Madras High Court
G.Rajasuria vs Jagpin Breweries Ltd And Another
Author: G.Rajasuria
Bench: G.Rajasuria
OA.No.696 of 2009 A.No.3639 of 2009 in C.S.No.568 of 2009 G.RAJASURIA, J.
Compendiously and concisely, the relevant facts absolutely necessary and germane for the disposal of these applications would run thus:
(a) The plaintiff filed the suit seeking the following reliefs:
"a) to grant a permanent injunction restraining the defendants, by themselves, their servants, agents, distributors, or anyone claiming through them from manufacturing, selling, advertising and offering for sale using same or similar get up, and colour scheme used by the defendants shown in Document Nos.3,4,5,6,7 and 8 and trade mark LION BRAND or TIGER BRAND or any other similar Trade Mark or in any media and use the same in invoices, letter heads and visiting cards or by using any other trade mark which is in anyway visually or deceptively or phonetically similar to the plaintiff's Trade Mark 'LION BRAND PAPPAD' and 'LION BRAND TAPICOWAFERS' as shown in suit Document Nos.1 & 2 or in relation to any pappad items and use the same pouches, packets or use the mark in invoices, letter heads and visiting cards or any other trade literature or by using any other trade marks whichh is in any way visually, or phonetically similar to the plaintiff's pending Trade Mark Registration application Nos.1372651 and 1127490 or in any manner infringe the plaintiff's pending registration Trade Mark;
(b) to direct the defendants to surrender to the plaintiff all the packing material, cartons, advertisement materials and hoardings, letter heads, visiting cards, office stationary and all other materials containing/bearing the name LION BRAND AND TIGER BRAND and packets in the Color Scheme and get up as shown in suit document Nos.3, 4, 5,6,7 and 8 or other deceptively similar Trade Mark used in the pouches and packets in respect of pappads;
(c) to direct the defendants to render an account of profits made by them by use of the impugned trademark and get up as shown in suit Document Nos.3,4,5,6,7 & 8 on the goods referred and decree the suit for the profits found to have been made by the defendants, after the defendants have render accounts;
(d) to direct the defendants to pay the costs of the suit to the plaintiff."
(b) The same plaintiff filed the following application with the following prayer:
OA.696 of 2009: to grant a permanent injunction restraining the respondents, by themselves, their servants, agents, distributors, or anyone claiming through them from manufacturing, selling, advertising and offering for sale using same or similar get up, and colour scheme used by the respondents/defendants shown in Document Nos.3,4,5,6,7 and 8 and trade mark LION BRAND or TIGER BRAND or any other similar Trade Mark or in any media and use the same in invoices, letter heads and visiting cards or by using any other trade mark which is in anyway visually or deceptively or phonetically similar to the petitioner's Trade Mark 'LION BRAND PAPPAD' and 'LION BRAND TAPICOWAFERS' as shown in suit Document Nos.1 & 2 or in relation to any pappad items and use the same pouches, packets or use the mark in invoices, letter heads and visiting cards or any other trade literature or by using any other trade marks which is in any way visually, or phonetically similar to the petitioner/plaintiff's pending Trade Mark Registration application Nos.1372651 and 1127490 or in any manner infringe the petitioner/plaintiff's pending registration Trade Mark.
(c) This Court earlier granted interim injunction on 17.7.2009, the operative portion of which is extracted hereunder:
"3. In the affidavit filed in support of this application it is clearly stated that the applicant is the user of the trade mark 'LION BRAND' by usage and the registration process is pending with the Registry of Trade Marks. He also claimed that since 1971, he has been using the trade mark and is also the absolute user of the trade mark.
4. In the light of the same, there will be an order of interim injunction as prayed for. The applicant/plaintiff to comply with Order 39 rule 3 C.P.C."
(d) Whereupon the defendants filed the application No.3639 of 2009, with the following prayer:
"To vacate the order of interim injunction granted in O.A.No.696 of 2009 in C.S.No.568 of 2009 on 17.7.2009 and dismiss the O.A.o.696 of 2009."
2. Counter affidavit has been filed by the 3rd and 4th defendants, refuting and impugning, denying and inveighing the averments/allegations as found set out in the affidavit, accompanying the application, as well as the plaint.
3. Heard both sides.
4. For convenience sake the parties are referred to hereunder according to their litigative status and ranking in the suit.
