5. Plaintiff has further contended that by using the registered trade mark of the plaintiff, defendant is infringing plaintiff's valuable intellectual property rights and also 22 passing off its goods to the consumers as that of the plaintiff and thereby defendant has infringed the said trade mark of the plaintiff. The defendant through its action is enabling its dealer and others selling beer to defraud the consumers by passing off the beer of the defendant as that of the plaintiff.
It is further contended that defendant is also marketing the beer under the mark "Khodays Black Label" in Calcutta and plaintiff in order to protect its proprietary rights over the trade mark "Kalyani Black Label" as the said mark of the defendant was deceptively similar to that of plaintiff a suit in O.S.706/1990 was filed on the file of the High Court of Calcutta for relief of perpetual injunction and the High Court of Calcutta was pleased to pass an order on 04.04.1991 and despite such order defendant continued to manufacture and sell under the mark "Khodays Black Label". Application for contempt against defendant is filed. It is contended that beer manufactured by plaintiff company under the above said trade mark has got goodwill and reputation in the market and in view of defendant having deliberately chosen to use alleged mark "Black Label" to trade upon the goodwill and reputation of the plaintiff which it has acquired over the 23 years taking advantage of the popularity, reputation and goodwill of the plaintiff; defendant wrongly, illegally has used the said impugned mark in relation to the beer manufactured by it in the course of its trade with the sole purpose and object to defraud the plaintiff and to make illegal gain. On these grounds plaintiff sought for the decree as prayed for in the suit.
DEFENDANT'S DEFENCE:
19. On service of suit summons defendants have appeared and filed its written statement and denied all the averments made in the plaint. Defendant has specifically contended that plaintiff had full knowledge of the use of trade mark "Hercules Black Label" by the defendant even prior to 25.01.1993. Plaintiff had full knowledge of the use of the impugned mark by the defendant even prior to it as the latter had alluded to its user since 1982 in its reply dated 16.06.1990 in the prior exchange of letters in connection with the use of "Khoday's Black Label" and also in its defence statement in the suit O.S.706/1990 before the High Court of Calcutta resulted in the clarification order 24 dated 17.09.1990 whereunder defendant was allowed to manufacture and sell under the brand name "Hercules Black Label". It is further contended that defendant's trade mark "Hercules Black Label" is neither identical with nor deceptively similar to the plaintiff's registered trade mark "Kalyani Black Label". A bare comparison of two marks would indicate dissimilarities in material particulars and no one has been or will be confused or deceived to take one for the other even if they are placed by side or apart. There is difference between them and the word "Black Label" is out and out, downright descriptive and disclaimed feature in the registration and as such plaintiff cannot claim exclusive right to it at all.
19.1. It was contended that defendant sells its beer under its full trade mark "Hercules Black Label" and it is not deceptively similar to nor has any phonetic similarity to the plaintiff's trade mark "Kalyani Black Label" and claim of the plaintiff is unfounded. It is further contended that plaintiff's trade mark "Kalyani Black Label" which has been registered is with a disclaimer and a condition to the effect that registration shall give no right to the exclusive use of the 25 word "Label" and `Master Brew' and the registrant shall have no exclusive right for the use of the black coloured label. The trade mark representation affixed to the plaintiff's certificate does not tally with the trade mark label as per Annexure-B at all and deliberately omitting the key words "Kalyani" from the brand name "Kalyani Black Label" making it to appear that what is registered is only "Black Label". Intentionally plaintiff has not produced the original registration certificate and suit is filed without producing the real document and thereby Order VII Rule 14 of CPC is violated. There is glaring inscription printed in bold capitals on the specimen of the trade mark representation affixed to the said registration certificate and the trade mark is "For Sale in West Bengal only", by this territorial restriction for use of the mark, plaintiff is liable to be non suited and present suit is liable to be dismissed.
19.2. Defendant has further contended that during the end of 1989 plaintiff had sent a letter through its Attorney to defendant alleging that the use of "Black Label"
as part of the mark "Khodays Black Label" conflicted with the registered trade mark "Kalyani Black Label" of the 26 plaintiff and said notice came to be replied on 16.06.1990 wherein defendant has referred to the use of "Black Label"
along with "Hercules" as trade mark of its beer ever since 1982 and Plaintiff did not accept the same and filed a suit O.S.706/1990 wherein defendant has filed its defence reiterating its contention that it has been using trade mark "Hercules Black Label" on its beer ever since 1982.
19.3. It has been further contended that High Court of Calcutta while passing the interim order on 17.09.1990 clarified that "the order of injunction will not prevent the respondents from manufacture or selling beer in the brand name "Hercules Black Label" and contended that plaintiff has suppressed this fact and has falsely alleged in the plaint that it came to know about the defendant's use of "Hercules Black Label" only on 25.01.1993. Defendant has contended that it was openly and inexorably using the mark "Hercules Black Label" since long and the words "Black Label" in the defendant's mark "Hercules Black Label" being only one of the integers of a composite label mark of many features and consists of ordinary words of usage which is also descriptive and there are features other than "Black Label" which are 27 totally different and as such there is no infringement of plaintiff's registered trade mark.
