Delhi District Court
Suit No. 344/08/98 - Ebel Sa vs . Vanguard Electronics on 26 February, 2010
1
Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics
IN THE COURT OF SHRI HARISH DUDANI,
ADDITIONAL DISTRICT JUDGE-15 (CENTRAL) : DELHI
Suit No.344/08/98
Ebel S.A.
113, rue de la paix,
2300 La Chaux - de - Fonde,
Switzerland ..........Plaintiff
Versus
Vanguard Electronics Pvt. Ltd.
418A, Kewal Industrial Estate,
Lower Parel,
Mumbai- 400 013
Banarsi Dass & Bros.
4859, Katra Subhash, 2nd Floor,
Chandni Chowk,
P. B. No. 1357,
Delhi - 110 006 ..........Defendant
Date of Institution of Suit : 23.03.1998
Date of Decision : 26.02.2010
JUDGEMENT
1. This is a suit for infringement, permanent injunction and accounts filed by the plaintff.
2. The plaintiff has filed the abovenoted suit stating therein that the plaintiff is a Swiss company and Mr. Chamupati Kumar Virmani is its attorney in India authorised to sign and verify the plaint and to file the suit. Defendant no. 1 carries on the business of manufacture and sale of watches and defendant no. 2 is the agent of defendant no. 1 in Delhi and carries on the business of selling watches. The plaintiff is the 2 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics registered proprietor since 13.09.1982 in India of the trademark numbers which are as :
Trademark Number Goods
EBEL and device 395173 Horological and other
chronometric instruments
The aforesaid registration is valid and has been lastly renewed for 7 years from 18.07.1996.
3. It is stated in the plaint that the plaintiff's watches are sold under the trademark EBEL and are well known in several countries of the world. Due to import restrictions, the plaintiff's watches could not be imported into India for some time but the plaintiff through a contractor always maintained repair service for EBEL watches in India and after the liberalization policies of the government, import of watches has now become possible and EBEL watches are regularly being imported to India since 21.03.1996. The trademark EBEL is associated in the minds of the trade and consumers with the watches of the plaintiff only.
4. It is stated in the plaint that in or about January, 1997, the plaintiff's attention was drawn to the Trade Post, a monthly magazine claiming to be exclusively devoted to the watch trade and industry and on page 33 of the said magazine an article was published to the effect that after a successful test market in Bombay EBEN watches launched in Delhi wherein it was mentioned that defendant no. 2 is the authorised distributors of said watches in Delhi. The trademark EBEN being used by the defendants has been dishonestly adopted by defendant no. 1. The trademark EBEN is confusingly 3 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics and/or deceptively similar to the plaintiff's trademark EBEL and use of EBEN by the defendant is violative of rights of the plaintiff in the exclusive use of its trademark EBEL. On learning of defendants' activities, the plaintiff instructed its legal advisers in India to call upon the defendants to cease and desist from using the trademark EBEN or any other trademark deceptively similar to the trademark EBEL. Accordingly, the attorneys of plaintiff vide their letters dated 24.04.1997 called upon the defendants to desist from using the trademark EBEN. Thereafter, vide letter dated 08.05.1997, defendant no. 1 sought five items of information from the plaintiff and in reply to the said notice, plaintiff vide letter dated 03.06.1997 sent through their attorneys informed defendant no. 1 of the details of the plaintiff's registration. Defendant no. 2 vide letter dated 17.05.1997 stated that cease and desist letter has been forwarded to defendant no.
1. The plaintiff sent letter dated 26.05.1997 to defendant no. 2 and they were informed that they were also liable for acts complained. Defendant no. 2 vide their letter dated 25.06.1997 stated that EBEN is not their trademark nor they have applied for it, nor they claim to be the proprietor of the same. It is prayed that a decree of permanent injunction be passed thereby restraining the defendants, their servants, agents, representatives and assigns from offering for sale, selling or otherwise distributing any watches or other horological or chronometric instruments under the trade mark EBEN or any other trade mark confusingly or deceptively similar to the Plaintiff's registered trade mark EBEL. The plaintiff has also prayed for decree of mandatory injunction 4 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics for directing the defendants to handover to the plaintiff for destruction all goods, stationery, dies and printing blocks and other material bearing the trade mark "EBEN" but having no connection with the plaintiff and for accounts of profits earned by the defendants jointly and severally alongwith cost of the suit.