5. The point for consideration is as to whether the plaintiff is entitled to an injunction as prayed for?
6. The Tour d'horizon of the learned counsel for the plaintiff would run thus:
(a) The plaintiff has been trading in Pappad under the name and style 'LION BRAND' and in the label, 'the face of a single lion' is found depicted and it is printed in a special fashion as found at page Nos.1 and 2 of the typed set of papers filed by the plaintiff.
(b) Whereas, by way of falsely simulating and emulating and with an intention to pass off the plaintiff's product, the defendants copied the very same trade mark, the configuration and the printing pattern and colour combination etc., of the plaintiff's label and trade mark, including the device as found at page No.3 of the typed set of papers.
(c) The defendants are not expected to use the word 'LION' as well as the device, namely, 'the face of a lion' and they have to be injuncted."
7. Whereas, in an attempt to torpedo and pulverise the arguments as put forth on the side of the plaintiff the learned counsel for the D2 to D4 would set forth and put forth his argument, the gist and kernal, the nitty-gritty of the same would run thus:
(i) As per the principle of public juris, the plaintiff cannot claim monopoly over the device, namely, 'the face of a lion' and the word 'lion'.
(ii) It is a common or garden principle that lion is something known to everybody and the word 'lion' also is being used by everybody and in such a case, the plaintiff alone cannot claim exclusive right over it and simply because the plaintiff has been using it for a pretty long time, it would not enure to his benefit.
(iii) In Salem area there are umpteen number of manufactures of pappad i.e. appalam and they are doing it as a cottage industry and in such a case, the injunction application should have been dismissed.
(iv) The plaintiff himself is not adhering to any single device or single pattern of printing the label and from time to time, he is in the habit of changing the device as well as the pattern of printing, including the configuration of the trade mark, and in such a case there is no certainty in the plaintiff's trade mark and on that ground also the injunction application has to be dismissed.
8. The learned counsel for D2 to D4, in all fairness, at the outset itself would submit that the defendants would not try to emulate or simulate the actual trade mark or label and the printing pattern of the plaintiff's trade mark, and that the defendants trade mark as found at page No.8 of the plaintiff's typed set of papers would be changed.
9. As such, I am of the view that injunction as against D2 to D4 could be granted to the effect that they should not follow the printing pattern, colour combination as well as the configuration of the plaintiff, and the trade mark found enclosed at page No.8 of the plaintiff's typed set of papers.
10. Whereas, D1 and D5 are the two other manufacturers of 'appallam' and they remained ex-parte and as against them injunction is granted in respect of the use of the word 'LION' as well as the device 'face of a single lion'.
11. The next question that arises for consideration is as to whether D2 to D4 should be injuncted from using the word 'LION' as well as the device, namely, 'face of a single lion'.
12. The learned Senior counsel for the plaintiff would submit that the plaintiff has been using that trade mark, including the device, ever since 1971 and their product gained popularity in the market and in such a case, the recent user, namely, the defendants, should be injuncted from using the device, 'face of a single lion' as well as the word 'LION' .
13. Whereas, the learned counsel for D2 to D4 would submit that even thought the defendants 2 to 4 would not resort to the pattern as found at page No.8 of the plaintiff's typed set of papers, they would go for some other device having the face of lion as well as some other mode and method of printing and configuration from that of the plaintiff.
14. Albeit I could see considerable force in the submission made by the learned counsel for D2 to D4, nonetheless, the defendants cannot simply try to use the device, viz., 'face of a single lion' as used by the plaintiff. If at all the defendants are very particular in using the device, namely, 'the face of a lion', they could use more than one face of lion, so that the difference could be noted even by a man on the top of a Clapham omnibus or a lay man or a man of common intelligence. If the device 'face of a single lion' is used in various products by different manufacturers, the common man would get bamboozled or perplexed, flummoxed or confused, nonplussed or baffled, and that has to be avoided.
15. The purpose of granting injunction in matters of this nature is to see that the common man is not getting side tracked by similarities and simulations. If the face of a single lion, under the pretext of calling it as the subject matter of public juris, has been used by more manufacturers, certainly the common people would not be able to distinguish and differentiate among the products available in the market. The common man might tend to think that one and the same manufacturer is manufacturing in various colours and in various pocket forms and as such, I would like to disagree with the contention that the 'face of a lion' as used by the plaintiff should be taken as a subject matter of public juris and that the defendants also can use it.
16. But, on the other hand, to the risk of repetition without being tautalogous, as observed by me supra, if the face of more than one lion is used with different colour pattern, printing pattern and configuration with that of the plaintiff, then the plaintiff could have no grievance.