19.4. It is further averred in the written statement that plaintiff's mark "Kalyani Black Label" is registered with twin conditions namely (i) it shall have no right to exclusive use of the word "Label" and "masterbrew", and (ii) the registrant shall have no exclusive right for the use of the black coloured label. Plaintiff is not the innovator or pioneer in using "Black Label" as a part of brand name in liquor trade and there are both Indian and Foreign and some of them world renowned who have also got registered under the Trade and Merchandise Act, 1958 and as such registration does not confer exclusive right in each part of the registered mark and much less in the part subject to conditions stipulated therein. The marks must be compared as a whole. In case resemblance is confined to non essential feature while essential features are different, as in this case, the resemblance goes for nothing. On these grounds the defendant sought for dismissal of the suit. 28 FINDINGS OF THE TRIAL COURT:
20. As noticed herein above both the parties tendered evidence (oral and documentary). On evaluation of such evidence and on appreciation of the arguments advanced by respective learned advocates Trial Court held that registered mark is to be considered as a whole and there is no warrant for claiming registration to part of a mark and in case registration right to part of a mark is claimed the whole as well as the part to be separately registered and entered in the register as associated marks as required under section 15 and 16 of the Trade and Merchandise Marks Act, 1958. It also held that in view of disclaimer is a condition entered in the register as provided under sub-section (2) of Section 28 of the Act, the registered proprietor cannot prevent another person from using the disclaimed feature by virtue of registration of the mark and in view of PW-1 admitting in the cross examination that "Kalyani Black Label" is a composite word and in view of there being disclaimer to the exclusive use of the words `Label' and `Masterbrew' as also plaintiff not having exclusive right for the use of `Black Coloured Label' plaintiff cannot claim protection of its rights 29 in relation to the words "Black Label". On scrutiny of evidence with regard to the defendant's mark being deceptively similar to the plaintiff's mark it held that the defendant's label bearing the mark "Hercules Black Label" is not deceptively similar to plaintiff's mark "Kalyani Black Label" on its label. It further held that plaintiff had failed to establish that defendant is guilty of passing off its beer products under its trade mark to the customers of plaintiff. Trial Court also held that documentary evidence would establish that there is no financial loss caused to the plaintiff since its accounts reflected that there has been increase in the volume of its sales. On these grounds amongst others Trial Court dismissed the suit filed by the plaintiff against the defendant for the relief of perpetual injunction and mandatory injunction.
21. In view of rival contentions raised hereinabove, I am of the considered view that point formulated herein above can be answered under the following heads:
1. Cause of action.
2. Previous disputes.
3. Delay and acquiescence.30
4. Registration of the trade mark and prior user.
5. Passing off.
Hence, these points are delved upon by referring to the pleadings, evidence both oral and documentary as well as the case laws governing the issues.
RE: CAUSE OF ACTION, PREVIOUS DISPUTES AND DELAY AND ACQUIESCENCE.
22. Plaintiff has contended that cause of action for the suit in question arose in January, 1993. Plea has been raised in paragraph 34 of the plaint as under:
"The cause of action for the suit arose in January, 1993 when for the first time the plaintiff became aware of the fact that the defendant herein is using the impugned mark and is trying to pass off their goods as those of the plaintiff herein and thereafter on 25.01.1993 when the plaintiff obtained a cash memo (Annexure- D herein) and a bottle of beer sold under the impugned trade mark by the defendant in Bangalore within the jurisdiction of this Hon'ble Court where the defendant has its office and where the infringement of the trade mark of the plaintiff has taken placed. No suit has been filed on the same cause of action by the plaintiff earlier in respect of the impugned trade mark viz., 'HERCULES BLACK LABEL'."31
23. Refuting the said claim, defendant has contended that plaintiff has deliberately suppressed the material fact and has falsely alleged that it came to know about defendant's use of 'HERCULES BLACK LABEL' only on 25.01.1993 in order to escape from giving reasons for the delay and the impact of the order passed by the High Court of Calcutta in O.S.No.706/1990 whereunder by order dated 17.09.1990 High Court of Calcutta has clarified that 'the order of injunction will not prevent the respondent (defendant herein) from manufacturing or selling beer in the brand name 'HERCULES BLACK LABEL'. It is also contended that plaintiff had full knowledge of the use of impugned mark by the defendant even prior to it as the latter had alluded to its user since 1982 in its reply dated 16.06.1990 which was in the context of prior exchange of letters in connection with the use of mark of 'Khoday's Black Label' by defendant. On these grounds, defendant contended that plaintiff is not entitled for the relief prayed for and for the reason of estoppel, acquiesence and long delay and as such, it has been contended that there is no cause of action for the suit.
32
24. Cause of action is a question of fact and law. Same requires to be examined in the context of the pleadings of parties. There cannot be a straight jacket formula on this. Cause of action has to be ascertained on conjoint reading of all paragraphs of the plaint. Whether a plaint discloses a cause of action or not is essentially a question of fact. But whether it does or does not must be found from the reading of the plaint itself. There may be instances where cause of action may be present in a suit but on account of delay and laches the plaintiff may not be entitled for the relief sought for on that ground. Thus, while considering the claim for grant of relief of perpetual injunction the aspect of delay, laches and acquiescence are required to be cumulatively considered .
25. In the aforestated circumstances, the case on hand when examined as to whether there is cause of action?, and whether there is any delay, latches and acquiescence on the part of the plaintiff the answer has to be in the affirmative for the following reasons:
33
At the outset, it can be noticed that undisputedly plaintiff had filed a suit against defendant in O.S.No.707/1990 before the High Court of Calcutta seeking for relief of perpetual injunction, infringement and passing off in respect of mark 'Khodays' Black Label' . An exparte ad-
interim order of temporary injunction was granted on 11.09.1990. After defendant sought for vacating of the order of said temporary injunction granted exparte, it was clarified on 17.09.1990 that 'the order of injunction will not prevent the respondents from manufacturing or selling the beer in the brand name of "Hercules" a Black Label.' This order passed by High Court of Calcutta has been produced and marked as Ex.D-8. An appeal bearing No.135/1990 was preferred by the defendant herein before the Division Bench of High Court of Calcutta and the order of the Single Judge was stayed for 7 days and same was extended from time to time and thereafter by order dated 13.11.2003 extended the stay till the disposal of the appeal and contempt petition filed by the plaintiff in No.531/1992 by the time had been dismissed and later on the suit itself came to be dismissed for default on 22.06.2006. The copy of said order has been 34 produced by the learned counsel appearing for defendant before this Court along with a memo on 05.02.2013 and same has reached finality.