5. Defendant no. 1 has filed WS and has contested the suit. In the WS, defendant no. 1 has taken objection that the suit has not been filed by duly authorised and competent person and is liable to be dismissed on this account and on account of delay, latches, acquiescence. This Court has no territorial jurisdiction to entertain this suit. It is denied that Shri Chamupati Kumar Virmani is the plaintiff's attorney in India and is authorised to sign and verify the plaint and institute the suit. It is stated that defendant no. 1 is the manufacturer of watches and is carrying on manufacture activities at Bombay and defendant no. 2 was selling the goods at Delhi till the notice was served by the plaintiff on 17.05.1997. It is stated that the plaintiff be put to the strict proof that its trademark as stated by the plaintiff is valid and his renewed for 7 years from 18.07.1996. It is stated that sale of complete watches and its import was banned when the plaintiff registered its trademark. It is stated that plaintiff has shown the sale of the part of the watches and not the watches itself. The sale of the plaintiff is absolutely negligible since the watches of the plaintiff are for higher income bracket people and are not meant for general masses whereas the watches of the defendant under the mark EBEN are for the general 5 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics masses. Selling of watches across the world is of no consequence. It is stated that mere selling of one or two watches in India in a year, the trademark EBEL does not achieve any association in the minds of trade and public or consumers. It is stated that the watches of the defendant are a combination of Swiss and Hongkong.
6. It is stated in the WS by defendant no. 1 that the defendant no. 1 adopted the trademark EBEN after having gone through careful consideration. The two trademarks EBEN and EBEL have no similarity. EBEN is a word which can be used by all and could not be confused by anyone. The defendants have spent Rs.101 lacs in in the first year of advertisement, exhibitions and promotions to promote the brand and the name. It is denied that the word EBEN is confusing or deceptively similar to the trademark EBEL of the plaintiff. EBEN is a word of Hebrew language which means 'son' or 'son of'. In Arabic also Iben means 'son' or 'son of'. In some commentaries to old Testament EBEN is attributed to the Prophet Abraham who was thrown in fire to be killed by the then King of Babylonia for upholding and preaching the principle of Non-dualism. According to some sources, EBEN is attributed to one of the two sons of the Prophet Abraham, namely, Esmael and Izac. It is stated in the WS of defendant no. 1 that defendant no. 1 has been continuously and regularly using the trademark EBEN since 1994 when they adopted the same and applied for the registration of the trademark EBEN on 08.11.1994 and the said application of the defendant has been numbered as 6 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics 644898. Defendant no. 1 is the registered proprietor of copyright no. A-54031 of 1997. The sale of the defendant runs into crores of rupees. The advertisement expenses of the defendant runs into lacs of rupees. Defendant no. 1 holds registration no. 95554046 dated 17.01.1995 with Institut National De La Propriete Industrielle, France. The defendant no. 1 is paying lacs of rupees as sales tax, excise and custom. The defendant has no reason to copy or nor did they have any reason to pass off their goods as the goods of the plaintiff. It is stated that defendant no.1 has been using the trademark EBEN since 1994-95. It is denied that plaintiff learnt about activities of the defendant in the year 1997. The defendant has never tried to encash upon the name, goodwill and reputation, if any, of the plaintiff. It is stated that the suit is liable to be dismissed.
7. The plaintiff has filed replication to the WS of defendant no.
1. In the replication, the plaintiff has reiterated the contents of the plaint and has controverted the allegations of defendant no. 1 as alleged in the WS. It is denied that there is delay, latches or acquiescence in filing the suit or that this Court has no territorial jurisdiction to try the suit. It is stated that the defendant is selling watches under the trademark EBEN in Delhi within the jurisdiction of this Court. It is stated that defendant no. 1 has no right to use a trademark deceptively similar to the plaintiff's registered trademark.
8. As per order dated 10.01.2000, an application u/o 23 rule 3 r/w Section 151 CPC was filed by the plaintiff and defendant 7 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics no. 2 for recording compromise and the Hon'ble Court was pleased to allow the said application and compromise was recorded and the suit was decreed against defendant no. 2 in terms of the compromise mentioned in the said application.
9. From the pleadings of the parties, following issues were framed by my ld. Predecessor on 06.12.2006 :
1. Whether the suit has been filed by duly authorized person? OPP.
2. Whether the suit is liable to dismiss on account of delay, latches and acquiescence? OPD.
3. Whether this court has no territorial jurisdiction to try the suit as alleged by the defendant? OPD.
4. Whether the defendant No. 1 is the registered proprietor of copyright on the mark EBEN, if yes its effect? OPD.
5. Whether the plaintiff is entitled for the relief of permanent injunction as prayed for? OPP.
6. Whether the plaintiff is entitled for the relief of mandatory injunction as prayed for? OPP.
7. Whether the plaintiff is entitled for the decree of rendition account in respect of the profit earned by the defendants by using the trade mark EBEN? OPP.
