Delhi High Court
Induss Food Products & Equipments Ltd. vs Rani Sati Ice Cream Pvt. Ltd. on 1 December, 1996
Equivalent citations: 65(1997)DLT802
Author: K. Ramamoorthy
Bench: K. Ramamoorthy
JUDGMENT K. Ramamoorthy, J.
(1) After the conclusion of the arguments by the learned Counsel for the parties the words of Justice Parker which were uttered in the year 1906 came to my mind and they are : "THIS is just one of those cases where it is perfectly possible that another mind, if brought to bear on the subject, might take another view. It always is so in cases of this sort where you cannot really test whether a confusion has arisen, but only have to judge from the general appearance or sound of the two words whether confusion is likely to arise."
(2) The plaintiff is having its registered of ficeat Calcutta. Defendant is in Delhi. The plaintiff Indus's Food Products & Equipments Ltd. is engaged in the business of manufacture and selling ice-cream under the trade mark ROLLICK. The defendant is doing the same business under the trade mark Frolic.
(3) Both the marks are not registered and the plaintiff has come forward with an action for injunction on the ground of passing off and defendant is resisting it on the ground that there is no passing off.
(4) The plaintiff has filed the following documents :
1.Photostat copy of Licence Agreement dated 1st August, 1989 executed between the plaintiff and M/s. N.B. Ice Cream of Ranchi.
2.Photostat copies of invoices of sale of ice cream by the plaintiff under the mark Rollick from 1987 to 1995.
3.Photostat copies of advertisements in various newspapers of the trade mark Rollick of the plaintiff.
4.Photostat copy of Incorporation Certificate of the defendant- Company.
5.Packing material of the ice cream of the plaintiff's manufacture.
6.Packing material of the ice-cream of the defendant's manufacture.
7.Photostat copy of plaintiff's letter dated 27th February, 1995 to M/s. N.B. Ice Cream.
8.Photostat copy of letter dated 3rd March, 1995 of M/s. N.B. Ice Cream to the plaintiff.
9.Photostat copy of defendant's letter dated 18th March, 1995 to the plaintiff.
10.Photostat copy of letter dated 26th April, 1995 of the plaintiff to M/s. N.B. Ice Cream.
11.Photostat copy of letter dated 10th May, 1995 from plaintiff to M/s. N.B. Ice Cream along with photostat copy of the enclosure.
12.Photostatcopyofletterdated3rdJune,1995fromplaintifftoM/s.N.B. Ice Cream.
13.Photostat copy of letter dated 17th June, 1995 from plaintiff to M/s. N.B. Ice Cream.
14.Photostat copy of fatter dated 19th June, 1995 from plaintiff, to M/s. N.B. Ice Cream.
15.Photostat copy of letter dated 26th June, 1995 from plaintiff to M/s. N.B. Ice Cream.
16.Photostat copy of Power of Attorney dated 7th December, 1995 executed by the plaintiff.
17.Photostat copy of extract of Resolution dated 7th August, 1995 of the Board of Directors of the plaintiff company."
(5) At page 55 of the type set filed by the plaintiff we find the carton used by the plaintiff which shows the overall get up, the colour scheme and also logo used by the plaintiff. At page 56 the plaintiff has given the carton of the defendant with the colour scheme and also the logos showing the fruits and nuts in the carton. At page 57 the carton of the defendant by which the sale of different sizes of ice creams is made is shown. The case of the plaintiff is this :
The plaintiff is the sole proprietor of the business unit known as Inder Ice Cream which sells the products under the trade mark ROLLICK. The plain ti ff is selling ice cream having the trade mark Rollick with a particular device and also mentioned the colour scheme and the logos. The ice-cream sold by the plaintiff has acquired considerable reputation and goodwill and the plaintiff is recognised and identified. The plaintiff has given the sales figures from the years 1986 to 1995 which are as follows:
YEAR Amount (Rupees in Lacs) April 1986 to March 1987 21.20 April 1987 to March 1988 56.16 April 1988 to March 1989 75.83 April 1989 to March 1990 109.12 . April 1990 to March 1991 117.45 April 1991 to March 1992 115.32 April 1992 to March 1993 150.02 April 1993 to March 1994 154.53 April 1994 to March 1995 215.59 April 1995 to September 1995 190.12 The plaintiff has applied for registration in Application No. 484309 on 18.1.1988 under the provisions of Trade & Merchandise Marks Act, 1958: The plaintiff has entered into a licence agreement dated 1.8.89 allowing the use of trade mark Rollick and device by one N.B. Ice Cream in certain areas of State of Bihar and the agreement is still subsisting; that N.B. Ice Cream, tKe licensee is a partnership firm consisting of