Delhi High Court
Natures Essence Private Limited vs Protogreen Retail Solutions Private ... on 9 March, 2021
Author: C. Hari Shankar
Bench: C. Hari Shankar
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 24th February, 2021
Date of decision: 9th March, 2021
+ CS(COMM) 581/2020 & I.A. 12750/2020
NATURES ESSENCE PRIVATE LIMITED ..... Plaintiff
Through: Mr. C. M. Lall, Sr. Adv.
assisted by Ms. Nancy Roy, Ms. Palak
Arora, Mr. Sanjay Aggarwal, Ms. Vasvi Jain
and Ms. Radhika Arora, Advs.
versus
PROTOGREEN RETAIL SOLUTIONS PRIVATE
LIMITED & ORS. ..... Defendants
Through: Mr. Sumit R. Sharma, Mr.
Aakarshan Aditya, Mr. Gaurav Dhwaj,
Advs. for Defendant Nos.1 & 2
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
% JUDGMENT
1. This order disposes of I.A. 12750/2020 in CS(COMM)
581/2020, preferred under Order XXXIX Rules 1 and 2 of the Code of
Civil Procedure, 1908 (CPC).
Facts
2. The plaintiff alleges infringement, by the defendants, of the
plaintiff's registered trademarks "NATURE'S" "NATURE
ESSENCE" and "NATURE'S ESSENCE". The prayer, in the plaint,
is specifically for an injunction, against the defendants, from making
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or dealing in any goods (particularly cosmetics), using any mark/name
identical or deceptively similar to the aforesaid registered trademarks
of the plaintiff.
3. I may observe, even at this point, that in the list of registered
trademarks of the plaintiff, provided in para 7 of the plaint, there is no
registration of the word or mark "NATURE'S". The mark
"NATURE'S INC." and "NATURE'S ESSENCE" are, however,
registered in favour of the plaintiff, and the logos of the plaintiff,
relating to the said marks, appear thus:
4. The trademark of the defendants, with which the plaintiff is
essentially aggrieved, appears thus:
5. The case set up by the plaintiff in the plaint may be explained as
under:
(i) Since 1998, the plaintiff has been carrying out its
business under the aforesaid trademarks, in respect of goods and
services included in Classes 03, 05 and 35 of the Schedule to
the Trade Marks Rules, 2002. These trademarks stand renewed
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from time to time and are presently valid, subsisting and in
existence.
(ii) The trademarks being registered in the plaintiff's favour,
exclusive right to use the trademarks vests in the plaintiff. The
registrations also constitute prima facie evidence of the validity
of the marks, in view of Section 31 of the Trade Marks Act,
1999 (hereinafter referred to as "the Act"). By dint of long user,
valuable goodwill has been created in the aforesaid marks of the
plaintiff. The plaintiff's products have attained national
recognition, being widely advertised in the print as well as
online portals, and publicised through the websites of the
plaintiff. As a result, it is asserted that the aforesaid trademarks
have, by long, open, extensive, continuous and exclusive use,
coupled with large scale publicity, acquired secondary meaning
and distinctiveness, and have become identified and recognised
with the products of the plaintiff. The plaintiff has also provided
details of its turnover, from 2007-2008, till the date of filing of
the plaint. The turnover has increased from ₹ 12,94,349/- in
2007-08 to ₹ 122,97,32,824/- in 2019-2020.
(iii) As against this, it is alleged that the defendant adopted
the trademark "NATURE'S TATTVA", in respect of essential
oils and cosmetics, in respect of which the defendants have
applied for registration in Class 3. Defendant No. 1 has applied
for registration of the said trademark in respect of goods which
are manufactured by Defendant No. 3 and marketed by
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Defendant No. 2. The plaint alleges that the trademark
"NATURE'S TATTVA", of the defendants, is closely identical
and deceptively similar to the registered trademark
"NATURE'S ESSENCE" of the plaintiff, and is inevitably
likely to convey an impression, in the minds of the purchasing
public, that the products of the defendants emanate from the
plaintiff. This, it is alleged, would result in tarnishing of the
reputation and goodwill amassed by the plaintiff over the years.
Resultantly, it is alleged that the defendants have infringed the
registered trademark of the plaintiff, and are also passing off
their goods as those of the plaintiff.
(iv) The plaint also contains a tabular depiction, intended at
comparing the product of the plaintiff with that of the
defendants, thus:
Plaintiff's Trademark Defendant's Trademark
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6. Predicated on this submission, the plaintiff prays for
"i. an order of permanent injunction restraining the
Defendant(s), their principal officers, directors, partners,
agents, franchisees, servants, licensees and all others
acting for and on their behalf, from making, selling,
offering for sale, advertising and in any manner dealing
in "Cosmetics, (non-medicated-cosmetics),Herbal
Cosmetics, (non-herbal-cosmetics) Skin Care Cosmetic
Preparations, Hair Lotions, Perfumery, Essential Oil,
Soaps Included, Cosmetic Preparations Being Facial
Cream, Body Lotions, Cleansing Lotion, Face Wash
Soaps, Bleach Cream, Fairness Cream, Shampoo, Hair
Oil, Massage Cream, Color Cosmetics, Dentifrices,
Toiletries, Henna, Mehendi, Hair Dye" or any goods
using the trademark "NATURE'S TATTVA"
(word/device) or any other mark/name which is identical
or deceptively similar to the Plaintiff's registered
trademark "NATURE'S", "NATURE ESSENCE" and
"NATURE'S ESSENCE" (word/logo/label/device) and
from doing any other thing, whereby directly or
indirectly infringing the Plaintiff's registered trademarks,
"NATURE'S", "NATURE ESSENCE" and
"NATURE'S ESSENCE" (word/logo/label/device),
whereby directly or indirectly passing off its goods as
and for the goods of the Plaintiff inter alia by use of the
"NATURE'S", "NATURE ESSENCE" and
"NATURE'S ESSENCE"."
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ii. An order for rendition of accounts of profits
illegally earned by the Defendants by reason of
infringement and passing off their goods and/or business
as the goods and business of the Plaintiff and a decree be
passed against the Defendants in the sum of the amount
so ascertained
iii. An order for recovery of damages for breach of
arrangement/settlement made through one settlement,
more elaborated in the plaint, mutual understanding and
by the acts of the parties along with all future interests
and consequential relieves."
Case of the defendant
7. The defendants have filed a written statement, in response to the
plaint, in which the defendants assert that their trademark is
completely distinctive and different from the plaintiff's trademarks,
with no phonetic or visual similarity between them, as is likely to
create confusion or deception in a customer of average intelligence
and imperfect recollection. A Google search of the expression
"NATURE'S ESSENCE", it is pointed out, does not throw up any site
reflecting the defendants' products. The defendants points out that
their products are DIY (Do It Yourself) cosmetics, in which the
product to be applied has to be prepared by the customer using the
ingredients provided by the defendants. Though the products of the
plaintiff and defendants are acknoweldged as belonging to the same
Class in the Schedule to the Trademarks Rules, it is submitted by the
defendants that they are different and dissimilar in nature and cater to
distinct categories of consumers, between which there is no overlap.
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Being in the nature of DIY products, which have to be prepared by the
customers, the defendants state that the shelf life of their products is
also considerably lesser than that of the plaintiff's products, especially
after the products are prepared by the customer(s). The defendant has
provided screenshots to highlight the difference in the categories of
products manufactured by them vis-a-vis those manufactured by the
plaintiff.
8. Additionally, the defendants submit that there is no likelihood
of any confusion or deception between the defendants' products and
those of the plaintiff, as their packaging and presentation are totally
dissimilar.