8. Relief.
10. The plaintiff examined Shri Chamupati Kumar Virmani, attorney of the plaintiff as PW-1.
11. Defendant no.1 examined Shri Amin Penangwala, Director of 8 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics defendant no.1 as DW-1.
12. I have heard the ld. Counsel for parties and carefully perused the record. My findings on the specific issues are as under :-
13. Issue No. 1.
In para 1 of the plaint, it is stated that plaintiff is a Swiss company and Shri Chamupati Kumar Virmani is its attorney in India and authorised to sign and verify the plaint and file the suit. Shri Chamupati Kumar Virmani appeared in witness box as PW-1 and adduced evidence by way of affidavit Ex.PW1/A. In para 1 of affidavit Ex.PW1/A, Shri Chamupati Kumar Viarmani has stated that he is the constituted attorney of the plaintiff and is acquainted with the facts of the the case and is authorised and empowered to make this affidavit. In para 2 of the affidavit Ex.PW1/A, PW-1 has stated that he has a power of attorney in his favour from the plaintiff and plaint and verification have been signed by him and the original power of attorney as executed in his favour is Ex.P-1. The contention of the ld. Counsel for the plaintiff is that the power of attorney Ex.P-1 is duly attested document and attache to the Consulate General of India, Geneva has verified the signatures and seal of the competent authority of Chancery of State on the same and in the circumstances, there is presumption as to the due execution of the said authority in view of Section 85 of Indian Evidence Act, 1872. Section 85 of Indian Evidence Act, 1872 provides that the Court shall presume that every 9 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics document purporting to be a power-of-attorney, and to have been executed before, and authenticated by, a Notary Public, or any court, Judge, Magistrate, Indian Consul or Vice-Consul, or representative of the Central Government, was so executed and authenticated.
14. The contention of the ld. Counsel for the defendant is that Shri Chamupati Kumar Virmani in his cross-examination was not aware about the constitution of the plaintiff company and he had also not seen the accounts book. This argument of ld. Counsel for the defendant is of no relevance regarding appointment of Shri Chamupati Kumar Virmani as attorney by the plaintiff. No suggestions have been given to PW-1 in the cross-examination to the effect that the attorney executed in favour of PW-1 is a forged and fabricated document. The defendant has failed to prove that the power of attorney in favour of Shri Chamupati Kumar Virmani Ex.P- 1 is a forged and fabricated document and it has not been executed in his favour by the executant mentioned therein. Moreover, during the course of arguments, in order to prove authorisation of his witness, the ld. Counsel for the defendant has relied on decision in United Bank of India vs. Naresh Kumar and Others, AIR 1997 Supreme Court 3, wherein it was held that it will be travesty of justice if the bank is to be non suited for a technical reason such as plaint was not signed by competent person which does not go to the root of the matter and the only defect which was alleged on behalf of the parties was one which was curable. During the course of arguments, ld. Counsel for the defendant 10 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics conceded that on similar analogy the aforesaid decision in Union Bank of India (supra) shall also apply in favour of the plaintiff. Accordingly, this issue is decided in favour of the plaintiff and against the defendant.
15. Issue No. 2In para 7 of the plaint, the plaintiff has stated that in or about January, 1997 the plaintiff's attention was drawn to the No. 9, March 1996 magazine Trade Post wherein launch of EBEN watches in Delhi was mentioned. In para 12 of the plaint, it is mentioned that the plaintiff sent notices dated 24.04.1997 to defendants through their legal advisers. In para 18 of the plaint, it is stated that cause of action accrued to the plaintiff in January, 1997 when they first learnt of the defendant's activities and thereafter it has arisen every day after January, 1997 whenever the defendant sold any watches under the trademark EBEN. The present suit was filed on 24.03.1998. The contention of the plaintiff is that in January, 1997 the plaintiff came to know about the activity of the defendant and thereafter the plaintiff issued notices to the defendants and the defendants sent reply to the notice of plaintiff in May, 1997. It is contended by plaintiff that in April, 1997, the plaintiff advised defendants to desist from using the deceptively similar trademark and the defendant no. 2 vide their letter dated 20.06.1997 stated that the said trademark does not belong to them and they have also not applied for the same. The contention of the ld. Counsel for the plaintiff is that in such case, cause of action continues as the plaintiff has valuable right in their registered trademark EBEL and 11 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics every infringement of the same creates fresh cause of action. In Midas Hygiene Industries P. Ltd. & Anr. vs. Sudhir Bhatia & Ors., 2004 (28) PTC 121 (SC) it was observed that the Division Bench inspite of noting the factors which have been set out by the learned Single Judge has vacated the injunction merely on the ground that there was delay and latches in filing the suit and it was held that mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. In B. Kishore Jain vs. Navaratna Khazana Jewellers, 2008 (37) PTC 536 (Mad.), it was held that mere delay in initiating proceedings against a person guilty of infringement, cannot deprive the registered user of the rights conferred by the statute. Moreover, the defendant has not proved that the plaintiff acquiesced in any manner on use of trademark EBEN by the defendant after the plaintiff came to know about the activities of the defendant. This issue is accordingly decided in favour of the plaintiff and against the defendant.