the members of Nursery family and the Director K.K. Nursery, one of the directors of the defendant-Company belongs to that family; the Company and the directors knew of the franchise agreement with the plaintiff, that lowing fully well, the defendants have adopted the trade mark Frolic which is deceptively similar to the trade mark Rollick for selling the ice-cream. Accord- ing to the plaintiff, the important features in the device adopted by the defendant are identical to that of the plain tiff and they can be shown in the following manner: (i)the drawing of a face to comprise the alphabet '0'; (ii) that the face is primarily round so that it can represent the * alphabet '0'; (iii) the face is in a smiling posture; and (iv) one of the alphabets is in a raised or elevated position in comparison to the remaining alphabets. (i) the drawing of a face to comprise the alphabet '0'; (ii) that the face is primarily round so that it can represent the alphabet '0'; (iii) the face is in a smiling posture; and (iv) one of the alphabets is in a raised or elevated position in comparison to the alphabets. The plaintiff approached Nursery family for settling the disputes but that did not bear any fruit. Therefore, the plaintiff had to approach this Hon'ble Court for reliefs.
(6) The defendant filed the written statement on 5.2.1996. It is stated in the written statement that the defendant is using the trade mark Frolic since September 1993 and the plaintiff had stood by it and acquiesced it. The plaintiff has not established its proprietorship over the trade mark Rollick, logo in relation to the ice cream. The word Rollick is highly laudatory and has a direct reference to the character and quality of the goods. The word has neither acquired any distinctiveness through secondary significance. The trade mark protection is not available when the syllable in the trade mark Frolic Logo of the defendant is not identical and deceptively similar to the trade mark of the plaintiff. The ' defendant has been honestly using the trade mark from 17th day of September 1993 and has built up a valuable trade. The plaintiff is using the Rollick Logo only for the States of West Bengal, Bihar and some other eastern part of the country, while the defendant has been using its Frolic trade mark in the State of Rajasthan, Haryana and Delhi and the defendant has been using the same exclusively without any interruption from any quarter whatsoever. The claim of the plaintiff that from 1986 to September 1995 the plaintiff has spent about Rs. 78 lakhs on advertisement is not at all correct. The sales figures given by the plaintiff in the plaint are also not correct. The defendant has filed opposition to the registration of this trade mark by the plaintiff. The proprietorship of the mark by the plaintiff is also challenged before the Registrar of Trade Marks. The allegation that the defendant is taking advantage of the franchise agreement with N.B.I. Ice Cream is not at all correct. The allegation that K.K. Nursery, a director of the defendant-Company, was fully familiar of the trade mark is also not correct. The trade mark and the get up and the colour scheme used by the defendant are distinct and they are not identical or deceptively similar to the trade mark and logo of the plaintiff. On 5.7.1995 the Registrar of Trade Mark, Bombay had written to the defendant in reply to his letter in Form No. TM-55 dated 8.5.95 that in the opinion of the Registrar the mark submitted by the defendant is, prima fade, inherently adapted to distinguish the goods mentioned in the request within the meaning of Section 9 of the Trade Marks Act, 1958. The defendant has also obtained a report from the office of Trade Mark Registry, Bombay dated 30.10.95 and the same has been filed as Annexure-B to the written statement. The defendant mac e an application in Form TM-54 for search under Rule 24(1) of the Trade and Merchandise Rules, 1959 relating to the trade mark ROLLICK. The Registrar had reported that an application for registration under the name Frolic under Application No. 454886 is pending at the instance of G.L. Hotels Ltd., Gaylord Ice Crearn,55Rana Road, New Delhi. Therefore, the defendant was aware of the fact by receipt of the report dated 30.10.95 that the word Rollick is subject of registration. The defendant also relies upon certificate issued by the Trade Mark Registry, Bombay u/Sec.45(1) of the CopyrightsAct, 1957. The defendant has given the sales figures from May 281994 to March 1995 at Rs. 29,32,022.00. From April 1995 to January 1996 Rs. 57,24,626.00. The defendant has also made wide advertisement through different medias.