26. Present suit in question i.e., O.S.747/1993 came to be filed on 28.01.1993. As on date of filing of present suit, plaintiff was fully aware of the fact that suit O.S.No.706/1990 was still pending before High Court of Calcutta and orders had been passed in the said suit. In fact, plaintiff had filed contempt petition in case No.531/1992 against defendant herein alleging violation of interim order. Undisputedly it came to be rejected on 01.04.1992 with an observation that there is already a stay granted in favour of defendant and there has been no deliberate violation of the interim order passed by Court by the defendant. These facts were fully within the knowledge of plaintiff. However, there is no whisper in the plaint in this regard.
27. Yet another factor requires to be noticed by this Court is, plaintiff prior to the institution of suit O.S.No.706/1990 on the file of High Court of Judicature at 35 Calcutta had issued a notice to the present defendant here in through its solicitors and said legal notice was duly replied by the defendant through its solicitors on 16.06.1990 vide Ex.D-6. P.W.1 has admitted this fact in his cross examination dated 20.08.2004. His admission reads as under:
"It is true to suggest xxxx black label. It is true that prior to filing of the said suit, there was exchange of notices between the parties. In that case, our trade mark attorney was Daver & company. To the question that to the notice addressed by plaintiffs, defendant has replied by reply notice dated 19.06.1990 witness states he does not know."
(Emphasis supplied by me) There is no suggestion made to D.W.1 in his cross examination by plaintiff about this letter Ex.D-1 having not been despatched by the defendants or about plaintiff having not received the said reply notice. In fact, even in the examination-in-chief of P.W.1 witness has not denied about either the exchange of notices between plaintiff and defendant prior to institution of the suit O.S.No.706/1990 or non receipt of the reply notice dated 16.06.1990 - Ex.D-6. In this background, it cannot be construed that there was no 36 exchange of notices between the plaintiff and defendant in the year 1990. A perusal of reply notice dated 16.06.1990 - Ex.D-6 would indicate that defendant herein had intimated the plaintiff about use of the mark "Khoday's Black Label" by it. Thus, plaintiff was aware of this fact and yet there is no whisper in the present suit about these facts.
28. Above facts would indicate that plaintiff was aware about the usage of the trade mark 'HERCULES BLACK LABEL' even as on 1990. For a period of three years, plaintiff did not take any steps in this regard and it was admittedly prosecuting its claim in O.S.No.706/1990 before the High Court of Judicature at Calcutta. Delay defeats equity. Grant of relief of injunction is a equitable relief and if a litigant who seeks the indulgence of the Court or who seeks the hands of justice being extended must not only be vigilant but also should be awake at all times to protect his rights. As otherwise, the rights if any assuming in a given situation is usurped by rival or a competitor the litigant who seeks grant of equitable relief will have to necessarily demonstrate and prove that he was diligent and has approached the Court immediately without any haste or 37 delay. As noticed herein above, plaintiff has filed the present suit on 28.01.1993 for identical relief which it had claimed against the very same defendant in O.S.No.706/1990 before the High Court of Judicature at Calcutta. This would clearly indicate that plaintiff has not acted in a bonafide manner or with the speed with which it ought to have acted to enable it to seek for the equitable relief of injunction in present suit.
29. It is also true that delay by itself cannot be a ground to deny the relief unless it is established that it is deliberate inaction and plaintiff had acquiescence itself in such delay. Improper and unexplained delay would be fatal for grant of equitable relief of injunction. In view of the aforesaid facts, I am of the considered view that in the instant case, the cause of action which is pleaded to have arisen during 1993 on the basis of plaintiff's knowledge about defendant using identical mark is incorrect and contrary to facts. Plaintiff being aware of the factual matrix even as on 1990 had not pursued its grievance in the pending suit O.S.No.706/1990 before the High Court of Judicature at Calcutta and by the present suit it is attempting to revive a dead cause of action. 38
30. One another defence set up by the defendant is that it has been manufacturing 'Hercules Black Label' beer ever since 1982 and this fact was brought to the notice of the plaintiff when it issued a notice during 1989 through its attorney to the defendant alleging the use of 'Black Label' as part of the mark 'Khoday's Black Label' conflicted with its registered trade mark 'Kalyani Black Label' came to be replied by notice dated 16.06.1990 - Ex.D-1. This fact being within the knowledge of plaintiff and thereafter plaintiff having instituted the suit in O.S.No.706/1990 before the High Court of Judicature at Calcutta wherein defendant along with its defense had produced said letter dated 16.06.1990, which was taken note of by the High Court for modifying the exparte order of ad-interim temporary injunction granted in favour of plaintiff and as such, by its order dated 17.09.1990 it permitted the defendant to manufacture its products. This fact being within the knowledge of plaintiff, it is too late in the day for the plaintiff to come up with present claim having kept quite for so long a time while in the meanwhile, defendant was openly selling its beer under the impugned mark and as such, plaintiff has 39 forfeited its right to claim any relief on account of acquiescence.
31. It is also contended that defendant has been using 'Hercules Black Label' from a date prior to filing of the suit O.S.706/1990 by the plaintiff. It is also contended that the word 'Black label' is purely descriptive of the label of Black colour and it is out and out, downright descriptive and as such plaintiff cannot claim any exclusive right over the said words. It has also been contended by learned counsel for the defendant that even a registered user of a registered trade mark would not be entitled to interfere with or restrain the use by any person of a trade mark identical with or resemble it who has continuously used that trade mark from a date prior to the use of the first mentioned trade mark or to the date of registration of the first mentioned trade mark whichever is earlier for entitling the registrar to consider the second mentioned trade mark only for registration.
32. In order to examine the said contention, it would be necessary to extract Section 33 of the Trade and Merchandise Marks Act, 1958 and it reads as under: 40
33. Saving for vested rights:-- Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior ----
(a) to the use of the first -
mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his; or
(b) to the date of registration of the first - mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his;
whichever is the earlier; and the Registrar shall not refuse (on such use being proved) to register the second - mentioned trade mark by reason only of the registration of the first - mentioned trade mark.