16. Issue No. 3In para 7 of the plaint, the plaintiff has stated that from the magazine Trade Post, the plaintiff came to know that the defendant is launching watches under the name of EBEN in Delhi and the plaintiff came to know that defendant no. 2 is authorised distributor of EBEN watches in Delhi . In order to prove that defendant no. 1 had appointed defendant no. 2 for sale of watches in the name of EBEN in Delhi, the plaintiff has relied on letter dated 20.06.1997 sent by defendant no. 2 to the legal consultants of plaintiff which is Ex.P-42 and in 12 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics the said letter the defendant no. 2 has stated that EBEN is not their trademark and they do not claim to be the proprietor of the same. Moreover, in para 2 of the reply on merits in the WS, the defendant no. 1 admitted that defendant no. 2 was selling the goods at Delhi till notice was served by the plaintiff on 17.05.1997. As per contents of aforesaid reply on merits in the WS, the defendant no. 1 has admitted that watches under the name of EBEN were being sold at Delhi. Hence, the cause of action regarding infringement of trademark has arisen in Delhi in favour of the plaintiff. This issue is accordingly decided in favour of the plaintiff and against the defendant.
17. Issue No. 4The plea of the plaintiff is that the plaintiff is the registered proprietor of the trademark EBEL and the defendant by selling his watches under the name of EBEN has committed infringement of the trademark of the plaintiff. In para 11 of reply on merits in the WS, the defendant has stated that the defendant no. 1 is a registered proprietor of copyright no. A- 54031 of 1997. During the course of arguments, it is contended by the ld. Counsel for both the parties that since this is a case in which infringement of the trademark has been alleged, hence, this issue whether the plaintiff is the registered proprietor of copyright or not has no relevance or bearing on the present suit and no findings are required to be given on this issue. This issue accordingly does not require any findings to be given in view of contention of ld. Counsel for parties.
13Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics 18. Issue No. 5 Case of the plaintiff is that the plaintiff is the registered proprietor in India of the trademark EBEL since 13.09.1982 and the said registration is valid and has been lastly renewed for 7 years from 18.07.1996. In para 3 of the affidavit Ex.PW1/A, the plaintiff has stated that the plaintiff is manufacturer and exporter of of horological and other chronomatric instruments under the trademark registration no. 395173 and copy of the said registration certificate is Ex.P-2. The contention of the ld. Counsel for the plaintiff is that in view of Section 115 of Trade and Merchandise Marks Act, 1958 there is a presumption regarding authenticity of the said certificate. Section 115 (1) of the said Act provides that a copy of any entry in the register or of any document referred to in sub-section (1) of 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. Hence, in view of Section 115 (1) of Trade and Merchandise Marks Act, 1958, Ex.P- 2 being the certificate certified by Registrar and sealed with the seal of Trade Marks Registry shall be admitted in evidence. Moreover, in the cross-examination of PW-1, no suggestions have been given to the effect that the certificate Ex.P-2 is a forged and fabricated documents or that no such registration was ever made by the Trade Marks Registry. The plaintiff has proved that they are the registered proprietor of the trademark EBEL and the same has been 14 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics registered vide certificate Ex.P-2.
19. The contention of the ld. Counsel for plaintiff is that words EBEL and EBEN are phonetically similar and since the defendant is using the trademark EBEN for the same products i.e. watches as being sold by the plaintiff, hence, there is every likelihood of the same causing confusion in the minds of the customers and the plaintiff is the prior adopter of the trademark EBEL and the plaintiff has worldwide reputation in the manufacture of watches and there is every likelihood of defendant no. 1 affecting the rights of the plaintiff in its trade. The contention of ld. Counsel for plaintiff is that during the course of arguments, ld. Counsel for defendant no. 1 has not argued on the aspect that the words EBEL and EBEN are not phonetically similar and rather defendant no. 1 has argued on the aspects that the word EBEN has been innovated by defendant no. 1 and on that account defendant no. 1 is entitled to use the same. The contention of ld. Counsel for defendant no. 1 is that the defendant no. 1 has not adopted the name of the plaintiff and rather there is no similarity between the words EBEL and EBEN and EBEN is a word of Hebrew language which means 'son' or 'son of' and EBEN is attributed to one of the two sons of Prophet Abraham and DW-1 has also stated in his testimony that they are the followers of Agakhan Ismaili Muslim and believe in Quran and, therefore, adopted the trademark EBEN.