9. Mr. Sumit R. Sharma, learned counsel for the defendants,
submitted that, of all the products of the defendants, the only products
which were also being made by the plaintiff were Hand Sanitizer and
Active Charcoal Face Pack. A tabular comparison of the said products
has been provided, thus, to indicate that, as presented to the customer,
they are entirely different and dissimilar in appearance:
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10. The written statement further asserts that the defendant has been
continuously and uninterruptedly using its "NATURE'S TATTVA"
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mark since 2015. Annual sales figures of the defendant business have
also been provided. It is asserted that the defendants' products
constitute the only DIY cosmetic segment in India and have, over the
years, gained immense popularity, goodwill and reputation amongst
their customers. The defendants have referred to encomiums paid to
their products in articles in the print media as well as on YouTube.
11. The plaintiff cannot, assert the defendants, claim any exclusive
proprietary rights over the word "NATURE", whether in the form of a
word mark or a trademark, as the word is purely generic and
descriptive, with no secondary meaning. Used in the context of beauty
and cosmetics products, it is asserted that the expression "NATURE"
is publici juris, as is apparent from a search of the database of the
Registrar of Trademarks, which reveals more than 1100 trademarks in
Class 03 which commence with the word "NATURE". In the context
of cosmetics and beauty products, it is submitted by the defendants
that the word "NATURE" describes the character and quality of the
goods, indicating that they are prepared out of natural/organic
substances, providing natural glow to skin.
12. The defendants placed reliance on Section 17(2) of the Act
which reads thus:
"17. Effect of registration of parts of a mark. -
*****
(2) Notwithstanding anything contained in sub-
section (1), when a trade mark--
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(a) contains any part--
(i) which is not the subject of a
separate application by the proprietor for
registration as a trade mark; or
(ii) which is not separately registered
by the proprietor as a trade mark; or
(b) contains any matter which is common to
the 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 of the whole of the trade mark so
registered."
13. In view of Section 17 of the Act, it is submitted by the
defendant that the plaintiff cannot claim any proprietary rights in the
word "NATURE" or "NATURE'S" as the right of the plaintiff, if any,
can only be for the entire trademark "NATURE'S ESSENCE".
14. The written statement also avers that, prior to the "NATURE'S
TATTVA" mark, the defendants were successfully marketing their
goods on the "EcoTokri" website, which is stated to be India's first
online marketplace for eco-friendly food, cosmetics and stationery
products. The "EcoTokri" brand of the defendants is also stated to be
extensively covered and reviewed in the print media.
15. It is stated, in the written statement, that the defendants' sales
are exclusively online, and that, therefore, given the dissimilarity
between the overall product appearances of the defendant and the
plaintiff, there is no likelihood of confusion or deception. On the other
hand, the defendant submits that the plaintiff's claims to being a well-
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established or well-known brand are merely empty statements, with no
supportive evidence. It is also pointed out, in the written statement,
that the Registry of Trademarks has, in respect of some applications
for registration filed by the plaintiff, specifically clarified that
registration of the mark would not confer a right on the plaintiff to
exclusive use in respect of the descriptive words contained in the
mark. All assertions, in the plaint, regarding the purported goodwill
accumulated by the plaintiff and its products over time, have been
flatly denied in the written statement. It is also denied that the words
"NATURE'S ESSENCE", have, by use thereof, by the plaintiff,
acquired any secondary meaning, identifying them as relating to the
plaintiff's products.
16. The written statement reiterates the contention that there is no
visual or phonetic similarity between the marks of the plaintiff and the
defendants or any likelihood of confusion or deception amongst
prospective customers, seeking to purchase their products. It is pointed
out that the defendants' mark "NATURE'S TATTVA" is a coined and
unique mark, combining an English word "Nature" with the Sanskrit
word "Tattva", meaning "elements". The defendant has asserted the
popularity of its products among its target customer segment.
17. In sum, the defendant has questioned the entitlement, of the
plaintiff to any of the reliefs sought by it and has, therefore, prayed
that the plaint be dismissed.
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Replication filed by the plaintiff
18. The plaintiff has filed a replication, in response to the written
statement of the defendants. In the replication, the plaintiff has
contended that, in law, priority in adoption and use is pre-eminent in
trademark jurisprudence, and takes precedence even over registration.
In other words, submits the plaintiff, the rights of the prior user of an
unregistered trademark are superior to the rights of a subsequent user
of the same trademark, even if registered in favour of the subsequent
user. The claim, of the defendants, of use of its trademark since 2015,
has been categorically denied by the plaintiff in its replication. It is
submitted that Defendant No. 2 was incorporated only in 2018, so that
there could be no question of use of the impugned marks of the
defendants from 2015. The sales figures of the defendants, as provided
in the written statement, too, it is pointed out, are with respect to the
Defendants' "business", with no sub-division of the figures relating to
Defendant No. 1 and Defendant No. 2, or any indication that these
figures relate to the mark in controversy in the present case. The
plaintiff has relied on the following documentary material, to bear out
its allegation that the claim of user, by the defendants, from 2015, is
unacceptable:
(i) A news report from "Yourstory.com", contained in the
list of documents filed by the defendants, specifically reflects
the following statement:
"Founded in October 2018 (emphasis supplied), beauty
startup Nature's Tattva will use the news funds to scale
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operations, acquire talent and for branding building
activities......."
On the basis of this Report, it is alleged that sales of products
under the mark "NATURE'S TATTVA", prior to October
2018, could only have been effected by Defendant No. 2 and
that the claim of sale of products by Defendant No. 1 from 2015
was completely frivolous and untrue.
(ii) Eighteen of the invoices/tax invoices of Defendant No.1,
filed by the defendants, did not bear the mark "NATURE'S
TATTVA", and pertained to sales by Ecotokri.com, with no
brand mentioned on the invoices. The remaining ten invoices, in
the name of Defendant No. 1, bearing the words "NATURE'S
TATTVA", related to the year 2019-2020. There was not a
single invoice, submits the plaintiff, filed by the defendants,
reflecting sale of products under the brand "NATURE'S
TATTVA", prior to 2018.
(iii) The three invoices filed by the defendants, bearing the
words, "NATURE'S TATTVA", were unsigned invoices
generated from a computer system. The words, "NATURE'S
TATTVA", have apparently been added therein only to cause
deception. A perusal of these invoices reveal that they were
three copies of the same invoice, with the same invoice number
"[INV-2015-1689]", being the copies meant for the supplier, the
transporter and the recipient. There was no explanation as to
how the defendants were in possession of all three copies.
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(iv) The defendants have also placed on record an article from
the Economic Times dated 19th October 2014, reflecting
"EcoTokri" as a online store for organic and green products,
with no mention of the mark "NATURE'S TATTVA".
(v) The user documents filed by the defendants with the
application filed with the Registry of trademarks, for registering
the mark "NATURE'S TATTVA", contained invoices only
from 2018. The affidavit, filed by Defendant No. 1,
accompanying the application, too, asserted sale of products
under the "NATURE'S TATTVA" mark only from 2018-2019.
On the basis thereof, the plaintiff alleges that, while the plaintiff
was using its mark since 1998 interruptedly, Defendant Nos. 1
and 2 started using a deceptively similar mark only in 2018, so
as to encash on the goodwill and reputation of the plaintiff.
(vi) The website of the defendants contained a categorical
admission to the effect that "after running India's largest online
store for everything eco-friendly, organic and green,
successfully for five years, (they) ventured into (their) own
home-grown brand "NATURE'S TATTVA".