33. Hon'ble Supreme Court in POWER CONTROL APPLIANCES & OTHERS VS SUMEET MACHINES PVT., LTD -AIR 1994 (2) SCC 448 had examined the issue regarding acquiescence and has held that it is one facet of delay and if the plaintiff stood by knowingly and allowed the defendants to build up an important trade until 41 it had become necessary to crush it, then plaintiffs would be stopped by their acquiescence. It has been held as under:
"25. If there is an infringement of the same whether the appellant would be entitled to interim injunction at this stage is the important question for determination. For such a determination, we refrain from going into the details relating to evidence as that will prejudice the parties in the suits. Section 30(1) (b) of the 1958 Act says:
"30. Acts not constituting infringement.
- (1) notwithstanding anything contained in this Act, the following acts do not constitute an infringement of the right to the use of a registered trade mark-
(a) XXXX
(b) the use by a person of a trade mark in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk of which they form part, the registered proprietor or the registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark."
Therefore, acquiescence is one of the defences still available to the first respondent. Of course, it is a different issue whether the plea of acquiescence has been made out in this case. That will be examined 42 for a limited purpose after sitting out the law on this aspect."
"31. In Electrolux LD.V. Electrix at pp.32 and 33 it was held thus:
" I now pass to the second question, that of acquiescence, and I confess at once that upon this matte I have felt no little sympathy for the defendants, and have been not a little envious of the good fortune which has attended the plaintiffs, though no doubt they may justly attribute it to the astuteness of their advisers; but, as has already been said, the defendants have traded openly and (as the Judge found) honestly, beyond any question, in the ordinary course and substantially under this name 'Electrix' for a very long period of time, since early 1930's. during that time, they have built up (I doubt not) a valuable goodwill associated with that name. if the possibility that the mark 'Electrolux' was infringed is out of the way, and if I disregard for the moment (as I do) the point taken by Mr Kenneth Johnstone that in any event for use of 'Electrolux' was a sufficient use for the purpose of Section 26(1) of 'Electrux' (seeing that the two marks were associated). I have no doubt that if the plaintiff had challenged in the courts the right of the defendants to use 'Electrix' before they have effect to their decision to apply the word 'Electrux' to their cheaper model in lieu of 'Electrolux', they would in all probability have failed, because the defendants' motion to strike the word 'Electrux' off the Register would have succeeded, but the fact is that when the battle was joined, 'Electrux' was no longer 43 vulnerable on that account, unless the defendants can establish that the use was not bona fide, a matter to which I shall come presently. It is, however, said that by the defendants that the plaintiffs have deprived themselves of their legal right or, at least, of any right to the equitable remedy of injunction.
Upon this matter, a great deal of learning has been referred to, and we have also had our attention drawn to a number of cases.
The latter include the well-known statement in Willmott V.Barber by Fry, J (as he then was) at p.105. He said this: 'It has been said that the acquiescence which' will deprive a man of his legal rights must amount to fraud, and in my view that is an abbreviated statement of a very true proposition. A man is not to be deprived of his legal rights unless he has acted in such a way as would 'make it fraudulent for him to set up those rights'. Let me pause here to say that I do not understand that, by the word 'fraudulent', the learned Judge was thereby indicating conduct which would amount to a common law tort of deceit. 'What, then, are the elements or requisites necessary to constitute fraud of that description? In the first place 'the plaintiff must have made a mistake as to his legal rights'. Secondly, the plaintiff must 'have expended some money or must have done some act (not necessarily upon the defendant's land) on the faith of his mistaken belief'. Thirdly, the defendant, the possessor of 'the legal right, must know of the existence of his own right which is inconsistent with 'the legal right, must know of the existence of his own right which is 44 inconsistent with' the right claimed by the plaintiff. If he does not know of it he is in the same position 'as the plaintiff, and the doctrine of acquiescence is founded upon conduct with a knowledge' of your legal rights. Fourthly, the defendant, the possessor of the legal right, must know 'of the plaintiff's mistaken belief of his rights. If he does not, there is nothing which' calls upon him to assert his own rights. Lastly, the defendant, the possessor of the legal 'right, must have encouraged the plaintiff in his expenditure of money or in the other acts which he has done, either directly or by abstaining from asserting his legal right'. In reading that passage, it is perhaps necessary to note (because it makes it at first sight a little more difficult to follow) that the positions of plaintiff and defendant as they are usually met with are there transposed, and that one of the parties who is there spoken of as the plaintiff corresponds with the present case with the defendants, and vice versa."
34. In the background of law laid down by Apex Court, the facts on hand are required to be examined.
It has been stated by D.W.1 that as long back as 1982 it has been using the mark 'Hercules Black Label' . Defendant has obtained the registration of the trade mark and certificate issued to the defendant company in respect of the name 'Hercules' is produced at Ex.D-16 and another 45 certificate as D-16(a). Defendant has also produced the certificate issued by the Chartered Accountant dated 23.08.2002 marked as Ex.D-5 whereunder it is certified by the said Chartered Accountant about the sale figures of 'Hercules Black Label' beer manufactured and marketed by defendant relating to the period 1982-83 to 1992-93. The invoices relating to the said period has also been produced which were 35 in number and they are collectively marked as Ex.D-6 which relates to the period 1983, 1984, 1986, 1987. On the other hand, plaintiff has produced the details of the sales for the five years namely, 1987-88 to 1991-92. However, no records are forthcoming as to its manufacture and use prior thereto. This would clearly indicate that defendant has been using the mark 'Hercules Black Label' on the beer manufactured and sold by it even as on 1982. This would also indicate that plaintiff was aware of the prior use of the mark 'Hercules Black Label' by the defendant. Being aware of this fact, plaintiff has not taken steps as expected of a person with business prudence. Hence, on the ground of acquiescence also plaintiff is not entitled for grant of discretionary relief.