20. It is not in dispute that the trademark of the plaintiff is EBEL 15 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics which is registered since 13.09.1982 and the plaintiff is in the trade of watches and the defendant no. 1 is also selling watches under the trademark EBEN and the trademark of defendant no. 1 is not registered. The contention of the defendant is that although the trademark of the plaintiff was registered but the same was not being used and the defendant started using the trademark EBEN in the year 1994 and since then the defendant no. 1 has been regularly using the same. The contention of the plaintiff is that watches of the plaintiff have Swiss connection and as there were import restrictions on the watches in India but the plaintiff was maintaining service centre in India for EBEL watches and now the said watches are being regularly imported to India since 21.03.1996 on account of liberalization of policies of government. In order to prove that the plaintiff has been giving due publicity to their products under the name of EBEL, the plaintiff has relied on various advertisements which have been published in newspapers and the same are Ex.P13 to Ex.P35. In order to prove that the plaintiff has been carrying on their business in India, the plaintiff has relied on the invoices Ex.P3 to Ex.P12. The contention of ld. Counsel for defendant is that the invoices on which the plaintiff has placed reliance are from the year 1996 and not prior to that although the defendant no. 1 has been doing the business since the year 1994. Although, ld. Counsel for defendant no. 1 has pleaded that the defendant no. 1 has been selling watches under the trademark EBEN since the year 1994, however, no bills/invoices or any other proof for sale of watches under the 16 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics trademark EBEN has been proved by defendant no. 1 in accordance with law. The defendant no. 1 has examined its Director Shri Amin Penangwala as DW-1 who adduced evidence by way of affidavit Ex.DW1/A and in order to fortify their contention that they are selling their products since 1994, the defendant no. 1 has placed on record one paper containing sales amount for the years 1994 to April, 1998 and the same has been allegedly issued by one of the directors of defendant no. 1 but the said document has been denied by the plaintiff. Although, defendant no. 1 was aware that the plaintiff has denied Ex.DW1/4, in the circumstances, it was open for defendant no. 1 to have proved their records in order to prove that they are selling watches under the trademark EBEN since the year 1994.
21. The contention of the plaintiff is that the watches of the plaintiff are being sold in different countries of the world under the trademark EBEL and in para 4 of affidavit Ex.PW1/A, the plaintiff has mentioned the names of the countries wherein the watches of the plaintiff are being sold under the trademark EBEL. The contention of the plaintiff is that the previously the watches under the trademark EBEL could not be imported to India as there were import restrictions on the same. The contention of defendant no. 1 is that defendant no. 1 has never tried to encash upon the name and goodwill of the plaintiff and the plaintiff by selling only a few watches has not acquired any goodwill or name. In para 17 of reply on merits in the WS, the defendant no. 1 has stated that mere selling of 4 or 5 watches in a year by 17 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics the plaintiff do not acquire any goodwill, name or reputation under the trademark EBEL for their watches.
22. The contention of the plaintiff is that the plaintiff has Swiss connection and the defendant is also trying to promote their goods under the trademark EBEN by propagating that it has French connection. In para 6 of the reply on merits in the WS, the defendant no. 1 has stated that the watches of defendant are a combination of Swiss and Hongkong. DW-1 stated in cross-examination that it is correct that we show a Swiss connection with our watches. The contention of the ld. Counsel for the plaintiff is that although the trademark of the plaintiff was registered in India in 1982 but the watches of the plaintiff under the name of EBEL have acquired distinctive character and the same were being sold worldwide and the same has been registered at many places. No suggestions have been given to PW-1 in the cross-examination that the watches of the plaintiff are not being sold under the trademark EBEL in the countries as stated in para 4 of the affidavit Ex.PW1/A. It is not in dispute that even in India, the trademark of the plaintiff is registered since 13.09.1982. In Milmet Oftho Industries & Ors. vs. Allergan Inc., 2004 (28) PTC 585 (SC), it was held :-
"In the present case, the marks are the same. They are in respect of pharmaceutical products. The mere fact that the Respondents have not been using the mark in India would be irrelevant if they were first in the world 18 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics market. The Division Bench had relied upon material which prima-facie shows that the Respondents product was advertised before the Appellants entered the field. On the basis of that material the Division Bench has concluded that the Respondents were first to adopt the mark. IF that be so then no fault can be found with the conclusion drawn by the Division Bench."