(vii) Though the defendants had placed, on record, an article
from the Femina magazine, the replication points out that, in the
said article, published on 17th July, 2020, the defendants are
referred to as a "start-up". Had they been using their mark since
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2015, it is submitted that, they could not have been treated as a
"start-up" in 2020.
(viii) The plaintiff has also contested the defendants' claim of
hundreds of registrations being present under the database of the
Registrar of trademarks in which the word, "NATURE" or
"NATURE'S" is used. No evidence, to the effect that this data
pertains to actual user of products bearing the said marks has, it
is pointed out, been placed on record by the defendants. Even
otherwise, the mere presence of third party products in the
market can be no defence to adoption, by the defendants of a
mark which is deceptively and confusingly similar to that of the
plaintiff.
19. The goodwill and reach of the plaintiff's products, it is
submitted, is apparent if a Google search of the words "NATURE'S
COSMETICS", were to be conducted, which leads directly to the
plaintiff's mark and the plaintiff's company, and not to the
defendants' mark or any other third party marks. It is submitted that
the mark is a slavish imitation of the mark .
20. Insofar as product comparison is concerned, the plaintiff
submits that the products of the defendants are same as to those of the
plaintiff, or, at any rate, allied or cognate in nature, with every
likelihood of deception amongst customers of the products. Even the
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packaging of the product, submits the plaintiff, is not entirely
dissimilar.
21. The contention, of the defendants that the plaintiff cannot claim
any exclusive monopoly over the word "NATURE" or "NATURE'S"
is contested on the ground that the word "NATURE'S" in the
plaintiff's mark "NATURE'S ESSENCE" has acquired a secondary
meaning and distinctiveness, owing to interrupted use since 1998.
Any goods or products, in the market, sold using brands containing the
word "NATURE'S" and "NATURE'S ESSENCE", asserts the
plaintiff, are necessarily associated with the plaintiff alone and not
with anyone else. In view thereof, the plaintiff disputes the
defendants' contention that the word "NATURE" being publici juris,
the plaintiff has no exclusive right over the said expression can be
claimed by the plaintiff.
22. In fact, submits the plaintiff, the defendants have deceptively
coined their trademark "NATURE'S TATTVA", by borrowing the
word "NATURE'S", from the plaintiff's mark "NATURE'S
ESSENCE", and the word "TATTVA" from the plaintiff's mark,
"NATURE'S PANCHTATTVA", (which is still unregistered). The
invocation, by the defendants, of Sections 9 and 11 of the Act is,
therefore, alleged by the plaintiff, to be misguided. Having entered the
market barely two years ago, it is contended that the defendants are
seeking to encash on the reputation of the plaintiff developed over 22
years as on date.
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23. In view thereof, the plaintiff has reiterated its prayers in the
plaint.
Rival Submissions
Submissions of Mr. Chander Lall, learned Senior counsel for the
plaintiff
24. Arguing for the plaintiff, Mr. Lall submits that the "triple test",
applicable in infringement claims, stands satisfied in the present case,
as the impugned trademark of the defendants is deceptively similar to
that of the plaintiff, the products are identical, and they are available
through identical trade channels. He also submits that, having itself
applied for registration of the "Nature's Tattva", it was not open to the
defendant to urge that the word "Nature's" was descriptive in
character.
25. Adverting to the evidence produced by the defendants regarding
usage, Mr. Lall submits that, of the invoices produced by the
defendant, the only invoice, prior to 2018, which contained the words
"Nature's Tattva" was the invoice dated 3rd December, 2015, of which
the defendant had produced all copies, including the copies for the
buyer and the transporter. This, submits Mr. Lall, itself throws into
doubt the veracity of the invoice. Other pre-2018 invoices filed by the
defendants, he submits, do not make any reference to "Nature's
Tattva". Mr. Lall also draws attention to the fact that the seller, in the
Invoice dated 3rd December, 2015, is "Protogreen Retail Solutions Pvt
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Ltd (EcoTokri.com)", with the "EcoTokri" logo at the upper right
corner of the invoice. For ready reference, a copy of the invoice may
be provided thus:
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26. Mr. Lall has also referred to an item on the "YourStory"
website, titled "Beauty startup Nature's Tattva raises $ 150K from
singer Sukhbir Singh, others", and to the caption, below the
photograph of the defendant's product in the same item, reading
"Founded in October 2018, beauty start-up Nature's Tattva will use
the new funds to create operations, acquire talent, and for brand
building activities", and an article from "BW Businessworld", titled
"Green Products: How Can They Provide Competitive Advantage",
which contains the recital "Fab India, EcoTokri, Organics India,
Natural Mantra and many such organizations are riding the wave of
this movement in India, making the best of this opportunity", to
discredit the assertion, of the defendants, that they were marketing
their "Nature's Tattva" products since 2015. In the same context, he
refers to a statement of Mr. Karnesh, Director of EcoTokri, thus
reproduced in an article in The Economic Times titled "Green Diwali
options: Upcycled candle moulds, sandstone diyas":
"Karnesh, Director of EcoTokri, says his company has come
up with a wide range of eco-friendly products this Diwali that
have a local flavour to them. "We have incorporated Indian
elements into our products.""
Mr. Lall submits that, apart from belying the contention, of the
defendants, that they have been marketing their "Nature's Tattva"
brand since 2015, the above material also indicates that they have, in
fact, a major brand "EcoTokri", under which they had been marketing
their products and which, in fact, constitutes their main brand. As
such, he submits, no irreparable loss would ensue to the defendant,
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were injunction to be granted, as prayed by his client. He reiterates
that, in fact, EcoTokri was the defendant's flagship brand, and
"Nature's Tattva" was a mere disingenuous attempt to capitalise on
his client's goodwill.
27. Mr. Lall also refers, in the same context, to the application,
dated 26th April, 2018, filed by the defendant to register its
mark, and the affidavit, filed by the Director of the defendant, before
the Registry of Trade Marks, to the effect that the total sales of the
defendant, till 2018, was only ₹ 40 lakhs. This, he submits, was not
believable, if the defendant had, in fact, been in the market, with its
"Nature's Tattva" mark since 2015. Mr. Lall also points out, in this
context, that the registration of the word Mark "Nature's Essence", as
granted by the Registry of Trade Marks to his client on 12th March,
2020, did not make any reference to the existence of the Mark
"Nature's Tattva". There was, therefore, submits Mr. Lall, no
marketed "Nature's Tattva" product till 2018 and, during the period
2015 to 2018, the defendant was marketing its products only under the
brand "EcoTokri". In fact, points out Mr. Lall, the invoice dated 3rd
December, 2015, filed by the defendant, was never filed with the
Trade Marks Registry, at the time of applying for registration of the
"Nature's Tattva" mark, indicating that the invoice had been
manufactured only for contesting the present suit. Mr. Lall has also
referred, in this context, to the publicity literature of the defendant,
titled "About Us - Nature's Tattva", particularly to the following
recitals therein:
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"After running India's largest online store for everything Eco-
friendly, Organic and Green, successfully for 5 years, we
ventured into our own home-grown Brand - Nature's Tattva.
With Nature's Tattva, we want to solve 3 basic problems
with Beauty today:"
(Emphasis in original)
In this context, Mr. Lall has also pointed out that, on the defendant's
"Naturestattva.com" website, activity was apparent only w.e.f. March,
2018.