17. The learned counsel for D2 to D4 would cite the decision of the Delhi High Court reported in 2009(39) PTC 627(DEL)-LOWENBRAU AG AND ANOTHER VS. JAGPIN BREWERIES LTD AND ANOTHER, certain excerpts from it would run thus:
"27. Both parties are German Companies. Both of them have been using the mark/word LOWENBRAU all over the world and are distinguished by other mark/word on their label/mark and not by use of the mark/word LOWENBRAU or device of lion. In the present case, two international brands, both of Germany origin and marketing and selling beer across the world, want to expand and market beer in India. In these circumstances the position as it exists abroad and usage abroad cannot be ignored. The mark/word LOWENBRAU has been extensively used in Germany for beer and even the plaintiffs do not deny that it has become descriptive and generic word in the said country and other places where German beer is sold and consumed. The mark/word LOWENBRAU is a part of public juris in Germany and in most countries with German beer and is not distinctive of a particular manufacturer. In view of this factual background, including the litigation in Germany, I do not think in the present case, the question of prior use can be judged or decided on the basis of user in India alone. Indian market is opening up and foreign or multinational brands have moved and/or likely to move. Similarly, Indian brands are likely to move out and expand into markets abroad ..........."
30. Section 30(1) of the Act stipulates that a person cannot be prevented from using a registered trademark provided the use is in accordance with honest practices in industrial or commercial matters and does not take unfair advantage of or is detrimental to the distinctive character or repute of the trade mark. Similarly Section 30(2) of the Act permits use of trade mark in relation to goods or services indicating quality or geographical origin. Section 35 of the Act also protects a person, who bona fidely uses a mark, which describes character or quality of his goods or services. It is the contention of the defendants that word LOWENBRAU has become synonymous with beer of German origin and source. The defendants have filed substantial evidence and material in support of the said contention. The defendants have prima facie established that the mark LOWENBRAU is being bona fidely used by them and some others all over the world and is bona fide description of the character or quality of the goods i.e.the beer, manufactured by a German company or German Beer. Honest and concurrent user outside India by the defendants and others is practically admitted by the plaintiffs. For the reasons stated above, in the facts of the present case honest and concurrent user outside India along with the plaintiffs, without any objection for last 100 years, is a valid defence when both parties want to expand into India. Reference in this regard can be made to the decision of this Court in SPL Ltd. v.Himalyan Drug Company Limited, 1997 (67 DLT 803) in which it was observed: Any symbol, word or get up commonly used by traders in connection with their trade and in respect of which no particular trader can claim an exclusive right to use may be considered common to that particualr trade, or public, juris. Further words, expressions, or devices which are descriptive of particular goods are open to use by all persons engaged in the trade. Such matters which are generally of a non distinctive character may or may not be in actual use at any particular time. What is important is that the trading public has a right to use them in connection with their business. 21. Whether a matter is or is not common to the trade is a question of fact. A feature which is common to one trade may not be so to a different trade. Similarly a mark may continue to be trade mark in some countries and public jurisdiction in others.
A mark which was common to the trade at one time may in course of time become distinctive and vice versa. A word or words used by a number of firms as part of their designation may be considered as words in common use (See: Law of Trade Mark and Passing Off, P.Narayanan, 4th Edition, para 14.2). 31. The above facts also reveal that the balance of convenience does not justify grant of interim injunction. The defendant No.1-company was incorporated in 1999 and the defendant No.2 has been marketing their products since 200-04. In the first year the sales were more than 9000 cases, which increased to more than 68000 cases in 2004-05. In 2005-06 its sales came down to more than 9000 cases again to go up nearly 34000 cases in 2006-07. The plaintiffs filed the present suit in October 2007, after the defendants had already set up their factory and started marketing their products. The plaintiffs are yet to start production in India and their turnover in India is not disclosed. The defendants have pleaded acquiesce and estoppel along with delay. Both the parties are Germans and have been marketing their products world wide using the mark/word LOWENBRAU without objection from the other. The balance of convenience does not therefore support the plaintiffs claim for grant of injunction. If both the parties can sell beer all over the world with the common mark/word LOWENBRAU but can be distinguished from each other, there is no reason/cause why they cannot concurrently sell beer in India using the same mark/word LOWENBRAU. There are other distinguishing features in their marks and labels to separate them. There are no special grounds or reasons why a consumer of beer in India will not be able to distinguish between the two beers and will be deceived. Plea of passing off cannot be sustained.