(7) The defendant had Filed the following documents:
1.Photostatcopyoforderdated5.7.95of Trade Mark Frolic(Annexure 'A').
2.Photostat copy of additional representation of Trade Mark Frolic under Application No. 630300.
3.Photostat copy of Search Report of Trade Mark Frolic dated 30.10.95 (Annexure 'B',.
4.Photostat copy of Search Report of Artistic Work entitled Frolli K (Annexure 'C).
5.Advertisement of the Trade Mark Frolic (label) of the defendant.
6.Labels of Frolic logo.
7.Photographs of advertisement of Frolic logo Ice Cream (I I Photographs).
8.Invoice and Trade Literature of the defendant.
9.Photostat copy of advertisement and advertisement Bill."
(8) The plaintiff has filed replication repudiating the claim of the defendant.
(9) The learned Counsel for the plaintiff Mr.K.R. Gupta submitted that the trade mark Frolic is deceptively similar to the trade mark Rollick of the plaintiff, and taking advantage of the franchise eagreement in Bihar the defendant had started the business and relied upon the decision of this Court in Century Traders v. Roshan Lal Duggar b Co. and Others, and Tata Oil Mills Co. Ltd. v. M/s. Wipro Ltd. andAnotIler, Air 1986 Delhi 345. Mr. K.G. Bansal learned Counsel appearing for the defendant submitted that the plaintiff is guilty of delay and latches; the plaintiff is operating east of India; that the defendant is operating on the West, North and Rajasthan and, therefore, the plaintiff would not be put to any prejudice and the trade mark Rollick is only descriptive and the plaintiff has not acquired any distinctiveness and the plaintiff has claimed to be the proprietor of the trade mark but there is no claim in the plaint that the plaintiff is a proprietor of the trade mark. The plaintiff must show reputation all over India and that has not been done and from the principles laid down in various cases it is clear that the plaintiff has not made out a case for injunction. He relied upon, in particular, the judgment of the Karnataka High Court, reported in M/s. Cedilla Laboratories Pvt. Ltd., Alimedabad & Anr.v.M/s.Kamah Atul & Co.,Kumta, 1991 PTC259 and submitted that the plaintiff can be permitted to operate in east of India and the defendant could be permitted to do his business on the western, northern and Rajasthan pending the disposal of the suit.
(10) The principles relating to the consideration of the question of injunction on the ground of passing off is well settled but the human ingenuity is able to device so many things and it has become necessary for the Courts to consider afresh the principles and in the light of the principles the Courts have to consider the case on hand. In J.B. Williams Company v H. Bromley 6- Co. Ld., 26 Rpc (1909) 765 the Court of Appeal in England was to decide a question whether the box of the defendant selling Shaving Sticks were deceptively similar to that of the plainiffs. The Court of Appeal was concerned only with the get up and the colour scheme. Cozens Hardy M.R. posed the question what is it necessary for a trader who is plaintiff in passing-off action to establish and the learned Judge answered by saying:
IT seems to me that in the first place he must, in order to succeed, establish that he has selected a peculiar-a-a novel-design as a distinguishing feature of hrs goods, apd that his goods are known in the market, and have acquired a reputation in the market, by reason of that distinguishing feature, and that unless he establishes that, the very foundation of his case fails. If he takes a colour and a shape which are common to the trade the only distinctive feature is that which he has added to the common colour and the common shape, and unless he can establish that there is in the added matter such a similarity as is calculated to deceive, I think he must fail. Now what he has to prove on the question of "calculated to deceive" cannot, I think, be better stated than it is Schweppes Ld. v. Gibbens, where Lord Halsbury said :
"THE whole question in these cases is whether the thing-taken in "its entirety, looking at the whole thing-is such that, in the ordinary course" of things, a person with reasonable apprehension and with proper eyesight" would be deceived."
The Court of Appeal ultimately held that there was nodeception. ln Burberrys v. J.C. Cording b Co. Ld, 26 (1909) Rpc 693 Parker, J. had occasion to consider the claim of the plaintiff in that case whether the word 'Slip-on' had become distinctive of the plaintiff's goods. The plaintiffs brought an action to restrain the defendants from using the word 'Slip-on' for coats or overcoats. On the 10th of December 1907 the plainiffs applied to the Board of Trade under Section 9(5) of the Trade Marks Act, 1905 for an order allowing the word 'Slip-on' to be deemed a distinctive word for weather proof garments of their merchandise with a view to its registration under the Act as a trade mark in respect of such garments.