46RE: REGISTRATION OF TRADE MARK - PRIOR USER AND PASSING OFF -
35. Plaintiff claims that its trade mark "Kalyani Black Label" is registered under the Trade and Merchandise Marks Act, 1958 and as per certificate dated 28.08.1975 Exhibit P-1. It requires to be noticed at this juncture that marking of this document was objected to by the learned counsel appearing for the defendant on 27.03.2004. The Trial court has not examined the validity or otherwise of the said objection raised. Section 115 of the 1958 Act provides for admitting a certificate or a copy of an entry made in the register certified by the Registrar and sealed with the seal of Trade Marks Registry to be admitted in evidence. In other words the production and marking of a certificate issued under this section would be admitted in evidence and the contents thereof are presumed to be proved unless rebutted. Section 115 reads as under:
Section 115. Evidence of entries in register etc., and things done by the Registrar -
(1) A copy of any entry in the register or of any document referred to in sub-section (1) of 47 Section 125, purporting to be certified by the Registrar and sealed with the seal of the Trade Marks Registry, shall be admitted in evidence in all courts and in all proceedings without further proof or production of the original. (2) A certificate purporting to be under the hand of the Registrar as to any entry, matter or thing that he is authorised by this Act or the rules to make or do shall be prima facie evidence of the entry having been made, and of the contents thereof, or of the matter or thing having been done or not done.
36. Application for renewal sought for by plaintiff came to be produced and marked as Exhibit P-2 and various applications made to the competent authorities for renewal also came to be produced as per Exhibit P-4 and P-5 which were also objected by defendant to be marked and the trial court marked those documents by keeping open the objections which has not been considered subsequently. In the light of the statutory provision when these applications are perused it would indicate that annexure to Exhibit P-1 is not certified by the trade marks registry. The said certificate Exhibit P-1 has been issued under Section 23(2) of the 1958 48 Act read with Rule 65(1) and not a copy of the entry as issued under Section 115 of the Act. The said certificate Exhibit P-1 does not contain entry with regard to "Kalyani Black Label". Plaintiff has not proved the contents of Ex.P-1. As such annexure to Exhibit P-1 does not have any evidentiary value and same cannot be relied upon. Plaintiff has not summoned the original register from the office of Trade Marks Registry to prove the contents of Annexure to Exhibit P-1. As to whether it is the same annexure which has been registered in Part -A of the register by the Trade Marks Registry under the Trade and Merchandise Act, 1958 has remained a moot question and it has remained unanswered. Though plaintiff knew that certificate Exhibit P-1 would not stand the test of scrutiny before courts for reasons best known it did not make any attempt to produce the certified extract of the register issued by the Trade Marks authority under section 115 of the Act. Infact, defendant in the cross examination of PW-1 confronted him with certified extract of the register dated 09.08.1990 issued by the Trade Marks Authority, Bombay and got it marked as Exhibit P-15 which is said to be the certificate issued by 49 Registrar of Trade Marks in favour of plaintiff. It is admitted by the said witness that word `Kalyani' is not visible in the said certificate. This certificate was available in the file and it was confronted to PW-1. Though said witness has stated in the cross examination dated 20.08.2004 that the word `Kalyani' is not visible since it is photo copy and same is visible in the original, the said original has not seen the light of the day. No effort was made by plaintiff to produce the original. Infact the very same witness has also admitted that Exhibit P-15 contains the word `for use in West Bengal only'. No other evidence worthwhile has been tendered by the plaintiff to establish registration of its Trade Mark. In that view of the matter I am of the considered view that the plaintiff has utterly failed to prove that it has obtained registration of the trade mark `Kalyani Black Label' and as such it is not entitled for the reliefs sought for in the plaint.
37. The next issue which requires to be considered relates to the use of words `Black Label' by defendant and passing off. Trial court while answering issue No.1 has adjudicated the same and recorded its finding at paragraph 15 and 16. Plaintiff is selling the beer manufactured by it 50 under the trade mark "Kalyani Black Label" whereas defendant is selling beer manufactured by it under the brand name "Hercules Black Label". Plaintiff has relied upon the registration certificate issued by the trade marks authority to contend that same is the registered trade mark of the plaintiff. As already observed by me hereinabove plaintiff has not been able to demonstrate by relying upon Exhibit P-1 that it is the registered trade mark holder of "Kalyani Black Label". Even otherwise annexure to Exhibit P-1 would clearly establish that said label is restricted `for sale in West Bengal only'. Thus, much credence cannot be given to Exhibit P-1 for considering the claim of plaintiff since it is seeking an order of restraint against defendant from using the trade mark 'Hercules Black Label' not only in Bangalore but also in entire country. On the other hand PW-1 was confronted with the very photo copy of the certificate dated 09.08.1990 which was claimed by the plaintiff to have been issued by trade marks registry along with the plaint and reflected as Annexure-C therein to elicit as to whether it is the certificate of registration issued by Registrar of Trade Marks and the said witness has answered in the affirmative 51 and said document came to be marked as Exhibit P-15. The admission of PW-1 in this regard reads as under:
In annexure-B the words `Kalyani Black Label' is visible. It is true to suggest that plaintiff has filed certificate of annexure-B and annexure-C. It is true that annexure-C is Xerox copy of certificate of registration issued by Registrar of trade marks. Same is marked as P-15. It is false to suggest that in Exhibit P-15 I have dishonestly put label as `Black Label' instead of `Kalyani Black Label' deliberately and intentionally. It is true to suggest that in Exhibit P-15 word `Kalyani' is not visible as same is photo copy.
Since I have seen original label of which photo copy has been taken I say that word `Kalyani' is not visible though it is there in the original. It is false to suggest that `Kalyani Black Label' has to be used in the State of West Bengal and not in any other territories. It is true to suggest that Exhibit P-15 contains the word `for use in West Bengal only'. It is false to suggest that word `Kalyani' in Kalyani black label is predominant in Exhibit P-15. It is true word `Black Label' is descriptive.52
It is true to suggest that many companies are using the word `Black Label' with some prefix or suffix. It is true to suggest that Johny Walker black label is in the market for more than 60 years. Similarly Carline is using the word `black label' with their name for number of years. It is false to suggest that word `black label' is commonly used in the liquor and has become publicy -juris.