18. Placing reliance on the said decision, the learned counsel for D2 to D4 would develop his argument to the effect that the mark/word LOWENBRAU with lion device was taken as a common one in selling beer and in such a case, the Delhi High Court refused to grant injunction.
19. I would like to point out that in the cited case, at paragraph 20, the said Court clearly observed that the plaintiffs did not show any evidence that they started extensive marketing of their product (beer) in India and the mark/word LOWENBRAU came to acquire distinctiveness and association with the plaintiff No.1 and as such on the peculiar facts and circumstances involved in that case, the Court delivered the said judgement.
20. The learned counsel for D2 to D4 also cited the following judgement of this Court:
AIR 1998 MADRAS 347 INDO-PHARMA PHARMACEUTIAL WORKS LTD., VS. CITADEL FINE PHARMACEUTICALS LTD, an excerpt from it would run thus:
41. According to the defendant, 'ENERJ/G' is an abbreviation of "ENERGY". This abbreviation has been used in over 16 registration in the field of medicinal and pharmaceutical preparations. The word "ENERG/J" is therefore generic and common to the trade, as describing the product meant for giving energy. A generic name of a product can never function as a trade mark to indicate the origin. It has become a publici juris on which, no one can claim proprietary right for the exclusive use. In this context, it will be relevant to refer the sentence contained in Mc.Carthy on Trademarks and Unfair Competition.
"An abbreviation of a generic name which still conveys to the buyer the original generic connotation of the abbreviated name, is still "generic".
21. However, I would like to refer hereunder some precedents of various High Courts in India, including the Honourable Apex Court, in which injunction has been granted and in some other cases in which injunction has been denied.
Injunction granted cases
(i) (1996) 5 SUPREME COURT CASES 714 N.R.DONGRE AND ANOTHER VS. WHIRLPOOL CORPORATION AND ANOTHER; [WHIRLPOOL USHA SRIRAM OR LEXUS vs. WHIRLPOOL]
(ii) (2002) 3 SUPREME COURT CASES 65 LAXMIKANT V. PATEL VS. CHETANBHAI SHAH AND ANOTHER;
[MUKTAJIVAN COLOUR LAB AND STUDIO vs. MUKTAJIVAN COLOUR STUDIO]
(iii) (2004)3 SUPREME COURT CASES 90 MIDAS HYGIENE INDUSTRIES(P) LTD AND ANOTHER VS. SUDHIR BHATIA AND OTHERS [LAXMAN REKHA vs. MAGIC LAXMAN REKHA]
(iv) (2001) 5 SUPREME COURT CASEES 73-CADILA HEALTH CARE LTD., VS. CADILA PHARMACEUTICALS LTD; [FALCIGO vs. FALCITAB]
(v) (2005) 3 SUPREME COURT CASES 63 DHARIWAL INDUSTRIES LTD AND ANOTHER VS. M.S.S.FOOD PRODUCTS; [MALIKCHAND vs. MANIKCHAND]
(vi) 1997 PTC (17) INDUSS FOOD PRODUCTS EQUIPMENTS LTD., VS. RANI SATI ICE-CREAM PVT LTD., [ROLLICK vs. FROLLICK]
(vii) 1998 PTC (18) INDIAN SHAVING PRODUCTS LTD AND ANOTHER VS. GIFT PACK AND ANOTHER ;
[DURACELL ULTRA vs. ULTRA]
(viii) unreported judgment of the Gujarat High Court dated 20.7.2005 passed in C.A.No.4241 of 2005-CADBURY LTD AND 2 VS. ITC LTD AND 1; [CADBURY DAIRY MILK ECLAIRS vs. CANDYMAN CHOCO ECLAIRS] Injunction denied cases
(i) 1982-PTC-156-McCAIN INTERNATIONAL LIMITED VS. COUNTRY FAIR FOODS LIMITED AND ANOTHER;
[MCCAIN OVEN CHIPS vs. COUNTRY FAIR OVEN CHIPS AND BIRDS EYE OVEN CHIPS]
(ii) AIR 1965 SUPREME COURT 980 KAVIRAJ PANDIT DURGA DUTT SHARMA VS. NAVARATNA PHARMACEUTICAL LABORATORIES; [NAVRATNA KALPA vs. NAVRATNA PHARMACEUTICAL LABORATORIES]
(iii) AIR 1990 DELHI 233 PREM SINGH VS. M/S.CEEAM AUTO INDUSTRIES;[WAXPOL vs. MEXPAL]
(iv) 1997 PTC (17) SUNSTAR LUBRICANTS LTD., VS. FEDERAL CHEMICAL INDUSTRIES; [SUN 2001 CRUISER vs. GOLDEN CRUISER 1200]
(v) 2007(35) PTC 610(DEL) DIAGEO NORTH AMERICA INC.AND ANOTHER VS. SHIVA DISTILLERIES LTD.;[SMIRNOFF vs. BRISNOFF] (VI) Unreported judgement of the Delhi High Court dated 23.10.2009 RHIZOME DISTILLERIES P.LTD., AND OTHERS VS. PERNOD RICARD S.A.FRANCE AND OTHERS;
[ROYAL SALUTE etc. vs. ROYAL STAG etc.]