28. In view of the submissions of Mr. Lall, regarding the priority of
user as claimed by the defendant, and the veracity of the invoices filed
by the defendant with its written statement, the defendant chose to
place several additional documents on record, along with IA
2748/2021, under Order XI Rule 1(10) of the CPC, including invoices
and other documents which, according to learned Counsel for the
defendant Mr. Sumit Sharma, indicate priority of user of the "Nature's
Tattva" brand by the defendants. While I have issued notice on the
said application, learned Counsel for both sides were permitted to
address arguments on whether it would be proper for me to refer to
the said documents, while considering the plaintiffs application under
Order XXXIX Rules 1 and 2, CPC. Mr. Lall, needless to say,
emphatically contended in the negative, drawing attention, inter alia,
to the following recital, contained in the Statement of Truth, filed with
the Written Statement by the defendants:
"I say that all documents in my power, position, control or
custody, pertaining to the facts and circumstances of the
proceedings initiated against Defendants No 1 and 2 have
been disclosed and the copies of the same has been filed
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along with the written statement and that I do not have any
other document in my power, possession, control or custody
which to my knowledge are relevant to the present suit."
Having thus solemnly affirmed, in the Statement of Truth filed with
the Written Statement, that it had filed all documents which were
relevant and which were in its power, position, control or custody,
with the written statement, the defendant, on the plaintiff discrediting
the invoices filed by it with its written statement, chose to execute a
volte face and introduce over 100 pages of additional documents,
averring, in the application under Order XI Rule 1(10), as under:
"The Defendants however filed all documents which were
relevant for the matter and readily available within the power
and possession. More specifically the Defendants filed
invoices to establish and substantiate their continuous use of
the mark 'Natures Tattva' since the year 2015."
(Emphasis supplied)
By adding the words "and readily available" in its application,
therefore, submits Mr. Lall, the defendant was trying to wriggle out of
the solemn affirmation contained in its Statement of Truth filed with
the written statement. This, he submits, is not permissible at all. In
any event, he submits, these additional documents cannot, at any cost,
be taken into consideration by this Court, while adjudicating on the
plaintiff's application under Order XXXIX. While so protesting the
defendants' attempt to introduce these additional documents, Mr. Lall
submits that a glance at the documents reveal that almost all of them
are forged. He submits that, for the same product, invoices, on one
day and the next, reflected widely varying prices and even widely
varying GST rates. Moreover, he submits, all the invoices are
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recipients' copies, with no explanation as to how the plaintiff was in
possession thereof. Mr. Lall specifically relies on the guiding
philosophy behind the Commercial Courts Act, 2015, which abhors
such attempts at embellishing the record with additional documents,
from time to time.
Submissions of Mr Sumit R. Sharma, learned Counsel for the
defendants
29. Addressing, first, the objection, of Mr. Lall, to the additional
documents, filed by the defendants with IA 2748/2021 being taken
into account while adjudicating on the present application under Order
XXXIX of the CPC, Mr. Sharma draws attention to the fact that the
necessity of filing such additional documents arose because of the
emphatic discrediting, by the plaintiff, in its replication, of the
invoices filed by the defendants with the written statement as
"fabricated and concocted to mislead the Hon'ble Court". In such
circumstances, Mr. Sharma submits that he was well within his right
in placing additional documents on record, which this Court ought to
take into consideration while adjudicating on the plaintiffs
interlocutory injunction application. He relies, for the said purpose,
on the judgement of the Supreme Court in Sambhaji v. Gangabai1
and of a learned Single Judge of this Court in Mahesh Chaudhri v.
IMV India Pvt Ltd2.
1
(2008) 17 SCC 117
2
2019 SCC OnLine Del 9813
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30. Adverting, thereafter, to the plaint, Mr. Sharma draws my
attention to the prayer clause therein, which merely seeks to protect
the "NATURE'S", "NATURE ESSENCE" and "NATURE'S
ESSENCE" marks, with no reference to "Panchtattva". The pleas
regarding goodwill, in the plaint, are also confined to the "Nature's
Essence" mark of the plaintiff. Sales figures, in the plaint, are also
with respect to the said mark. Moreover, though the plaintiff pleads
user, of the Panchtattva Mark, since 12th November, 2009, sales
figures are provided only from 2014. Invoices, too, reflecting the
"Nature's Essence" products, are also w.e.f. 2014.
31. Apropos the application filed by his clients before the Trade
Marks Registry for registration of the "Natures Tattva" mark, Mr.
Sharma refers to the "Statement as to Use of Mark", as submitted by
his client, in which it was clearly stated "The mark is used by the
applicant or its predecessor in title since 10/05/2015 in respect of the
goods and services mentioned in the application". Insofar as the
invoices, filed by the defendants with the written statement, were
concerned, Mr. Sharma points out that no credible challenge had been
raised, by the plaintiffs, regarding the invoice dated 3rd December,
2015 which, at any rate, referred to "Nature's Tattva Pure Natural
Beeswax Shreddings" and which, according to him, was sufficient to
evidence the usage, by the defendants, of their "Natures Tattva" Mark,
commercially, at least since December 2015. Mr. Sharma also
referred to invoices issued by Amazon.in on their website, for the
defendant's "Nature's Tattva" product, reflecting the "date first
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available" as 30th March, 2016 and 19th April, 2016, as reflected from
the following screenshots:
Mr. Sharma also relied on the registration details of the domain name
naturestattva.com, as available on the Internet, which indicated that
the domain name was registered on 22nd February, 2017. As against
this, he points out that, even as per the case of the plaintiff, it is using
its "Nature's Essence" mark only since 2018.
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32. Even on merits, submits Mr. Sharma, the marks of the plaintiff
and the defendants are totally dissimilar, with no scope of deception
or confusion. The product range of the plaintiffs and defendants, too,
he would submit, are different. The only two products which are
common are the hand sanitiser and charcoal facemask, which are
easily distinguishable from each other. He has also invited my
attention, in this context, to the websites of the plaintiff and the
defendants, which set out their products thus, and which underscore
the difference in the product range:
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The defendant's products, submits Mr. Sharma, are DIY (Do It
Yourself) products, unlike the plaintiffs, which are ready to use. As
such, the shelf life of the defendant's products is also less than that of
the plaintiffs. Moreover, submits Mr. Sharma, the customers of the
plaintiff and the defendants are niche clientele, who would be aware
of the difference between DIY kits and ready to use products.
33. Mr. Sharma has further submitted that there can be no
monopolistic right over the use of the word "Nature's", as it is
descriptive and is, therefore, publici juris. Over 100 marks, he
submits, are registered in the Trade Marks Registry, starting with the
word "Nature's", with a list of actual products having been filed with
the written statement.
34. Finally, Mr. Sharma has sought to highlight the reputation and
length of usage of the defendant's trademarks. He submits that, at the
stage of argument of the interim injunction application of the plaintiff,
under Order XXXIX of the CPC, the evidence of usage, since 2015,
as produced by the plaintiff, could not be disputed, for which purpose
he places reliance on the judgements of Division Benches of this
Court in Marico Ltd v. Agro Tech Foods Ltd3 and Rhizome
Distilleries P. Ltd v. Pernod Ricard S.A. France4. He submits that
the defendants have, in the written statement, submitted their sales
figures from the year 2014-2015 onwards. He has also referred me to
various paras of the written statement, in which the defendants have
3
174 (2010) DLT 279 (DB)
4
166 (2010) DLT 12
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sought to highlight their goodwill and reputation in the DIY cosmetics
segment.