(Emphasis supplied by me)
38. By reading of the above evidence it would indicate that word `Kalyani' is not found in Exhibit P-15. Though PW-1 has stated that said word is not visible since Exhibit P-15 is a photo copy, nothing prevented the plaintiffs to produce the original subsequently to prove the contents of Exhibit P-15 which would have dispelled the cloud surrounding it. For reasons best known plaintiff has withheld this material evidence from the scrutiny of the court. On account of non production of material evidence before court, the only course left open to trial Court was to draw an adverse inference against the plaintiff and it has been rightly drawn.
53
39. Be that as it may. Even in the certificate Exhibit P-15 there is a disclaimer which reads as under:
Registration of this trade mark shall give no right to the exclusive use of the `label' and `Masterbrew'.
It is a condition of registration that the applicant shall have no exclusive right for the use of black coloured label.
The label of defendant was confronted to PW-1 and marked as Exhibit D-2. PW-1 has admitted in his cross examination dated 25.10.2004 as under:
"It is true to suggest xxxxxxxxxxxxxx label is black. Further the word `beer' in Exhibit D-2 and plaintiff's label is written in red letters though both are written in distinct style. It is true to suggest that plaintiff's company's word `beer' is prefixed by letters namely `Master brew pilsner lager beer'.
Thus, it is an undisputed fact there is disclaimer in Exhibit P-15 and admission of PW-1 would indicate registered holder of this trade mark will have no right to the exclusive use of the words `Label' and `Masterbrew'. It is 54 also a condition of the registration that such applicant will have no exclusive right for the use of `Black coloured label'.
40. Section 15 of the Act provides for registration of the trade marks and a proprietor of a trade mark who claims to be entitled to the exclusive use can apply to register the whole and a part as separate trade marks. Sub-section (3) of Section 15 provides for registration of those several trade marks in respect of the same goods or description of the goods as enumerated therein. Section 17 provides for disclaimer. Chapter IV of the Act describes the effect of registration. Section 27 under said Chapter prohibits institution of proceedings to recover damages for unregistered trade mark and sub-section (2) provides for action against any person for `passing off' action. Section 28(1) gives exclusive right to the use of the trade mark on registration of a trade mark in Part -A or Part -B of the register and it would be subject to conditions and limitations prescribed for the use of such trade mark given under sub- section (1) of section 28 as provided under sub-section (2) of Section 28.
55
41. Although learned advocates appearing for both the parties have relied in the course of their arguments on a Catena of decisions in support of their respective contentions regarding "passing off action", I propose to refer to only few decisions which have bearing on the point being adjudicated.
"8. Passing off action is a common law liability as has been described in Chapter 15 at pages 473 to 475 of the Book by Sri.W.R. Cornish entitled "Intellectual property: Patents, Copyright, Trade marks and allied rights (Sweet and Maxwell) on which reliance was placed by the learned counsel on both sides. The portions relevant for the present purpose read as under:
"The passing-off action was first developed to meet a classic case. As Lord Halsbury put it," nobody has any right to represent his goods as the goods of somebody else".
The same has been held of representations about services; and a defendant may also be liable for passing-off one class of the plaintiff's goods as another. His means may consist of misappropriating the plaintiffs mark, business name or get up;
or he may simply supply his own goods when he receives an order for the plaintiff's. In all such cases, the plaintiff loses the customer because the latter is misled by a competitor. The seriousness of such a threat is recognised in legal principle, at least so far as an injunction is concerned, the action will lie even where the defendant is innocent, and relief may be granted without proof of actual damage, but simply because of the likelihood of future injury. This, as we 56 have seen carries passing-off further than most other economic torts. And because it is in this sense a wide-ranging form of liability, the Judges have in the past been careful to ensure that it is not applied indiscriminately to analogies which fall outside the classic cases.
This caution is for instance expressed in the refusal to treat rights arising from use of a trade mark as giving a full-fledged right of property in that mark. All that the common law protects through its passing-
off action is the goodwill between a trader and his customers which the mark helps to sustain. His rights against imitators last only so long as he does not abandon business and he cannot by assignment give another trader the power to use for passing-off unless he assigns his business at the same time. Moreover, this principle restricts the tort to injury in the course of trade. One person cannot object if the name by which his house is known is used on the house next door..... The following account analyses the three principal components of a passing-off action of the "classic type". (i) the plaintiffs own reputation; (ii) the defendant's representation; and (iii) likelihood of damage to the plaintiff. At the same time it notes the particular points at which the characteristics of this standard form are broadened by analogy so as to admit a claim which is in some respect a departure from normal......."
It is well settled that an action for passing off is a common law remedy being in substance, an action for deceit. It has been held by the Hon'ble Supreme Court 57 in the case of KAVIRAJ PANDIT DURGA DUTT SHARMA VS NAVARATNA PHARMACEUTICALS LABORATORIES reported in AIR 1965 SC 980 as under:
"28. The other ground of objection that the findings are inconsistent really proceeds on an error in appreciating the basic differences between the causes of action and right to relief in suits for passing off and for infringement of a registered trade mark and in equating the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trade mark. We have already pointed out that the suit by the respondent complained both of an invasion of a statutory right under S.21 in respect of a registered trade mark and also of a passing off by the use of the same mark. The finding in favour of the appellant to which the learned Counsel drew our attention was based upon dissimilarity of the packing in which the goods of the two parties were vended, the difference in the physical appearance of the two packets by reason of the variation in their colour and other features and their general get-up together with the circumstance that the name and address of the manufactory of the appellant was prominently displayed on his packets and these features were all set out for negativing the respondent's claim that the appellant had passed off his goods as those of the respondent. These matters which are of the essence of the cause of action for relief on the ground of passing off play but a limited role in an action for infringement of a registered trade mark by the registered proprietor who has a statutory right to that mark and who has a statutory remedy in the event of the use by another of that mark or a colourable imitation thereof.58
While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of "the exclusive right to the use of the trade mark in relation to those goods" (Vide S. 21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendants mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can 59 show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
"29. When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be "in the course of trade", the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide S. 21). A point has sometimes been raised as to whether the words "or cause confusion" introduce any element which is not already covered by the words "likely to deceive" and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words "likely to deceive". But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks- the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff's mark. The purpose of the comparison is for determining whether 60 the essential features of the plaintiff's trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.