(vii) AIR 1994 BOMBAY 231 CAREW PHIPSON LIMITED VS. DEEJAY DISTILLERIES PVT.LIMITED;
[BLUE RIBAND DUET GIN N LIME vs. BLUE RIBAND TANGO GIN N ORANGE]
(viii) 2007(35) PTC 697 (BOM)-ASIAN PAINTS LIMITED VS. HOME SOLUTIONS RETAIL (INDIA) LIMITED;
[ASIAN PAINTS HOME SOLUTIONS vs. HOME SOLUTIONS]
(ix) 2002(25) PTC 704 (KARN) BDA BREWERIES AND DISTILLERIES LTD., VS. SHREE DURGA DISTILLERY;
[OFFICERS FAVOURITE vs. OFFICERS CHOICE]
(x) 1998 PTC (18) PARLE PRODUCTS LIMITED VS. BAKEMANS INDUSTRIES LIMITED;
[PARLE-G GLUCO vs.GLUCOGOLD]
(xi) Unreported judgement of the Madras High Court dated 13.10.2009 in M/S.NUTRINE CONFECTIONERY CO.LTD.VS. M/S.ICON HOUSHOLD PRODUCTS PVT.LTD AND ANOTHER;[LACTO SUPER AND LACTAIRE vs. CANDYMAN LACTO CREME CENTER]
(xii) Unreported judgement of the Madras High Court dated 23.11.2009 in SUN PHARMACEUTICAL INDUSTRIES LIMITED VS. CADILA HEALTHCARE LTD AND ANOTHER. [VENIZ vs. VENZ]
22. A poring over and perusal of the decisions cited on either side would point out that at different periods of time different views emerged. In one and the same High Court different Judges adopted different views. Wherefore, I would like to highlight and spotlight that for the purpose of understanding and assessing the common sense or psyche of a man on the top of a Clapham omnibus or a common man or a lay man, the sense of perception and the consumer awareness prevailing among the people should be considered and it differs from one period to another period and one era to another era. As such, the decisions rendered, taking into consideration the perception of the 19th Century common man would not hold good in respect of the common man of the 20th century and thereafter. The knowledge, perception and consumer awareness of a common man differs from period to period.
23. Here in passing off action, the judge is expected to step into the shoes of a common man of the present period. I cannot lose sight of the fact that presently consumer awareness is there among the general public and they are in a position to distinguish between the ordinary products and the spurious products.
24. A mere perusal of those judgements would clearly demonstrate and display that if the Court finds that a common man would be carried away by similarities, then certainly that requires interference by the Court.
25. For the purpose of granting injunction it has to be seen as to what sort of product is involved in the case and what type of consumers would consume it and from their point of view, so to say, by stepping into their shoes, the matter has to be viewed. Accordingly if viewed, it is clear that by using a lion device with the name 'NEW LION BRAND' would certainly make a common man not to distinguish the defendants product with the plaintiff's product. As such, I am of the view that injunction has to be granted as against D2 to D4 in respect of their trade mark, which is found enclosed at page No.8 of the plaintiff's typed set, and that they are also injuncted from using the device, viz., 'face of a single lion'. Over and above that, D2 to D4 are at liberty to use the face of more than one lion device as their trade mark with different configuration, colour combination and pattern of printing.
26. In respect of others, namely, D1 and D5, injunction as prayed for is granted.
27. In the result, O.A.No.696 of 2009 is allowed and A.No.3639 of 2009 shall stand dismissed.
Msk 11.12.2009 Index:Yes Internet:Yes Note to Office: Issue order on 21.12.2009 G.RAJASURIA, J. OA.No.696 of 2009 A.No.3639 of 2009 in C.S.No.568 of 2009 11.12.2009