(11) In April 1909 the defendants having heard of the application to the Board of Trade opposed the application of the plaintiffs and commenced issuing advertisement in which a new coat of their own manufacture called 'Kathador' is described first as an incomparable Slip-on coat and later on as "a Shapely slip-on". These advertisements provoked the plaintiffs to institute the proceedings under Section 9 of the Act. The main contention of the plaintiffs was that the word by user became distinctive of the plaintiffs' goods and could be properly registered as the plaintiff's trade mark. The Court said : "THE principles of law applicable to a case of this sort are well-known. On the one hand, apart from the law as to trade marks, no one can claim monopoly rights in the use of a word or name. On the other hand, on one is entitled by the use of any word or name, or indeed in any otherway, to represent his goods as being the goods of another to that other's injury. If an injunction be granted restraining' the use of a word or name, it is no doubt granted to protect property, but the property, to protect which it is granted, is not property in the word or name, but property in the trade or good-will which will be injured by its use. If the use of a word or name be restrained, it can only be on the ground that such use involves a misrepresentation, and that such misrepresentation has injured, or is calculated to injure another in his trade or business. If no case of deception by means of such misrepresentation can be proved, it is sufficient to prove the probability of such deception, and the Court will readily infer such probability if it be shown that the word or name has been adopted with any intention to deceive. In the absence of such intention, the degree of readiness with which the Court will infer the probability of deception must depend in the circumstances of each particular case, includ ing the nature of the word or name, the use of which is sought to be restrained. If is important for this purpose to consider whether the word or name is puma fade in the nature of a fancy word or name, or whether it is prima fade descriptive of the article in respect of which it is used. It is also important for the same purpose to consider its history, the nature of its use by the person who seeks the injunction, and the extent to which it is or has been used by others. If the word or name is prima fade descriptive or be in general use, the difficulty of establishing the probability of deception is greatly increased. Again, if the person who seeks the injunction has not used the word or name simply for the purpose of distinguishing his own goods from the goods of others, but primarily for the purpose of denoting or describing the particular kind of article to which he has applied it, and only secondarily, if at all, for the purposes of distinguishing his own goods, it will be more difficult for him to establish the probability of deception. But whatever be the nature of history of the word or name, in whatever way it has been used, either by the person seeking the injunction or by others, it is necessary, where there has been no actual deception, to establish at least a reasonable probability of deception. In such cases the action is, in effect, a quia timet action, and unless such reasonable probability be established, the proper course is, in my opinion, to refuse an injunction, leaving the plaintiff to his remedy if cases of actual deception afterwards occur."
The learned Judge further observed : "THE real question is whether under the circumstances above described there is any reasonable probability of deception if the Defendants continue to use the word "Slip-on" in the way they have done and are doing. In considering this question it must be borne in mind that, upon the facts as I have found them, the word "Slip-on" is and has always been used by the plaintiffs, primarily as a word describing the article, and that the word does in fact describe the article in the minds of both the trade and the public. The word has never been used by the plaintiffs primarily as a word distinctive of goods of their own manufacture. If it has come to distinguish their goods from those of others, it has done so by acquiring a secondary meaning without losing its descriptive character. Though I do not agree with the argument that a word cannot be at the same time both descriptive and distinctive, I think the fact that it retains its prima fade descriptive signification increases the difficulty of proving that it is distinctive of the goods of any particular manufacturer, if a word is prima fade the name of or description of an article, evidence that it is also generally associated with the name of a particular manufacturer is, in my opinion, by no Incans conclusive that it has become a distinctive word which cannot be used of the same article when made by others without risk of deception. If the article in question is made exclusively or mainly by a particular manufacturer, it is almost bound to be associated with the name of that manufacturer by the trade and the public, for each trader and each member of the public will naturally associate the article with the name of the manufacturer who supplies it to him and who may possibly be, in his opinion, the only person who supplies it at all."
The word 'Summit' would be deceptively similar to the word 'Limit' was the question before the Court in 30 (1913) Rpc 363 Thomas A. Ltd., a Company carrying on business selling of shirts and collars under the trade mark 'Limit' applied for the registration of the same.
(12) A Company called Austin Ld.Housiers and shirtsmanufacturer,whowas a registered proprietor of the mark 'Summit' opposed the application for registration strictly that the words 'Summit' and 'Limit' have a similarity in themselves which might lead to confusion and further in actual practice the opponents used in script form with diminishing letters and this would amount to deception and confusion. This was rejected by the Competent Authority under the Act.