Mr. Lall's submissions in rejoinder
35. Responding to the submissions of Mr. Sharma, Mr. Lall, in
rejoinder, once again invited attention to the website article, titled
"Beauty start-up Natures Tattva raises $ 150 K from singer Sukhbir
Singh, others", with the note, below the photograph on the said page,
"Founded in October 2018, beauty start-up Natures Tattva will use
the new funds to scale operations, acquire talent, and for brand
building activities". Similarly, on the very next page in the said
article, Mr. Lall invites attention to the recital that, "in the first full
year of operations, the start-up has clocked sales of ₹ 1.6 crore and is
looking to grow at 20% month on month in the second year of
operations". Mr. Lall further points out that there is contradiction
between the sales figures, as provided in the affidavit filed with the
application for registering the trademark, in which the sales figures
have been shown as ₹ 40 lakhs whereas, in the written statement, it is
averred that, during the year 2017-2018, the defendants had sales of ₹
59 lakhs. He submits that, prior to 2018 , the DIY kits of the
defendant were obviously being sold under the brand "EcoTokri". He
has invited attention, in this context, to the following recital, in the
written statement of the defendants:
"Even prior to 'Nature's Tattva', the Defendants have
successfully established, built and run its brand 'EcoTokri'
which was India's first online marketplace for green, eco-
friendly and natural products in organic food, natural
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cosmetics, solar products and eco-friendly stationery
segments. The Defendant's brand 'EcoTokri' owing to its
high-quality products, has achieved similar success and
created incomparable goodwill and reputation for itself which
is clear from the fact that it has been extensively covered and
reviewed by the Economic Times."
As such, submits Mr. Lall, the sales figures provided in the written
statement filed by the defendants, stated to be of their "business",
were apparently under the brand 'EcoTokri'.
36. With respect to the additional documents, filed by the
defendants under cover of IA 2748/2021, Mr. Lall submits that, apart
from the fact that the said documents cannot be taken into account, the
invoices filed therein are all photo copies, and bear the "EcoTokri"
logo at the head. He has also sought to point out other infirmities in
the said documents. However, as I am not inclined to take the said
documents into account, in order to decide the present application
under Order XXXIX, it is not necessary to refer to the other
submissions of Mr. Lall, questioning the documents.
37. Mr. Lall further submitted that the defendant had applied for
registration, with the Trade Mark Registry, of its mark, only on
26th April, 2018, even though it was claiming user since 2015. This,
he submits, further discredits the defendants claim of prior user, vis-à-
vis the plaintiff.
38. Insofar as the aspect of deceptive similarity was concerned, Mr.
Lall relies on Section 29(2) of the Trade Marks Act, which reads thus:
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"(2) A registered trademark is infringed by a person who,
not being a registered proprietor or a person using by way of
permitted use, uses in the course of trade, a mark which
because of -
(a) its identity with the registered trade mark and
the similarity of the goods or services covered by such
registered trade mark; or
(b) its similarity to the registered trade mark and
the identity of similarity of the goods or services
covered by such registered trade mark; or
(c) its identity which the registered trade mark and
the identity of the goods or services covered by such
registered trade mark,
is likely to cause confusion on the part of the public, all of
which is likely to have an association with the registered trade
mark."
Mr. Lall submits that the present case falls within clause (b) of
Section 29(2), as the defendants' mark is being used on the same, or
similar, goods. In such circumstances, Mr. Lall submits that the
burden would be on the defendants to show that the marks of the
plaintiff and the defendant are so dissimilar that there is no likelihood
of confusion or deception. Mr. Lall also relies on Section 29(4),
which includes, within the ambit of "infringement", usage by a person
who is not its registered proprietor, of a mark which is identical with,
or similar to, the registered trade mark, and is used in relation to
goods or services which are not similar to those for which the trade
mark is a registered, provided the registered trade mark has a
reputation in India, and the use, by the defendant, without due cause,
takes unfair advantage of, or is detrimental to, the distinctive character
or repute of the registered trade mark. As such, submits Mr. Lall,
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even in the case of dissimilar goods, infringement can take place. The
test, in such cases, he submits, is only whether an unwary customer
would wonder at the association between the item before him, and that
manufactured by the proprietor of the registered trade mark.
39. Mr. Lall further asserts that the defence, regarding "Nature's"
being a descriptive word, and commonly used, is not available to the
defendants, in view of the assertion, in the written statement, that "the
defendants mark 'Nature's Tattva' is a coined and unique mark
combining the word Nature with a Sanskrit word 'Tattva' which
means 'Elements', thus showing its honest and bona fide adoption.
To support his submission that the defendant cannot plead that the
plaintiff's mark is not unique, Mr. Lall relies on Procter & Gamble
Manufacturing Co. Ltd v. Anchor Health & Beauty Care Pvt Ltd5 ,
for the proposition that the defendants cannot be permitted to
approbate and reprobate, and are estopped from pleading lack of
distinctiveness, in view of the averments contained in the written
statement. Mr. Lall further places reliance, on the aspect of deceptive
similarity, on the judgements of the Supreme Court in Kaviraj Pt.
Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories6, of a
learned Single Judge of this Court in Baker Hughes Ltd v. Hiroo
Khushlani7 and the judgement of the Supreme Court, on appeal
therefrom, as reported in Baker Hughes Ltd v. Hiroo Khushlani8.
5
211 (2014) DLT 466
6
AIR 1965 SC 980
7
(1998) 74 DLT 715
8
(2004) 12 SCC 628
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The prima facie case, submits Mr. Lall, is always in favour of the
registered proprietor of the trademark.
Analysis
40. An interlocutory injunction can be granted, by a Court, only if
three factors coalesce; a prima facie case in favour of the applicant
seeking injunction, the balance of convenience being in favour of
grant of injunction, as opposed to the refusal thereof and the
likelihood of irreparable loss or prejudice being suffered by the
applicant, were injunction not to be granted. The existence of one, or
more, of these three factors, would by itself be insufficient to justify
grant of injunction; all three must coalesce. Howsoever cast iron the
case for the plaintiff may appear to be, a court would not grant an
injunction unless it is manifest that such grant is necessary to avoid
irreparable loss or prejudice to the plaintiff, and the balance of
convenience warrants grant of injunction. To these, the Supreme
Court has, in Mahadeo Savlaram Shelke v. Pune Municipal
Corporation 9, added the consideration of public interest; however, in
private intellectual property disputes, this factor may not be of much
significance.
41. A manifestation of the "irreparable loss" and "balance of
convenience" concepts - which, by their very nature, overlap to some
extent - in the context of intellectual property injunctions, is the
consideration of the longevity of usage, by the defendant, of the
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allegedly infringing trademark or other intellectual property.10 The
right to carry on legitimate and lawful trade and business is a
fundamental right under the Constitution, and, while interdicting, by
grant of injunctive relief, the business of the defendant, the Court has
to be acutely conscious of the time from which the defendant has been
carrying on such business. Evaluation of the competing
considerations of the alleged infringement of the plaintiff's
intellectual right, and the prejudice that would result to the defendant
if its business is brought to a halt at an interlocutory stage of the
proceedings, is an exercise in tightrope walking, and it is for the Court
to undertake the exercise with the requisite skill and experience. A
mere prima facie view that the trademark used by the defendant
appears to be infringing in nature, is not sufficient, by itself, to grant
an injunction as sought, though it is an overwhelming consideration.