23. In view of aforesaid decision of the Hon'ble Supreme Court, the contention of the defendant that although the plaintiff had registered its trademark EBEL in India in the year 1982 but they were not using the same and they started using the same since the year 1996 although the defendant had been using the same since 1994 loses relevance. Moreover, the contention of PW-1 as stated in para 4 of the affidavit Ex.PW1/A that the watches of the plaintiff under the trademark EBEL are being sold in number of countries as stated therein has remained unrebutted.
24. The contention of the defendant no. 1 is that there is no similarity between the words EBEN and EBEL. The ld. Counsel for the defendant has contended that the products of the plaintiff are for higher income bracket people although the watches provided by defendant no. 1 under the trademark EBEN are of cheaper range and are meant for poor people and in the circumstances, a person who intends 19 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics to buy watches of the plaintiff would not be confused by the trademark EBEN of the defendant no. 1. In M/s Pidilite Industries Pvt. Ltd. vs. M/s Mittees Corporation and Another, 1988 (2) Arbitration Law Reporter 4 (Delhi), it was held :-
"......................Before, I take up the comparison of the two marks or the similarity or dissimilarity on the containers it would be opposite to state some well settled principles governing these matters, namely (1) it is always a question of fact in each case whether the deception or confusion is likely to be caused or not by use of the impugned trade mark; the court has to put itself in the position of an average customer and ask a question whether there is likelihood of deception or confusion or not and then answer the question on that basis, (2) the marks must be compared as a whole. It is not rights to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case, there is no sufficient similarity to cause confusion. The totality of the trade marks is to be seen to find out whether there is likelihood of deception or confusion or 20 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics mistake in the minds of persons accstomed to the existing trade mark, (3) the likelihood of confusion or deception is to be seen in relation to average unwary customer, (4) it is the tendency to mislead or cause confusion that forms the gist of passing off action and the plaintiff need not establish the actual deception."
25. In the present case, the plaintiff's trademark is EBEL while that of the defendant no. 1 is EBEN. The defendant no. 1 has contended that there is no phonetic similarity between the two trademarks and, moreover, they are not likely to cause any confusion as products of the plaintiff and defendant no. 1 are to be purchased by different economic strata of persons. In Dabur (S. K. Burman) vs. Vikas Pharma, 1983 PTC 179, it was held :-
"Secondly. On the question whether there is any deceptive similarity between the two trade marks in question, I am of the opinion that there is a phonetic similarity. The vocal sounds of the two very much resemble. They produce the same sounds of speech with a slight difference of 'A'. In the pronunciation of word HAJMOLA AND HAZMOL. There is hardly any difference of note.
HAJMOLA is the plaintiff's trade mark.
21Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics Hazmol is the trade mark of the defendant except that the suffix 'A' is in addition in the plaintiff's trade mark, there is not much substantial difference between the two. The plaintiff has used the word 'J'. the defendant has used the word 'Z'. This is a distinction without any difference. The only difference is that the defendant do not have the word 'A" at the end of their trade mark 'HAZMOL'. In my opinion the buyers of the products are likely to be deceived and confused if the defendants are allowed to sell their products in the market........................."
26. In Lakme Ltd. vs. Subhash Trading, 1996 PTC (16), it has been held :-
9. 'In the case of K. R. Chinna Krishna Chettiar Vs. Ambal & Co. and another, reported in AIR 1970 SC 146 it has been held that the resemblance between the two marks must be considered with reference to the ear as well as the eye and ocular comparison is not always the decisive test.
Therefore, even if there be no resemblance between the two marks that does not matter when there is a 22 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics close affinity of sound between the distinctive features of the two marks.
The Supreme Court further pointed out that merely because the distinctive words used in both the marks have distinctive meaning it cannot be said that the phonetic resemblance does not lead to confusion, when it is likely that majority of the customers are not capable of understanding the fine distinction between the meanings of the two words. In the same case the Supreme Court was called upon to consider whether there is striking similarity and affinity of sound between the words "AMBAL" and "ANDAL". After considering various decisions, the Supreme Court held that there is a close affinity of sound between the words "AMBAL" and "ANDAL". Similarly in the case of Ruston Vs. Zamindara Engg.
(supra), the Supreme Court came to consider whether there was resemblance between the words "RUSTON" and "RUSTAM", and on consideration of various decisions came to uphold the decision of the High Court that there was deceptive resemblance between the words "RUSTON" and 23 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics "RUSTAM" and therefore, the use of the bare word "RUSTAM" constituted clear infringement of the plaintiff's trade mark "RUSTON"
13 ..........................................................
..........When both the words are articulated, it would be difficult for an ordinary prudent man to distinguish between the two sounds produced by the two words. Applying the test of phonetic resemblance as laid down by the Supreme Court I am of the view that there is a striking resemblance between the two words and there is a real danger of deception and confusion being caused by the two marks in view of the similarity and affinity of sounds between the words "LIKE ME" and "LAKME".