(13) On appeal before the High Court of Judicature, in Chancery Division, Niville J. rested his decision on his view that the word 'Limit' and 'Summit' are words in common use and affirmed the order of the authority.
(14) In Fitchetts Ld v. Lou bet h Co. Ld., 36 (1919) Rpc 296 the facts necessary for the appreciation of the decision are these :
"IN1903 E.P. Fitchett, dry soap manufacturer, carrying on business in Birmingham, was registered as proprietor of the Trade Mark "Litho" No. 251, 767 in Class 47 in respect of starch for laundry use, starch glaze, starch gloss, starch powder for laundry use, soap powder (included in this class), washing powder (included in this Class), bleaching powder, detergents, laundry blue, soft and hard soaps (included in this Class) and grease extractors (included in this Class); subject to a disclaimer as to the exclusive use of the word "Light- In 1904 he obtained the registration of a Trade Marks No. 254,897 consisting of the word "Y.T.O." above a hand holding a packet, in Class 47 in respect of the same goods as were included in his former registration, but excluding grease extractors or any goods of a like kind to grease extractors.
On the 21st of December 1911 he transferred his business, together with his . .registered Trade Marks, to Fitchetts Ld., who renewed the two registrations in 1917 and 1918 respectively. On the 2nd of February Lou bet & Co. Ld. wrote to Fitchetts Ld. informing them that they had on the market a brand of grease solvent called "Ritho/'and requesting their consent to the registration of "Ritho" as a Trade Mark. This request was refused by Fitches Ld. on the ground that the proposed registration wound conflict with their registered Trade Marks. & Co. Ld. continued to sell their grease solvent under the name of "Ritho", and on the 13th of September 1917 Fitchetts Ld. commenced an action against Lubed & Co. claiming (1) An injunction to restrain the defendants, their servants and agents from selling or advertising or offering for sale any soap, soap powder, soap paste or grease solvent under the name of or bearing the mark or word "Ritho," and from using the said mark or name in connection with any such goods and from otherwise infringing the Plaintiffs' registered Trade Mark Nos. 251,767 and 254, 897 or either of them, (2) An injunction to restrain the Defendants, their servants and agents from selling or offering or advertising for sale or procuring or enabling to be sold any soap, soap powder, soap paste, or grease solvent under the name of or bearing the word "Ritho" or any other name or word so resembling the names or words "Litho" and "Y-TO," or cither of them, as to be calculated to deceive or otherwise using the name or word "Ritho" in connection with any such goods, and from passing-off goods not of the Plaintiffs' manufacture as or for the Plaintiffs' goods, and other relief." The Court said "here the ordinary features of a passing of faction are almost entirely absent. It is clear that the defendants did not know of the existence of the word "Y- TO" at the time they resolved to use the word "Ritho" and that they were not in any way attempting to appropriate any goodwill or trade reputation of the plaintiffs. "Ritho" was chosen and there was distinct evidence given to me of this-because it represented the ordinary slang phrase "Right-oh.". It was an ordinary slang, commendatory phrase signifying that the defendants' goods were "right" or satisfactory for their purpose, just as the plaintiffs' word "Y-TO" represented that their goods had a whitening effect on the hands to which they were applied. Further, there is not the slightest attempt on the part of the defendants to imitate the get-up of the plaintiffs' goods."
(15) The case reported in Derek McCulloch v. Lewis A. May (Produce Distributors) LD., 65 (1948) Rpc 58 is an interesting one. The facts of the case is thus : The plainiff was a well-known broadcaster on the Children's Hour programme of the B.B.C. under the name "Uncle Mac". He was the director of that programme, and he also broadcast charitable appeals and wrote children's books and made gramophone records under the same name. He suffered from physical infirmities having lost an eye and a leg, which made it difficult for him to get about. The defendants began selling a cereal food under the name "Uncle Mac", and the caption on the carton stated, inter alia, "You know the difficulties "of travel these days, and you will understand that Uncle Mac can't get about as freely as he would like to.........." The plaintiff alleged that the defendants' trading under the name "Uncle Mac" would cause confusion with himself and damage to his professional reputation. He contended that the defendants were trying to (obtain the benefit of his name, and that the aforesaid caption referred to his physical disabilities. The defendants contended that the name "Uncle Mac" was derived partly from the name of their subsidiary company. Machine Foods Ld" which was marketing the cereals, and that the said caption referred to the war-time zoning restrictions. After hearing the evidence of a director of defendant-Company, the plaintiff withdrew the allegation of fraud.