The Court, while granting injunction, has to bear in mind the serious
prejudice that may result to the defendant's business, as well as all
others who may be dependent on that business , such as its employees,
if the business is brought to a halt. That the defendant may continue
to carry on his business under a non-infringing trade mark, is not a
complete answer. Oftentimes, considerable goodwill may have been
generated, over the course of time, even by the usage of an infringing
trade mark. It is for this reason that the Court also examines the
promptitude with which the plaintiff has approached the Court. If the
allegedly infringing trademark has been in use for a number of years,
9
(1995) 3 SCC 33
10
Wander Ltd. v. Antox India P. Ltd. (1990) Supp SCC 727; Mahendra & Mahendra Paper Mills Ltd.
v. Mahindra & Mahindra Ltd. (2002) 2 SCC 147; Goenka Institute of Education & Research v. Anjani
Kumar Goenka, 2009 SCC OnLine Del 1691
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for example, the Court would be more circumspect in granting
interlocutory injunction against the defendant. At such times, the
Court may balance the equities by requiring the defendant to furnish
accounts of the earnings made by using the allegedly infringing trade
mark so that the plaintiff could, if it succeeds in the suit, be
monetarily recompensed. Whether such monetary recompense would
be sufficient to offset the prejudice caused to the plaintiff as a result of
continuous usage of infringing trademark is, however, also a
competing consideration, given the fact that intellectual property is a
sanctified Constitutional asset of the citizen, and infringement thereof
ordinarily is not to be tolerated. At the end of the day, the Court has
to make a conscious and judicious determination to examine exactly
which pan of the equitable scale is heavier, and decide accordingly.
By its very nature, this exercise cannot be circumscribed by any strict
or definitive guidelines.
42. The onus, to prove the existence of a prima facie case, balance
of convenience, and irreparable loss, as would justify grant of
injunction, is always on the plaintiff, and never shifts even if, on the
aspect of consideration of the material on record, the onus may shift
this way or that.
43. One more consideration that the Court is required to bear in
mind, while dealing with applications for interlocutory injunction
against usage of infringing intellectual property, is the somewhat sui
generis nature of such proceedings. More often than not, intellectual
property infringement litigation survives, or perishes, depending on
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the grant, or refusal, of interlocutory injunction. If interlocutory
injunction is granted, the defendant's business, at least under the
allegedly infringing trademark or other intellectual property, is
brought to a halt. If, on the other hand, interlocutory injunction is
refused, the allegedly infringing trademark or other intellectual
property, to use a cliché, "floods the market", resulting in the grant of
any injunction, at a later point of time, becoming largely an exercise
in futility, and the litigation getting reduced to a claim for damages.
Applications for interlocutory injunction in intellectual property
disputes have, therefore, to be treated with, and accorded, greater
respect; the consequence of grant, or refusal, of injunction being, in
almost all cases, irreversible at any later point of time.
44. The injunction Court is required to be suitably sensitised of
these aspects, before embarking on the exercise of examination of the
merits of the plea for injunction.
45. In the present case, there are, quite obviously, only two issues
which arise for consideration. The first is whether the defendants
have, prima facie, infringed the plaintiff's trademark, or not. The
second is whether, if they have, grant of injunction, against their
continuing to infringe the plaintiff's trademark, would be justified.
46. Is there a prima facie case of infringement?
46.1. Two factors are required to be borne in mind, at the very outset.
First, that the prayer in the plaint is restricted to the marks
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"NATURE", "NATURE ESSENCE" and "NATURE'S ESSENCE".
There is no prayer relating to any mark of the plaintiff which uses, as
a whole or part thereof, the word "Tattva". Though the plaintiff avers
that it had started using the "Nature's Panchtattva" mark in 2018,
there is no relief sought, with respect to the said mark. The allegation
of infringement is, therefore, required to be examined, in respect of
the defendants trademarks, vis-à-vis the marks "NATURE",
"NATURE ESSENCE" and "NATURE'S ESSENCE", of the
plaintiff. The second aspect, to be borne in mind, is that there is no
prayer, in the plaint, against alleged passing off, by the defendant, of
its products, as those of the plaintiff. The prayer relates only to
infringement. Mr. Lall, with the candour expected of Senior Counsel,
acknowledged that this appears to have been a lapse. Be that as it
may, I do not propose, in this order, to examine whether the
defendants are, or are not, passing off their products as those of the
plaintiff, in the absence of any prayer predicated on such a plea.
46.2 In order to establish a case of infringement, the plaintiff has to
make out a clear case of deceptive and confusing similarity, between
the marks of the defendant, and its own registered trade marks, as
there can be no infringement with respect to an unregistered
trademark11.
11
Ref. Section 27(1) of the Trade Marks Act, 1999 which prohibits any person from instituting "any
proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark."
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46.3 The plaintiff has placed, on record, certificates of registration,
issued by the Trade Marks Registry, with respect to its various marks.
They pertained to the word Mark "NATURE ESSENCE" and
"NATURE'S ESSENCE", and the trademarks , ,
and . Though applications, for registration of other
marks, have also been placed on record, it does not appear that any
other trademark has been registered in favour of the plaintiff. I am
required, therefore, to examine the allegation of infringement, with
respect to the aforesaid trademarks, vis-à-vis the mark of the
defendants which is .
46.4 On the aspect of deceptive similarity, this Court has, in its
recent decision in FDC Ltd v. Faraway Foods Pvt Ltd12 , culled out
the following principles from, inter alia, the judgements in Satyam
Infoway (P) Ltd v. Siffynet Solutions (P) Ltd13, Cadila Health Care
Ltd v. Cadila Pharmaceuticals Ltd14, Kaviraj Pt. Durga Dutt
Sharma6, National Sewing Thread Co. Ltd v. James Chadwick &
Bros Ltd15, Corn Products Refining Co. v Shangrila Food Products
Ltd16, Amritdhara Pharmacy v. Satya Deo Gupta17, K. R. Krishna
Chettiar v. Shri Ambal & Co.18, F. Hoffman-La Roche & Co. Ltd v.
Geoffrey Manners & Co. Pvt Ltd19, Mahendra & Mahendra Paper
12
MANU/DE/0230/2021
13
(2004) 6 SCC 145
14
(2001) 5 SCC 73
15
AIR 1953 SC 357
16
AIR 1960 SC 142
17
AIR 1963 SC 449
18
(1969) 2 SCC 131
19
(1969) 2 SCC 716
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Mills Ltd v. Mahindra & Mahindra Ltd20, Laxmikant V. Patel v.
Chetanbhai Shah21, Khoday Distilleries Ltd v. Scotch Whisky
Association22, Nandhini Deluxe v. Karnataka Co-operative Milk
Producers Federation Ltd23 and Wockhardt Ltd v. Torrent
Pharmaceuticals Ltd24:
(a) In assessing deceptive similarity, the class of the
customer would purchase the product is relevant. The
look/appearance, and the sound, of the trade marks, as well as
the nature of the goods, are all relevant considerations.
Surrounding circumstances are also relevant.
(b) The onus of proof is on the plaintiff who alleges passing
off. As against this, in an opposition to the registration of a
trade mark, the onus to prove deceptive similarity is on the
defendant who seeks non-registration, or removal of the trade
mark from the register.
(c) "Confusion" refers to the state of mind of the customer
who, on seeing the mark, thinks that it differs from the mark on
the goods which he has previously bought, but is doubtful
whether that impression is not due to imperfect recollection.
The question is one of first impression.
20
(2002) 2 SCC 147
21
(2002) 3 SCC 65
22
(2008) 10 SCC 723
23
(2018) 9 SCC 183
24
(2018) 18 SCC 346
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(d) This is especially true in the matter of phonetic
similarity. A meticulous comparison of the words, syllable by
syllable, is to be avoided. The possibility of careless
pronunciation and speech, both on the part of the buyer walking
into the shop, as well as the shop assistant, is also required to be
factored into consideration.