42. The Hon'ble Supreme Court in the case of CADILA HEALTH CARE LIMITED VS CADILA PHARMACEUTICALS LTD., reported in (2001)5 SCC 73 has laid down broad principles on which an action for passing- off can be brought about and it has stated the following factors are required to be considered namely;
"35. 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 are 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.61
(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.
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
43. The factors which requires to be considered while considering prayer for grant of an injunction in passing off action are the overall get up of the label of the two products by putting oneself into the shoes of the customer and examining it from his point of view as he is likely to be deceived and whether he would be mislead or in a given situation like the one present on hand namely, a customer who by looking at the label of the defendant would get carried away or would be deceited as being the label of the plaintiff or the product manufactured by the plaintiff and get carried away and as such would buy the product of the defendant instead of buying the product of the plaintiff. If 62 the answer is in the affirmative injunction follows and if the answer is in the negative injunction has to be refused.
44. In the instant case the product being sold by both the plaintiff and defendant is beer. Plaintiff is selling its product under the trade name of "Kalyani Black Label" and defendant is selling its product under the name of "Hercules Black Label". The words "Black Label" is common to both plaintiff and defendant. These words are generic in nature and it is used across the world by various manufacturers of liquor and neither of the parties can claim any exclusive right to use of these words. The very label produced by the plaintiff along with Exhibit P-1 would indicate that the product is for sale in the State of West Bengal Only. Even Exhibit P-15 confronted to PW-1 in the cross examination would also indicate that said product is restricted for sale in State of West Bengal only. The disclaimer made by the Trade Marks authority for the words "Label" and "Masterbrew" would clearly indicate that plaintiff cannot have any right over these words i.e., "Black Label" and as such plaintiff cannot seek an action for passing off by the defendants for sale of its product by use of the words 63 "Hercules Black Label". As already observed herein above the words "Black Label" is used by manufacturers of liquor all over the world and therefore in a given case if it becomes apparent, that plaintiff's own conduct is tainted and plaintiff itself is prima facie an imitator of another person's design or words, then courts would be loath in granting an equitable relief. The factors which can be taken note of in an action for passing off, burden lies heavily on the plaintiff and he has to establish;
(i) Similarity of the marks.
(ii) Similarity of the goods.
(iii) The relationship between the parties channels of
trade.
(iv) Relationship between the parties advertising.
(v) Class of consumers.
(vi) Evidence of confusion and defendant's intention to
deceive.
45. In the instant case defendant has been able to demonstrate that from the year 1982 it has been using the words "Khoday's Black Label" and thereafter "Hercules Black Label" and plaintiff also being aware of said fact. It is also 64 on record that plaintiff having initiated action against defendant failed in its attempt to obtain an order of injunction and suit filed by it ultimately has been dismissed. Infact PW-1 in his cross examination dated 20.08.2004 has admitted to the following effect:
"It is true to suggest that many companies are using the word "Black Label" with some prefix or suffix. It is true to suggest that Johny Walker Black Label is in the market for more than 60 years. Similarly Carline is using the word "Black Label" with their name for number of years".
Further in the cross examination dated 25.10.2004 PW-2 has admitted to the following effect:
"It is true to suggest that Kalyani black label is composite word. It is true that registration accorded by Registrar of trade mark is for the whole of the trade mark and not for particular feature. It is false to suggest that our company does not have exclusive right over any particular feature such as black label.
At this stage learned counsel for defendant confronts the witness with label of plaintiff company same is already marked as EX.P-2. and defendant's label is also shown to P.W-1 the said mark confronted to the witness is marked as Ex.D-2. It is true to suggest that in Ex.D-2 word 'Hercules' is written in silver capital letters within red border. Same is bordered by red 65 colour rectangle. Like wise there is also gold coloured border written in artistic style. It is true that word 'black label' is written in distinct style in capital letter in golden colour. It is true that word 'super strong' has been written in golden colour in capital letters in a peculiar style. It is true that name of the defendant company is also there in Ex.D-2. It is true to suggest that letters in Ex.D-2 are written in distinct and peculiar style as compared with plaintiff's label witness further volunteers that background colour in both the labels i.e. Ex.D.2 and plaintiff's label is black. further the word 'beer' in Ex.D.2 and plaintiff's label is written in red letters though both are written in distinct styles. It is true to suggest that plaintiff's company's word beer is prefixed by letters namely Master brew pilsner larger beer.
In the cross examination dated 16.11.2004 PW-1 has admitted that plaintiff does not have any registration or order for black label. His admission is to the following effect:
It is false to suggest that plaintiff's product Kalyani black label was not available in the market to the consumer across the counter till 1987 witness denies the suggestion. I have not produced any document to show that prior to 1987. Plaintiff's product namely Kalyani Black Label was available across the counter. At this stage witness's attention is drawn to para 24 of his affidavit evidence and is questioned that have you got any registration only for "BLACK-LABEL" witness answers that he does not have any registration or order for "BLACK-LABEL".