(16) Mr. Bansal, learned Counsel for the defendant relied upon a passage "It is established beyond argument that under the law of England a man is not entitled to exclusive proprietary rights in a fancy name in vacuo; his right to protection in an action for passing off must depend on his showing that he enjoys a reputation in that name in respect of some profession or business that he carries on or in respect of some goods which he sells. Further, he must show that the acts of the defendant of which he complains have interfered or are calculated to interfere with the conduct of his profession, business, or selling goods, in the sense that those acts of the defendant have led or are calculated to lead the public to confuse the profession, business or goods of the plaintiff with the profession, business, or goods of the defendant. The element of confusion is essential, but the element of confusion necessitates comparison."
(17) Authorities covering nearly 100 years and more were exhaustively canvassed before me by the learned Counsel Mr. Bansal which shows the thorough research made by him. I do not want to embark on a detailed discussion of these cases. That was done by my Lord the Hon'ble Mr. Justice Anil Dev Singh in the case reported in N.R. Dongre and Others v. Whirlpool Corporation and Others, . Delivering the judgment on behalf of the Bench, which in my view, represents the high water mark in these types of actions. With great respect, I follow the principles laid down by the Bench as an accurate distillation of the authorities on the point. I wanted to quote the entire judgment but, later on, I realised that will only lengthen the judgment. I want to give a gist of the principles in my own language. I am free to confess I could not improve on its clarity and the succinctness.
(18) The same Division Bench had yet another occasion to deal with the same point in Chhattar Extractions Ltd. b Am. vs Kochar Oil Mills Ltd., 1995 Ptc (15) 285=59 (1995) Dlt 769. My Lord the Hon'ble Mr. Justice Anil Dev Singh delivering the judgment on behalf of the Bench said :
"WE had occasion to review the law relating to "passing-off" in a recent decision in N.R. Dongre & Others vs. Whirlpool Corporation & Another (FAO (OS) 262/94) dated 21.4.1995. That was a case where the plaintiff was using the trade mark from 1941 (and registered a trade mark but was not renewed after 1977) and the defendant applied for registration and the plaintiff opposed the same (and the matter is pending in an appeal by the plaintiff) and plaintiff, who was the prior user, filed the suit for injunction on the ground of passing-off. It was held that a prior user has rights even over a later registered user and the temporary injunction was confirmed. In that context, a review of the law relating to "passing-off" was made by one of us (Anil Dev Singh, J). The rights of a prior user were referred to as stated in Century Traders v. Roshan Lal Duggar 6- Co. ; Consolidated Foods Corpn. v. Brandon & Co. ; Mis. L.D. Malhotra v. Ropi industries (ILR 1976 (1) Delhi 278), Delco Engineering Works v. General Motors Corp (ILR 1974 Punjab & Haryana 502). It was observed :
"THE concept and principle on which passing off action is grounded is that a man is not to sell his own goods under the pretension that they are the goods of another man. A trader needs protection of his right of prior user of a trade mark as the benefit of the name and reputation earned by him cannot be taken advantage of by another trader by copying the mark....."
(19) I have gone through the cases cited at the Bar and upon an analysis I am able to discover one factor which had very much influenced the Courts and that is the common field of the activity in which however remotely both the plaintiffs and defendants were engaged and that it was the presence of that factor that accounted for the examination of facts in each case.
(20) It remains to be considered whether there is any reasonable probability of deception in this case, Prima fade, I feel the words are phonetically similar to the Rollick and Frolic as used by the defendant are deceptively similar. The defendant had come to use the word Frolic only because of the franchise agreement. The defendant has purposely used the word Frolic. Normally, if the defendant wanted to use the word, it should have mentioned as 'FROLIC' that is the general English word. Purposely, the word 'Frolic' is used by the defendant. The colour scheme, the logos and the face of the child with a smiling face are all similar though the depth and the strength of the colour may differ slightly.
(21) Applying the tests of both the eye and the ear, I am satisfied that there is every possibility of innocent people of all categories being misled by the use of the word "FROLLICK" by the defendants into purchasing the ice-cream of the defendant as and for the ice-cream of the plaintiff. Judging all the aspects of the cartons of the plaintiff and the defendant by me own eye there is so much similarity in names and get up to make it deceptive and to cause persons think that they are buying the plaintiff's goods.