(e) The matter has to be examined from the point of view of
a person of average intelligence and imperfect recollection. It
has to be seen as to how such a purchaser would react to the
trade mark, the association which he would form and how he
would connect the trade marks with the goods he would be
purchasing.
(f) The Pianotist test25, postulated over a century ago, has
repeatedly been endorsed by the Supreme Court, as the
definitive test to be adopted while comparing rival trade marks.
According to this test, the Court is required to judge the rival
trade marks by their look and sound, and consider,
(i) the goods to which they are to be applied,
(ii) the nature and kind of customer who would be
likely to buy those goods,
(iii) all surrounding circumstances and
25
Enunciated in In re. Pianotist Application (1906) 23 RPC 774
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(iv) the consequences which would follow if each of
the marks is used in the normal way as the trade mark for
the goods of the respective owners.
While doing so, the common part of the words forming the
competing marks may not be decisive. The overall similarity of
the composite words is required to be seen, having regard to the
circumstance (if applicable) that both are on like goods of
similar description. The test to be applied is whether, if the two
marks are used in a normal and fair manner, there is likelihood
of confusion or deception.
(g) The whole word/mark is to be considered. An ordinary
man would not split a word or name, in a trade mark, into its
components, but would go by the overall structural and
phonetic similarity of the marks at the nature of the goods
previously purchased, or of which he has been told and which
he wants to purchase. It has to be examined whether the totality
of the trade mark of the defendant is likely to cause
deception/confusion or mistake in the minds of the persons
accustomed to the existing trade mark of the plaintiff.
(h) The resemblance may be phonetic, visual or in the basic
idea represented by the plaintiff's mark. The Court is, however,
required to apply both the phonetic and the visual tests. At
times, ocular similarity may be sufficient to find possibility of
confusion/deception, even if the marks are visually dissimilar,
though ocular similarity, by itself, may not, generally, be the
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decisive test. Where, however, (i) in all other respects, the
marks of the plaintiff and defendant are different, (ii) the
word/words, in the marks, which are phonetically similar,
cannot be regarded as the dominant word, or essential feature,
in the marks, and (iii) the surrounding circumstances also belie
any possibility of confusion, it has been held that deceptive
similarity cannot be found to exist merely on the basis of
phonetic similarity or even identity. The matter, apparently, is
always one of fact. The Court would have to decide, on a
comparison of the two marks, and the parts thereof which are
phonetically similar, as to whether such phonetic similarity is
likely, considering all other circumstances, to confuse or
deceive a purchaser of average intelligence and imperfect
recollection, always bearing in mind the nature of the goods,
and the degree of circumspection which would be expected of
the purchasers who would purchase such goods.
(i) The Court is required to examine whether the essential
features of the plaintiff's mark are to be found in the mark of the
defendant. Identification of the essential features is a question
of fact, left to the discretion of the Court.
(j) No objective standards are possible, regarding the degree
of similarity which is likely to cause deception. It has to be seen
from the viewpoint of the purchasers of the goods.
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(k) The test to be applied would depend on the facts of the
case. Precedents are valuable only to the extent they specify
tests for application, and not on facts.
(l) On the issue of deceptive similarity, and especially with
respect to the aspect of phonetic similarity, English cases are
not of relevance. English cases are useful only to the extent they
aid in understanding the essential features of trade mark law.
The tests for deceptive similarity, which apply in other
jurisdictions, may not always apply in India.
46.5 That the application of the aforesaid tests, in any given case, is
purely a question of fact, involving exercise of judicial discretion by
the Court, and that no objective or preset standards could be stipulated
in that regard, may be apparent from the fact that, applying these tests,
(i) "Sify" and "Siffy" were held to be phonetically and
visually similar, with the addition of the suffix "net" after
"Siffy" being found to be insufficient to tide over the similarity,
(ii) "Gluvita" and "Glucovita" were found to be phonetically
similar, with the syllable "co" in the latter name being regarded
as insignificant,
(iii) "Amritdhara" and "Lakshmandhara" were found to be
deceptively similar, and
(iv) "Sri Ambal" was found to be phonetically similar to "Sri
Andal"16, but
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(v) on an intricate and microscopic comparison of the
competing words, it was held that "Protovit" and "Dropovit"
were dissimilar, with no possibility of confusion.
46.6 Applying the above tests, the conclusion that the marks
and are deceptively similar is, in my view, prima facie
undisputable. The marks are in identical colours with the placement
of words being also similar. Both contain the word "Nature's" in a
larger font, above the word "Tattva" in the case of the defendant's
mark, and "Inc.", in the case of the plaintiff's mark, below it in
smaller letters. Both marks are green in colour, and use the word
"Nature's" with an apostrophe. In both cases, there is the insignia of a
leaf over the word "Nature's" which, even by itself, prima facie
indicates imitation, by the defendants, of the plaintiff's mark, this
being a clearly distinctive feature of the plaintiff's mark.
46.7 Vis-à-vis the "Nature's Essence" mark of the plaintiff, the
"Nature's Tattva" mark of the defendants also appears to be a case of
"idea infringement", as one of the principal meanings of the Hindi (or,
rather, Sanskrit) word "tattva" is "essence". (The suggestion, by the
defendants, that "tattva" means "elements", though etymologically
also correct, is an apparent attempt to obfuscate this issue.) This
appears, prima facie, to be an attempt to confuse the customer of
"average intelligence and imperfect recollection".
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46.8 The contention, of Mr. Sharma, that the plaintiff cannot claim
any trademark rights over the word "Nature", as it is descriptive in
nature, is neither here nor there. In the first place, the plaintiff's
trademark, of which it alleges infringement, is not "NATURE" per se,
but "NATURE'S INC." or "NATURE'S ESSENCE". As I have
already held hereinbefore, the defendant's mark is, visually and
phonetically, deceptively similar to the plaintiff's "NATURE'S INC."
mark, and conveys a deceptively similar idea to that conveyed by
"NATURE'S ESSENCE", as has the potential of confusing a
customer of average intelligence and imperfect recollection. Whether
an intellectual property monopoly can be claimed in respect of the
word "NATURE" is, therefore, really off the mark. It would be
totally antithetical to all canons of trademark jurisprudence to
question the validity of the or marks because "Nature"
is a descriptive word. Once "Nature's" is used in conjunction with
"Inc.", or "Essence", it assumes a definite and distinct - as well as
distinctive - connotation and meaning, which is totally different from
"Nature" per se. Even if "Inc." were to be treated as an acronym for
"Incorporated", the mark has a distinctive identity all its own,
immediately apparent to the naked eye. Once, therefore, deceptive
similarity is established, violation of the proprietorial right, of the
plaintiff, over the or trademark, stands made out.
Infringement being in the nature of a violation of the proprietorial
right of the owner of a registered trade mark, a case of infringement
stands, thereby, prima facie established.
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46.9 In Kaviraj Pt. Durga Dutt Sharma6, the Supreme Court held
that the "resemblance may be phonetic, visual or in the basic idea
represented by the plaintiff's mark". Any one of these similarities
would, therefore, be sufficient to make out a case of infringement. In
the present case, the defendants' mark is, at least visually as well as
qua the basic idea thereof, starkly similar to the plaintiff's marks.
Even phonetically, it cannot be said that "Nature's Essence" and
"Nature's Tattva" are wholly dissimilar, especially given the fact that
the opening word of both expressions is the same.