27. In Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories, AIR 1965 Supreme Court 980, it was held that 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 defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is in imitation, no further evidence is required to establish that the plaintiff's rights are violated.
24Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics
28. As per the aforesaid decision, the resemblance between two marks must be considered with reference to the ear as well as the eye and ocular comparison is not always the decisive test. In the present case, EBEL and EBEN both are four letters words and the only distinction being alphabet "L" and "N". In EBEL, "EL" are being used as the last alphabets and in EBEN, "EN" are being used as the last two alphabets and the way trademark EBEL has been written, in the similar manner alphabets EBEN have also been written. The contention of the ld. Counsel for defendant is that the defendant is using three lines on the top of the word EBEN and the plaintiff is using two semi circles joined and crossed by one straight line, will not cause any confusion in the mind of the customers as they are distinct patterns. However, this contention of the ld. Counsel for defendant no. 1 has no force as presentation of alphabets EBEL and EBEN is similar and they are phonetically also similar. In Parle Products (P) Ltd. vs. J. P. & Co., Mysore, PTC (Suppl) (1) 346 (SC), the Apex Court took the view that :-
"It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would 25 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him."
29. In Corn Products Vs. Shangrila Food Products, AIR 1960 SC 142, the Hon'ble Supreme Court observed :-
"The question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the Court to decide that question. It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole."
Further, it is held in the said ruling as follows :
"Again in deciding the question of similarity between the two marks, we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them."26
Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics
30. The contention of ld. Counsel for defendant is that the defendant no. 1 was honestly using the trademark EBEN and had no intention to infringe the trademark of the plaintiff and defendant no. 1 has also filed application for registration of his trademark and defendant no. 1 is an honest user of trademark EBEN. The defendant no. 1 examined Shri Amin Penangwala who adduced evidence by way of affidavit Ex.DW1/A. In para 13 of the affidavit Ex.DW1/A, defendant no. 1 has mentioned that the trademark application of their company has been numbered as 644898 and has been advertised in Trade Mark Journal and is pending registration and has been exhibited as Ex.DW1/2. The contention of the ld. Counsel for the plaintiff is that when the defendant no. 1 applied for registration of trademark EBEN at that time they would have searched the register for the similar trademarks and it would have come to their notice that trademark EBEL of the plaintiff is registered and despite that the defendant no. 1 continued to use the same and in the circumstances, it cannot be said that the user of the trademark EBEN of the defendant no. 1 is honest as the honesty has to be judged right from the inception when the trademark was started to be used. In Ansul Industries Vs. Shiva Tobacco Company, 2007 (34) PTC 392 (Del.), it was held :
"Honesty of adoption at the initial stage itself has to be established to take benefit of concurrent registration under Section 12(3) of the Act. If the user at the inception is dishonest, subsequent concurrent user will not purify the 27 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics dishonest intention. Commercial honesty at the initial stage of adoption is required. What is protected is innocent use of a mark by two or more persons unknown to each other and unaware of the mark used by the other. Adoption must be honest, bona fide and without any knowledge on the part of the adopter. The onus and burden is on the defendant to show that the user and adoption at the initial stage was honest."
31. DW-1 Amin Penangwala stated in cross-examination that they have filed application for registration of trademark EBEN for watches under Class 14. Defendant no. 1 is claiming that they are the honest user of the trademark EBEN as they have applied for the registration of trademark EBEN with the Trade Marks Registry. Thereafter, DW-1 stated in the cross-examination that prior to filing the application, their advocate conducted a pre-filing search in the Registrar's office to ascertain that there was no prior pending application or registration in respect of the same or similar mark. Thereafter, DW-1 stated in cross-examination that he does not remember if his advocate gave him the search report. Ld. Counsel for the plaintiff has relied on decision dated 17.01.2002 in Misc. Petition No. 27 of 1996 titled as Ciba Gaigy Limited vs. Biochem Pharmaceutical Industries Ltd. & Anr., wherein it was held that in order to find out whether the adoption of the trade mark by the 28 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics Respondent No. 1 was bonafide or honest, one has to see whether the Respondent No. 1 had taken care which any ordinarily prudent man will take before adopting any trade mark. It was further held that as per rules when the application for a search of the register of the trade mark is made, the result of the search is communicated to the Applicant. This document has not been produced by the Respondent No. 1. This document was relevant and was in the custody of the Respondent No. 1. The Respondent No. 1 has chosen to suppress that document and, therefore, an adverse inference has to be drawn against Respondent No. 1 that had that document been produced, it would have shown that it was disclosed to Respondent No. 1 that the trade mark of the petitioner is registered. Hon'ble High Court held that therefore, the knowledge of the registration of the trade mark of the petitioner long before 1981 has to be attributed to the Respondent No. 1. Hence, Respondent No. 1 in 1981 at the time of adoption of the trade mark was aware that the petitioner's trade mark OTRIVIN is already registered.