(22) Inspite of a long history of the determination by the Courts on the question of passing off still there is a grey area where the matter remains at large. The line has to be clearly made whether two marks are deceptively similar or the get up used by the defendant is likely to create confusion in the market. The products manufactured by both the parties are used by all people without any age restriction, or without any difference in status or the walk of life. Therefore, the product, ice- cream cannot be confined to a particular area of the society. When that is the position the Court has to consider when people decide in a minute to buy ice cream in Bus Stand, Railway Station, Restaurant and they go generally by the name and they don't think of trade marks before buying. The ice-creams are not a costly things for people to have deliberations before buying. The people generally go by the advertisements and availability in the place where they are offered for sale to the public. When the names, trade marks and the get up in the cartons are similar there is likelihood of confusion. Therefore. I am of the view that having regard to the totality of the circumstances the plaintiff has made out a, prima facie, strong case for injunction and the balance of convenience is in favour of the plaintiff. The argument of Mr. Bansal was that the Division Bench of the Madras High Court has pointed out in first Computers (Formerly known as 'Brilliant's Computers Centre') v. A. Guruprasad, 1996 Ptc 27 that the fact defendant had incurred expenditure cannot at all be ignored, is not a factor which could outweigh other considerations. The defendant has not come to use the trade mark with bona fide intentions and that is only to show how the plaintiff is entitled to the grant of injunction and in these matters the intention of the parties using a rival trade mark or the get up is not very much relevant. The plaintiff has shown business to a considerable extent and the defendant is trying to cash-in - on the business of the plaintiff.
(23) There is one case which I must refer to and consider the effect of it and that is the case reported in M/s. Cedilla Laboratories Pvt. Ltd., Ahmedabad & Am. v. M/s. Kamath Atul & Co., Kumta, 1991 Ptc 259 by a learned Single Judge of the Karnataka High Court. There the High Court had compared the medicinal preparation by Ranbaxy called Ferbinol with an Ayurvedic product manufactured under the name Herbinol. After a long discussion on the law and facts the learned Judge of the Karnataka High Court granted injunction in favour of the plaintiff restraining the defendant from marketing their products in the State of Kerala, Karnataka, Tamilnadu, Andhra Pradesh and Maharashtra. In paragraph 18 of the judgment, the learned Judge said : "THEREFORE,I am of the opinion that the view taken by the learned trial Judge that the plaintiff had made out a prima-facie case and even the conclusion reached by the learned trial Judge that the balance of convenience was also in favour of the plaintiff deserves to be affirmed inasmuch as the plaintiff- company is a proprietary concern manufacturing and marketing only one Herbal product called "HURBINOL" whereas, the defendant-Company is a multi-national Company manufacturing several products and therefore, the plaintiff-Company would be hit hard if its interests are not protected by an order of temporary injunction. Therefore, I hold that the impugned order of the learned trial Judge cannot be assailed on the ground that it is manifestly erroneous or unreasonable or perverse."
(24) With great respect I am quite unable to follow the reasoning of the learned Judge. The Courts dealing with the rights of the parties in a passing off action cannot, in my view, restrict or confine the activities of business under particular trade marks to specified areas. The result would be the expansion of business would be very much jeopardised and the frontiers of the functions cannot be delineated by the Courts. The result would be that there will be products with the same trade mark in different areas and that is not the object of the Act. There may be trade names of long years in various areas and that is a different aspect with which we are not at the moment concerned.
(25) I am not able to persuade myself to accept the suggestion made by Mr. Bansal that the plaintiff may be permitted to have business in east of India and the defendant in Delhi and other areas.
(26) Consequently, the application for injunction filed by the plaintiff is allowed. There shall be an injunction -
"(I)restrain the defendants, their Directors, servants an agents, from manufacturing, selling and/or offering for sale, ice-cream under the trade mark Frolic or any other mark as may be deceptively similar to the trade mark Rollick of the plaintiff and passing off of the ice- cream of the defendants as and for that of the plaintiff;
(II)restrain the defendants, their directors, servants and agents from manufacturing, selling and/or offering for sale, ice-cream packed in packaging having a device stated in para (16) (Annexure B) or deceptively similar thereto as amounting to passing off of the goods and /or business of the defendants for those of the plaintiff."