46.10 Mr Sharma, on behalf of the defendant, sought to contend that
there was no overlap in the goods on which the defendant used its
mark and those on which the plaintiff did so, as the products of the
defendant, except for Hand Sanitizer and Charcoal Face Pack, were
DIY items, whereas the plaintiff's products were ready to use. To my
mind, this makes little, if any, difference. Both make cosmetics and
toilet preparations. The "do-it-yourself" aspect of the defendant's
products pertains to the mode of use of the product, and not to the
nature of the product itself. In any event, both the products being
cosmetics, and the marks being similar visually as well as by idea
association, the existence of infringement cannot be gainsaid merely
because the defendants' products are DIY and the plaintiff's ready to
use. With the expansion of product portfolios in nearly every stream
of business, such diversity is often encountered in different products
of the same manufacturer. For example, it is a matter of common
knowledge that the same pharma company may be manufacturing
syrups both as ready solutions or emulsions, or as suspensions which
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have to be prepared by mixing the medicine, in powder form, with
water. That factor, in my prima facie view, cannot overwhelm the
essentially infringing nature of the defendants' marks, vis-a-vis those
of the plaintiff.
46.11 Prima facie, therefore, the essential features of the plaintiff's
mark, including (i) the colour, (ii) placement of the words "Nature's"
and "Inc.", in the case of the mark, and of the words
"Nature's" and "Essence" in the case of the mark of the
plaintiff, vis-à-vis the words "Nature's" and "Tattva" in the case of the
mark of the defendants, (iii) the use of the leaf insignia over
the word "Nature's", and (iv) the idea conveyed by the words
"Nature's Essence" (vis-à-vis "Nature's Tattva"), have deliberately
been adopted and imitated, by the defendants, making out a prima
facie case of infringement. Viewed from the perspective of a person
of average intelligence and imperfect recollection, the marks, in my
view, are confusingly similar.
47. Is the plaintiff entitled to interim injunction?
47.1 Once a case of prima facie infringement is established,
ordinarily, the plaintiff would be entitled to injunction, in view of the
trespass, by the defendants, into its valuable proprietary domain. The
Court is also required, however, to consider the longevity of use, by
the defendants, of the allegedly infringing trademark, as part of the
twin considerations of balance of convenience and irreparable loss. In
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this exercise, however, the general principle is that injunction follows
infringement. In cases where the infringement appears to be
deliberate, injunction must follow suit. This position of law is thus
pithily, and unequivocally, stated, by the Supreme Court, in Midas
Hygiene Industries (P) Ltd v. Sudhir Bhatia26:
"The law on the subject is well settled. In cases of
infringement either of trademark or copyright, normally an
injunction must follow. Mere delay in bringing action is not
sufficient to defeat grant of injunction in such cases. The
grant of injunction also becomes necessary if it prima facie
appears that the adoption of the mark was itself dishonest."
(Emphasis supplied)
There are decisions, of this Court as well as of other High Courts, on
similar lines; however, given the categorical exposition of the legal
position by the Supreme Court, in the afore-extracted passage, it is not
necessary to advert thereto.
47.2 The similarity in design and idea identity between the
expressions "Nature's Essence" and "Natures Tattva", and usage of
the "leaf insignia", prima facie lead me to believe that the
infringement, by the defendants, of the plaintiff's trademark, was not
innocent or coincidental. A deliberate attempt to encash on the
goodwill and reputation of the plaintiff appears to have been made by
the defendants. Though, as already noticed at the commencement of
this judgement, no relief, qua passing off, has been sought in the
plaint, this factor becomes relevant when one assesses whether the
imitation, by the defendants, of the plaintiff's mark, was unintentional
26
(2004) 3 SCC 90
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or deliberate. I am inclined to hold in favour of the plaintiff , rather
than the defendants, on the facts before me.
47.3 In view thereof, the plaintiff cannot be regarded as is entitled to
interim injunction, on the ground of longevity of user, by the
defendants, of the infringing trademark.
47.4 To turn, now, to the plea, of the defendants, of priority of user.
47.5 The submissions, of Mr. Lall, regarding the defendants having
produced only one solitary invoice, dated 3rd December, 2015,
referring to any "Nature's Tattva" product, with their written
statement, to claim user since 2015, with no explanation as to how all
three copies of the invoices were in the possession of the defendants,
also merits consideration. In any event, the plaintiff has a valid
registration, of the mark since 24th November, 2009, and of the
mark at least since 27th October, 2016, being the dates of the
Certificates of Registration issued by the Trade Marks Registry in
respect of the said marks. As against this, the defendant had applied
for registration of their mark only on 26th April, 2018. Till
date, the mark remains unregistered. No credible evidence of prior
user, by the defendants, of their mark is forthcoming on the
record, as all invoices, save and except for the single invoice dated 3rd
December, 2015, which make reference to any "Natures Tattva"
product, are of 2018, 2019 and 2020. I may note, in this context, that,
while the prayer, in the plaint, does not refer to the "Nature's Inc."
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mark, it does seek protection against infringement of the "Nature's"
mark of the plaintiff. Besides, there is a categorical allegation, in the
plaint, regarding infringement, by the defendants, of the mark
of the plaintiff.
47.6 I am not inclined to take, into consideration, the documents
filed by the defendants with IA 2748/2021, for adjudicating the
present application, by the plaintiffs, under Order XXXIX of the CPC.
The Statement of Truth, filed by the defendants with the written
statement clearly avers that "all the documents in (their) power,
possession, control or custody, pertaining to the facts and
circumstances of the proceedings initiated against Defendants No 1
and 2 have been disclosed in the copies of the same has been filed
along with the written statement and that (they) (did) not have any
other document in (their) power, possession, control or custody which
to (their) knowledge are relevant to the present suit". This
declaration, having been tendered under the Commercial Courts Act,
has to be accorded enhanced solemnity, is a complete answer to the
request, of Mr. Sharma, for the additional documents, filed with IA
2748/2021, to be taken into account while deciding the present
application. It is also difficult to comprehend how, when the
defendants have filed, with the written statement, as many as 14
invoices, with the lone "Nature's Tattva" invoice being of 3rd
December, 2015, they failed to file all other invoices of the said
period. All invoices now filed with IA 2748/2021 being merely
printed copies, with no signature or other insignia of genuineness, I
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am not inclined to take them into consideration while considering the
application of the plaintiff under Order XXXIX of the CPC.
47.7 Besides, if the defendants were, in fact, selling their products,
with the "NATURE'S TATTVA" mark, prior to 2018, it defeats
comprehension, prima facie, that they would have filed, with their
written statement, only one solitary invoice, dated 3rd December,
2015.
47.8 Even on the basis of the consideration of priority of user,
therefore, the plaintiff is, prima facie, entitled to interlocutory
injunction as sought.
Conclusion
48. In view of the aforesaid discussion, the plaintiff is found
entitled to the prayer for interlocutory injunction, as contained in the
present application.
49. Pending disposal of the suit, therefore, the defendants, as well
as their servants, agents, dealers, representatives and all other persons
acting on their behalf, shall stand restrained from dealing in/making,
selling, offering for sale or advertising, in any manner, cosmetics and
toiletries products or any allied goods, bearing the impugned
mark, or any other mark, confusingly or deceptively similar to the
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registered "NATURE'S INC." and "NATURE'S ESSENCE"
trademarks of the plaintiff.
50. The application stands allowed accordingly.
51. Needless to say, all observations in this order are merely prima
facie, intended to aid disposal of the plaintiff's application under
Order XXXIX Rules 1 and 2, CPC, and would not inhibit the Court
from taking a different view, at any later stage or at the final hearing
of the suit.
C. HARI SHANKAR, J.
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