(Emphasis supplied by me) 66 Even PW-2 the area Sales Manager has admitted in his cross examination dated 08.02.2005 that he is not aware as to whether his company has got registration as black label only. He has also admitted that word "black Label" is descriptive word denoting colour of label. He also admits that he has not seen the registration certificate. He also admits that Johny Walker black label is marketed in India since 1961 and has refused to answer the question that plaintiff company has taken clue from the said product to add suffix `Black Label' to word `Kalyani'. Though he has stated that some of the consumers of the plaintiff gave complaint about confusion created to them regarding product of plaintiff company and also the product of defendant company same was not produced and obviously, since said complaint was said to be oral. Such persons who have given complaints are not examined before the court. He also admits that words "Kalyani" and "Hercules" found in Exhibit P-1 and D-1 have been written in different manner and it is in totally different style. The distinctive marks between P-1 and D-2 are admitted. In the cross examination dated 08.02.2005 P.W.2 has admitted to the following effect: 67
It is true to suggest that with Ex.P.1, a label which was got registered was as per annexure 2 of Ex.P.1. It is true to suggest that as per Ex.P.9 a shape of the label was changed. It is true to suggest that in Ex.P.1 and in Ex.D.2 the words "Kalyani" and "Hercules" have been written in different manner so far presentation is concerned. It is false to suggest that even if illiterate persons sees the word Hercules and word Kalyani as depicted in annexure to Ex.P.1 and in Ex.D.2 there would be no confusion. It is true to suggest that in annexure to Ex.P.1 and in Ex.D.2 word black label is in totally different style. It is true to suggest that in annexure to Ex.P.1 words master brew and pilsner lager beer' appear where as in Ex.D.2 these words are not here. It is true to suggest that whatever is written in annexure to Ex.P.1 in white letters same is not there in Ex.D.2. It is true to suggest that Ex.D.2 a border in golden colour can be seen, but in annexure to Ex.P.1 there is no such border. It is true to suggest that as per Ex.P.9 our company is using new label but same does not mean that we have abandoned annexure to Ex.P.1.
(Emphasis supplied by me)
46. In view of this overwhelming evidence available on record contention of the plaintiff about defendant passing-off its product depicting it to be the product of plaintiff or plaintiff's customers being carried away by such deceit and are falling prey to the products manufactured by the defendant believing it to be product of the plaintiff is too far 68 fetched and cannot be accepted. Hence, the said issue also deserves to be answered against the plaintiff.
47. Learned counsel appearing for the plaintiff has also contended that with regard to acquiescence no issue was framed and as such the Judgment and decree passed by the Trial Court is liable to be set aside and matter is required to be remanded to the Trial court for fresh adjudication. In reply to this argument Sri.Srinivas, learned counsel appearing for defendant has contended that on account of non framing of an issue trial will not get vitiated if parties have tendered their evidence in support of their respective pleas raised and contends that in the instant case, defendant had raised a plea regarding acquiescence in paragraph 14 of the written statement and plaintiff being aware of this fact had tendered evidence and trial court has also examined the contentions of the parties and recorded its finding while answering issue No.5 and as such he contends plaintiff is estopped from raising such a plea in this appeal. Non framing of an issue when plea has been raised would no doubt vitiate the decision. However, it cannot be applied as a universal principle and as a straight jacket formula. It 69 would depend on facts of each case. In a given situation if the parties to the lis have raised their respective plea and have also tendered their evidence based upon which the court has examined said plea, and thereafter recorded its finding the parties would be estopped from contending that non framing of an issue has resulted in prejudice and consequentially the decision has been vitiated. The Hon'ble Supreme Court in identical circumstances in the case of NEDUNURI KAMESWARAMMA VS SAMPATI SUBBA RAO REPORTED IN AIR 1963 SC 884 has held as under:
"5. On the first point, we do not see how the suit could be ordered to be dismissed, for, on the facts of the case, a remit was clearly indicated. The appellant had already pleaded that this was Jeroyti Land, in which a patta in favour of her predecessors existed, and had based the suit on a kadapa, which showed a sub-tenancy. It was the respondent who had pleaded that this was a Dharmila Inam and not Jeroyti land, and that he was in possession of the Kudiwaram rights through his predecessors for over a hundred years, and had become an occupancy tenant. Though the appellant had not mentioned a Karnikam service inam, parties well understood that the two cases opposed to each other were of Dharmila Sarvadumbala inam as against a Karnikam service inam. The evidence which has been led in the case clearly showed that the respondent attempted to prove that this was Dharmila inam and to refute that this was a Karnikam service inam. No doubt, no issue was frame, and the one, which was 70 framed, could have been more elaborate; but since the parties went to trial fully knowing the rival case and led all the evidence not only in support of their contentions but in refutation of those of the other side, it cannot be said that the absence of an issue was fatal to the case, or that there was that mistrial which vitiates proceedings. We are, therefore, of opinion that the suit could not be dismissed on this narrow ground, and also that there in no need for a remit, as the evidence which has been led in the case is sufficient to reach the right conclusion. Neither party claimed before us that it had any further evidence to offer. We, therefore, proceed to consider the central point in the case, to which we have amply referred already.
(Emphasis supplied by me)
48. Keeping the principles enunciated in the above judgment when facts on hand are examined it would indicate that defendant in its written statement at paragraph 14 has raised the plea of acquiescence, estoppel and long delay as a ground to deny the prayer of the plaintiff. The witnesses examined on behalf of the plaintiff has been cross examined on this plea. DW-1 has reiterated the contentions raised in its written statement. Nothing worthwhile is elicited in the cross examination of DW-1. On the basis of said material evidence available on record trial court while answering issue No.5 has recorded its finding and as such the principles enunciated by their Lordships in Nedunari 71 Kameshwaramma's case referred to supra is squarely applicable to the facts on hand and as such contention raised by learned counsel for plaintiff in this regard is liable to be rejected as without being merit and accordingly it is rejected.
Re: Point No.(2):
49. In view of the discussion made herein above, following order is passed:
ORDER (1) Appeal is hereby dismissed.
(2) Judgment and decree passed in O.S.No.747/1993 dated 01.06.2007 by XXV Addl.City Civil Judge, Bangalore is hereby affirmed.
(3) Parties to bear their respective costs.
Sd/-
JUDGE *sp/SBN