32. It is to be noted that although in the cross-examination, DW-
1 stated that prior to filing of application for registration of trademark, his advocate conducted a pre-filing search but defendant no. 1 evaded to give answer regarding the result of the search report. In the circumstances, in view of decision in Ciba Geigy Ltd. (Supra), an adverse inference has to be drawn against defendant no. 1 that if the defendant no. 1 had produced the said search report, it would have 29 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics shown that it was disclosed to defendant no. 1 that trademark of the plaintiff is registered since the year 1982 and despite that the defendant no. 1 used the said trademark EBEN which is deceptively similar to the trademark EBEL of the plaintiff. If defendant no. 1 was aware that the trademark EBEL of the plaintiff is registered since the year 1982 or the grievance of the defendant no. 1 was that the same was not being used, in that case it was open for defendant no. 1 to have filed appropriate rectification proceedings against the trademark of the plaintiff but the defendant no. 1 has not proved that any such rectification proceeding has been filed by defendant no. 1.
33. In view of aforesaid discussion, the plaintiff has proved that the plaintiff is the registered proprietor of trademark EBEL and the same was registered on 13.09.1982 and the said registration has been renewed for a period of 7 years from 18.07.1996 and in view of provisions of Section 32 of Trade and Merchandise Marks Act, 1958, the said registration shall be taken to be valid in all respects and the trademark EBEN of the defendant is deceptively similar to the trademark of the plaintiff and both the trademarks EBEL and EBEN are being used in respect of the same products i.e. watches. Hence, there is every likelihood of the trademark EBEN causing confusion in the mind of the public. The plaintiff has succeeded in proving that the plaintiff is entitled to a decree of permanent injunction, as prayed.
30Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics 34. Issue No. 6 The plea of the defendant no. 1 is that the defendant no. 1 has been using the trademark EBEN since the year 1994 and they have even applied for registration of the said trademark and the contention of defendant no. 1 is that the volume of business of defendant no. 1 has grown over a period of time. As the defendant no. 1 claims to have grown in volume and has been manufacturing products which are worth huge sums, in the circumstances, no order of mandatory injunction thereby directing defendant no. 1 to hand over to the plaintiff for destruction of goods bearing EBEN is not being passed as the same is likely to cause destruction of valuable property. Moreover, in findings on Issue no. 5 above, it has been held that the plaintiff is entitled to decree of injunction thereby restraining defendant no. 1 from using the trademark EBEN. Hence, in view of the decree of injunction thereby restraining the defendant no. 1 from using the trademark EBEN, no decree of mandatory injunction is required to be passed which will cause destruction of property. This issue stands answered accordingly.
35. Issue No. 7In findings on issue no 5 above, it has been held that plaintiff has succeeded in proving that the plaintiff is entitled to decree of permanent injunction for restraining the defendant no. 1 from using the trademark EBEN, which is deceptively similar to the trademark EBEL of the plaintiff. In the circumstances, as the defendant no. 1 has used trademark 31 Suit No. 344/08/98 - Ebel SA vs. Vanguard Electronics EBEN, which is deceptively similar to the trademark EBEL of the plaintiff and, moreover, DW-1 himself admitted in the cross-examination that they have applied for registration of trademark EBEN but DW-1 avoided to give answers as to the search report which was obtained from the Trade Marks Registry on his application and in the aforesaid discussions it has been held that adverse inference has to be drawn against defendant no. 1 that the defendant no. 1 was aware of the registered trademark EBEL of the plaintiff since the year 1982 and despite that defendant no. 1 used the trademark EBEN. In the circumstances, plaintiff shall be entitled to preliminary decree of rendition of accounts, as prayed. This issue stands answered accordingly.
36. Issue no. 8 (Relief) In view of aforesaid discussions, the suit of the plaintiff is decreed for a decree of permanent injunction and the defendant no. 1, their servants, agents, representatives and assigns are restrained from offering for sale, selling or otherwise distributing any watches or other horological or chronometric instruments under the trade mark EBEN or any other trade mark confusingly or deceptively similar to the Plaintiff's registered trade mark EBEL and the plaintiff is also entitled to preliminary decree for rendition of accounts from the defendant no. 1. No order as to costs. Decree sheet be prepared accordingly. File be consigned to Record Room.
(Announced in the open Court (HARISH DUDANI) on 26 February, 2010) th ADDL. DISTT. JUDGE-15 (CENTRAL) DELHI